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In a bipartisan 89–9 vote, the Senate has passed H.R. 1249 without amendment. The Smith-Leahy America Invents Act will become law once signed by President Obama within the next week or so.
Read the Bill: PatentReformBillAsPassed.pdf (405 KB).
Posted on Sep 08, 2011 at 04:48 PM | Permalink
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Thank you very much.
Sep 08, 2011 at 05:14 PM
Sep 08, 2011 at 06:01 PM
1. Bye-bye best mode: Has anyone ever really known which disclosed mode was the "best" mode in an application? Now we only need to worry about disclosing just-OK modes.
2. Ending fee "diversion" from the Office: How long will it take Congress to start borrowing against the special USPTO Public Enterprise Fund that will be funded from paid-in user fees?
3. Essentially eliminates false marking lawsuits: Now I gotta get new plans to fund my retirement.
4. USPTO would be given authority to adjust its fees: Can I assume that they will be adjusting them down?
5. American competitiveness prioritized examination: I'm cool with this one as long as they see my client's application as needing prioritized examination. Of course, it probably means prioritized examination for IBM, Microsoft, etc.
Sep 08, 2011 at 06:22 PM
Hey you guys I want to share with you an email a buddy of mine just now recieved and shared. The wording is slightly changed to protect his innocence.
Per below, after 9/11 RCE's with only be entered upon examiner's request. Please email (your spe) and (they'll) make a request for the RCE to be entered.
Per the meeting today, the SLIE's asked the empolyees to give priority to the processing of the RCE's yesterday (and today). I believe if I have the date correct, by 9/11, RCEs will only be entered upon request only. The LIE's will be sending emails asking if they would like them to be processed.
For any cases that need processing please have the spe email me.
Sep 08, 2011 at 06:23 PM
Feinstein, yea. Boxer, nay?
Why did Diane change her views? She was solidly against not long ago.
Bravo, Senator Boxer. Bravo!!
September 8, 2011. A day that will live in infamy.
Ned Heller |
Sep 08, 2011 at 07:28 PM
9/11? Is there some connection between the crumbling of the twin towers under attack by deranged madmen and the edict of Director Kappos?
Ned Heller |
Sep 08, 2011 at 07:31 PM
Section 10 gives the director fee setting authority to raise fees to cover aggregate costs by the patent office.
I'll be interesed to see how that plays out. I suspect they'll raise fees by some percentage and keep the additional revenue received seperate from the revenue that is diverted. Anyway, that's my guess based on the language that they are using in the bill.
Sep 08, 2011 at 08:02 PM
6's buddy's email appears to be an update of info that was covered in a memo a week or two ago. 9/11 happens to be the start of the final pay period of this fiscal year.
Sep 08, 2011 at 08:06 PM
Well, the Gong of Doom has sounded for the last time for the AIA. But at least give three cheers to Senator Tom Coburn for having the integrity to challenge a bad deal on fee diversion (and I still wish he was my state Senator)!
Sep 08, 2011 at 08:08 PM
yup Check 6604 posted on 11/27/96. A day off must be slipping LOLOLOL. So how can the fees be paid on Halloween 10/31/96. I complained about that many many times check the file wrapper!
So where is my GRANT?
Sep 08, 2011 at 09:27 PM
Hopefully we can all agree that things could be worse. I mean, Congress (probably) could have decided altogether not "[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." It sounds silly, but these are silly times we live in. At least we are all still “patent attorneys.”
making lemonade |
Sep 08, 2011 at 09:36 PM
I don't get it??? Do we have to do something different for RCE's now?
Sep 08, 2011 at 10:26 PM
Idk Fred, it seems like we homeless people on the side of I-95 now have to request for them to move the RCE to our special new tab. Now, this would seem to be yet another procedural issue involved with the filing, and actually getting considered, an RCE. So now not only will your RCE sit on my budd's special new tab for ~ a year before he picks it up, now it might sit on his rejected tab a few extra months before it even goes to his special new tab.
Sep 08, 2011 at 10:30 PM
Looks like I'll have some weekend reading.
