1. Status Report Austin Intellectual Property Law Assoc. August 16, 2011
Patent Reform 2011
Status Report
Austin Intellectual Property Law Assoc.
August 16, 2011
Brian W. Oaks

2. Recap S. 23 approved by the Senate and H.R. 1249 approved by House
Key Provisions
First to file (and associated prior art changes)
Prior user rights/defense (all patents)
Post Grant and Inter Partes Review
End of PTO fee diversion (sort of)
False marking reform

3. Current Status of Legislation
Ball is in Senate's court, but delayed due to debt fight
Senate cloture vote on Sept. 6; vote expected later that week
House bill expected to be brought and passed without amendment in Senate
It's now a "jobs bill" and both sides want to show progress

4. Timeline for Implementation
Immediate Changes
Change in reexam standard of review (reasonable likelihood requester will prevail)
False marking reform (must have competitive injury; marking expired patent is OK)
Virtual marking allowed (via web site marked on product)
Elimination of best mode as basis for invalidity
Prohibition on patenting of human organisms
Prioritized examination (Track 1)
15% increase in almost all fees and addition of micro entity status (75% reduction in fees)

5. Timeline for Implementation
Delayed Changes
First to file (18 months)
Third party pre-issuance submissions (1 year)
Supplemental examination (1 year)
Post Grant Review (1 year)
Inter Partes Review (1 year)
Special review for business method patents (1 year)

6. PTO Request for Comments
USPTO is asking for comments related to rule-making required by expected new law
See: USTPO site > Patents > Initiatives and Events > Leahy-Smith America Invents Action Implementation