Congress should also address DJ actions. MedImmune went too far taking us from one extreme to another resulting in "sue first, negotiate later".
Sep 08, 2011 at 10:35 PM
at least give three cheers to Senator Tom Coburn for having the integrity to challenge a bad deal on fee diversion (and I still wish he was my state Senator)!
A stopped clock is correct twice a day. Coburn is a neanderthal anti-gay bigot who, among other primitive, extremist positions, supports forcing women to bear children conceived through rape. And then there's his knee-jerk anti-science stances:
On May 23, 2007, Coburn threatened to block two bills honoring the 100th birthday of Rachel Carson. Coburn called Carson's work "junk science," proclaiming that Silent Spring "was the catalyst in the deadly worldwide stigmatization against insecticides, especially DDT."
Anyway, if you want Coburn to be your Senator, just move to Oklahoma. I'm sure there's tons of great jobs for patent attorneys there, especially with Coburn "promoting the progress."
Malcolm Mooney |
Sep 08, 2011 at 10:36 PM
Well, after months of complaining and writing to our congressional representatives about how this bill was a bad thing, now it's time for us to face up to this nightmare and do what lawyers do best when facing legal uncertainty: play off our clients' fears and charge them up the wazoo for it. They win, we win, they lose, we still win.
Thanks, Congress. And thanks, Microsoft, Goldman Sachs and everyone else who reminded us doubters that American politicians are still world-class when comes to their ability to be bought. Just make sure your grandkids learn Mandarin.
The Big Lebowski |
Sep 08, 2011 at 11:25 PM
Mr. Gorbachev, tear down this ... country.
Eh, on second thought, never mind.
We know how to do it all on our own.
step back |
Sep 09, 2011 at 04:35 AM
There will be political blowback against some of the Republicans who voted for this bill. In Illinois 6th congressional district some active inventors and small business people are planning to raise the issue to prominence in the next election with the goal of unseating whip Peter Roskam from office. After voting for the bill he has been characterized as a traitor and backstabber sellout by some.
Peter Roskam is a fool and in the back pocket of the lobbyists supporting the law.
Sep 09, 2011 at 05:53 AM
OK. How do we do it? Where do we find this information? I haven't heard anything about this!!!
Sep 09, 2011 at 08:56 AM
"and keep the additional revenue received seperate from the revenue that is diverted"
No, this is not possible.
The Office is not given any authority to keep any fees. None.
Charging more - yes the Office can do that. But the bill is decidedly unbalanced as to keep the collections.
The running of the Office still comes down to the same budget process and the same diversion possibilities (actualities).
Sep 09, 2011 at 09:08 AM
"In a bipartisan 89–9 vote"
Rather, bipartisan graft.
Sep 09, 2011 at 09:12 AM
you haven't heard anything about this because it does not effect the applicant. It merely has to do with when the examiner will get credited with the disposal count that the filing of the RCE gets them (i.e., in this fiscal year or in the next fiscal year). This is done every year at the end of the fiscal year and reverts to automatic entry of the RCEs when the new fiscal year begins. All RCEs filed in the next 3 weeks will either be entered immediately if the examiners wants the disposal count this fiscal year and requests entry now or will be entered at the beginning of next fiscal year (automatically) if the examiner wants the disposal count next fiscal year.
An Examiner |
Sep 09, 2011 at 09:28 AM
The "new" 119(a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed; but no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country more than one year prior to such filing.
Can anyone tell me what this is supposed to mean?
I didn't think so.
What a wet mess.
Thanks again Congress.
Sep 09, 2011 at 10:10 AM
And what's with all the "Sense of Congress" resolutions? How about the following:
"Sense of the Patent Bar" - Congress has really mucked things up - again.
Sep 09, 2011 at 10:18 AM
My view is that the stricken-through language is uneccessary, considering the changes in 102. The remaining language provides foreign priority (but surely you knew that...)
Sep 09, 2011 at 10:20 AM
new standard AIA office procedure: receive disclosure = file whatever that might contain as provisional application, same day.
Ert Zog |
Sep 09, 2011 at 10:30 AM
"you haven't heard anything about this because it does not effect the applicant. It merely has to do with when the examiner will get credited with the disposal count that the filing of the RCE gets them (i.e., in this fiscal year or in the next fiscal year)."
Lulz, this isn't true. It isn't like this every quarter/year. At least in my TC, we usually still get auto ones. But he's probably right that this is just something for the end of the year.
Sep 09, 2011 at 11:10 AM
You could do that. But when what you filed doesn't enable and/or provide written description support for what you later claim in a non-provisional, that provisional filing date is going to be pretty useless to you.
what's the view like from down there |
Sep 09, 2011 at 11:26 AM
Speaking of Crony Capitalism, of which this bill is a leading example, the NYTimes has a lot of nice things to say about Sarah Palin's attack on the political class that runs Washington:
Reading after reading the Times article, anyone can instantly see that this the patent reform bill is a good example of corruption on the march.
Ned Heller |
Sep 09, 2011 at 11:33 AM
What did Sarah Palin think about Ron Johnson's proposed amendment?
Malcolm Mooney |
Sep 09, 2011 at 11:48 AM
Is that Don Johnson's brother? But without the cool leisure suit?
Sep 09, 2011 at 12:25 PM
...shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed ... one year prior to such filing
Now do you see the problem?
Sep 09, 2011 at 12:27 PM
Looks to me like the strikethrough is clearly incorrect. The phrase "one year prior to such filing" should also be stricken through.
As noted, the remaining language is old and its meaning is settled.
Malcolm Mooney |
Sep 09, 2011 at 12:43 PM
unless you later need to prove that what they provided was not sufficient to file, when they sue you for not filing it fast enough.
Ert Zog |
Sep 09, 2011 at 01:06 PM
Actually, as I've said on a different blog, it's time get over our frustration about the mess that the AIA is, and figure out how to combat this monstrosity. It can be done, and I'm not about to let the computer/software Goliaths (e.g., Microsoft, Intel, Cisco, etc.) profit from this legislative nonsense without a fight (be it "tooth and nail"). Keep your chin up, SB.
Sep 09, 2011 at 01:15 PM
Coburn won't be my senator or even Oklahoma's Senator much longer as he's stepping down. Recognize integrity when it's shown, Malcolm. I do, even of those I ideologically disagree with, such as Dennis Kucinich (Congressman in my home state of Ohio), and the late Senator Paul Wellstone (a former polysci prof at my alma mater and who I had to "huff and puff" to keep up with him when I ran cross-country).
Sep 09, 2011 at 01:20 PM
You presented him with the real Power dated May 15, 1996 that I signed for you to take Power of Atty on 08,546,033. But your letter dated in Sept. tells me to do it because you knew the drawings were different. You wanted me to fail. How sad is that!
You made a deal about cashing Checks and other things with the Bankster.
I sent you the Issue Fee Money as you told me too. Your letters dated Sept and October 1996 show BIG PROBLEM.
Second letter to Bar shows more BIG PROBLEM.
Fees paid October 31, and then again more Issue fees.
Two Attests. Why would you tell them in the second Faked Letter, that i did not know this fact on the Trademark until Nov 24 1996? I never made my FIRST Complaint to the FLA BAR until Dec 30, 1996.. You must be mistaking your holding my Check until you run the First one through that was filed in Canada? And of course the second one has no relationship to the 3rd, it can't. Even I know that.
Now the Trademark makes real sense. You hide it, he makes another. The only problem is Records showing the first. And an even bigger problem is it is Valid, and you are not.
First I make you even more invalid... Then I get a Lawyer. I think kicking someone when their down is a thing that I can get used too. After all 16 years of being run Over by a Train makes me Rail Tuff!
The not so Dumb Mad Hatter |
Sep 09, 2011 at 01:23 PM
Unless they are trying to limit foreign priorty reach-back to one year, like it (unfortunately) is in many ROW countries.
Sep 09, 2011 at 02:04 PM
And the market reacts to the Patent Reform bill!
Exciting, ain't it?
Malcolm Mooney |
Sep 09, 2011 at 02:21 PM
While the bill was mentioned in the President's address, the rest of the address (including making the wealthy carry their fair share) may, just may have something to do with the Market's reaction...
Casual Observance |
Sep 09, 2011 at 02:25 PM
In Somalia, suing IS negotiating...
Sep 09, 2011 at 02:33 PM
Meanwhile the balance in the China state bank account was diminished by 89 * ??? millions of dollars.
Sep 09, 2011 at 02:34 PM
Ron Johnson? I have no clue who he is?
Ned Heller |
Sep 09, 2011 at 02:47 PM
In Somalia, shooting IS negotiating...
Been there, Done that |
Sep 09, 2011 at 03:00 PM
Might that be because of what the Paris Convention prescribes? Remind me, when did the USA sign up to the Paris Convention and when did it conform its domestic law of patents to conform with Paris.
Sep 09, 2011 at 03:17 PM
Does Paris prohibit a priority period of more than one year, Max?
Leopold Bloom |
Sep 09, 2011 at 03:34 PM
Johnson opposed a Wisconsin bill that would have eliminated the time limit for future child, sex abuse victims to bring lawsuits and allowed an additional three years for past victims to sue. Johnson testified before the Wisconsin Senate, in January 2010, on the severe financial impact the bill would have on the employers of perpetrators, asserting that the law, if enacted, might actually reduce the reporting of child sex abuse. At the time of his testimony, Johnson was on the Finance Council of the Catholic Diocese of Green Bay
Ron Johnson has strongly opposed the American Recovery and Reinvestment Act as a candidate. He launched his campaign by telling the Milwaukee Journal Sentinel that, "We would have been far better off not spending any of the money and let the recovery happen as it was going to happen." The newspaper later reported that Johnson himself sought stimulus money in 2009 while he led a nonprofit educational organization in Oshkosh
Johnson is opposed to same-sex marriage and the repeal of "don't ask, don't tell".[
Johnson has called scientists who attribute global warming to man-made causes "crazy" and has said the theory is "lunacy."
In short, Ron Johnson is a typical reality-denying, Txx Pxrty bigot and hypocrite.
Malcolm Mooney |
Sep 09, 2011 at 03:47 PM
The AP settles for blaming the Europeans:
"U.S. stocks are closing sharply lower, erasing the week's gains. Rising fears about fallout from Europe's debt crisis triggered the downturn."
The Rest of the Story |
Sep 09, 2011 at 03:50 PM
"In short, Ron Johnson is a typical reality-denying, Txx Pxrty bigot and hypocrite."
In short, the Malcolm Mooney of the Republicans.
Where's that mirror? |
Sep 09, 2011 at 03:52 PM
when did it conform its domestic law of patents to conform with Paris"
Was the requirement to conform its domestic laws to Paris, or to apply its domestic laws equally?
Not sure a treaty is valid if it removes the legislative function beyond the constitutional limits...
just saying |
Sep 09, 2011 at 03:54 PM
No doubt that has much more to do with the behavior of the Betting Parlour Class than my joke explanation.
And then there's this:
U.S. Treasury prices jumped Friday, briefly sending the yield on the benchmark 10-year note to modern-day lows, as speculation about a possible Greek default drained confidence and led investors to dump risk-assets in favor of safety.
B-b-b-ut I thought our deficit was teh w-w-w-orst thing ever!!!!
Reality strikes again. Deficit hawks = lying axxholes.
Malcolm Mooney |
Sep 09, 2011 at 04:07 PM
Implementation of the Convention on the Domestic Level
(1) Any country party to this Convention undertakes to adopt, in accordance with its constitution, the measures necessary to ensure the application of this Convention.
(2) It is understood that, at the time a country deposits its instrument of ratification or accession, it will be in a position under its domestic law to give effect to the provisions of this Convention.
For Paris, we've done that 7 times now, most recently in 1973 to fully accede to the Stockholm Act of 1967.
Sep 09, 2011 at 04:19 PM
Even if that's what they were "trying" to do, they failed miserably. Given the complete absence of grammar, the "one year prior to such filing" clause amounts to absolute gibberish. It might as well say "twelve eggs in a dozen" or "after ten if you have time."
Malcolm Mooney |
Sep 09, 2011 at 04:31 PM
Malcolm, I think I know Palin's position on abortion. It is not mine and it is not yours. But that does not mean that we should ignore everything she says because I daresay, we both would be hard-pressed to find a candidate with whom we would agree 100% of the time.
We both seem to share opposition to the Libyan war. Does that mean that we should
ignore Hillary Clinton because she strongly backed that war?
I think there are pretexts for doing something that normally cover and divert attention from the real reasons for doing something. I have in mind two examples:
Julius Caesar had legitimate reasons for everything he did, but in the end, you see he planned to conquer Gaul, and would have like to conquer Britain and Germany if he could. He also crossed the Rubicon on a legitimate pretext, but his aim was to conquer the entire Republic.
Britain declared war on Germany in August 1914 on the pretext of living up to its obligations with respect to Belgium. But it real reasons had a lot to do with the growing threat of the German navy.
Abortion is not a major issue in America for most people. A lot of people are conflicted, regardless. For some, this is not true, especially to some on the left and on the right where abortion dominates. But to most of us, it does not dominate.
Back to Palin, I really liked what she had to say on crony capitalism as did the folks as the NYTimes. Keep that up, and a lot of people will begin to pay
Ned Heller |
Sep 09, 2011 at 04:36 PM
"than my joke explanation"
Mooneyisms only come in that one flavor
Not Baskin Robbins |
Sep 09, 2011 at 04:46 PM
I think I know Palin's position on abortion. It is not mine and it is not yours. But that does not mean that we should ignore everything she says
Palin's position on abortion is hardly the only reason that I ignore everything she says, Ned.
Malcolm Mooney |
Sep 09, 2011 at 05:02 PM
Ned Heller |
Sep 09, 2011 at 05:05 PM
>>>First Inventor to File 35 U.S.C. 102 Effective date (pages 23-4): Takes effect 18 months from date of enactment; and Applies to any application and patent (i) with a claim having an effective date on or after enactment, or (ii) having a specific reference under sections 120, 121, or 365(c) to an application having such a claim.<<<
OK, does this mean that any Continuation or CIP filed after the DATE of ENACTMENT (date Obama signs) MUST be Novel and Non-obvious of its own parent case? i.e., continuation practice ends on the day Obama signs ???
Sep 09, 2011 at 06:11 PM
Does anyone have a LINK to a REDLINE of new law against EXISTING LAW?
Sep 09, 2011 at 06:14 PM
Ned, can you cut and paste the exact words from Diehr of the Supreme Court Justices saying "Diehrs claims required a machine or transformation?
And if you can't, are you now willing to be Intellectually honest and admit there is no machine or transformation requirement in Diehr?
Actual Inventor |
Sep 10, 2011 at 02:57 AM
Bank of America Corp. is preparing to slash 40,000 or more jobs nationwide, a dramatic retrenchment that reflects the deepening woes of the country's largest bank and the magnitude of the U.S. economic slowdown.
The layoffs will come mainly from the BofA's sprawling consumer-banking operations, which will take a heavy toll on branches, loan centers and other offices throughout California.
Promote the progress!!!! Explain to me again how making it easier to get a patent on a method or machine for automating commerce and banking "creates jobs."
What a fxxxxing joke.
Malcolm Mooney |
Sep 10, 2011 at 12:31 PM
The new law also changes the venue for 145 actions from U.S. District Court for the District of Columbia to the U.S. District Court for the Eastern District of Virginia.
The DC Court has the reputation of being fair to patent plaintiffs.
What is the EDVa like?
No One in Particular |
Sep 10, 2011 at 03:08 PM
Why did we need to change the venue for 145 actions?
simple questions |
Sep 10, 2011 at 03:28 PM
Is there a redline version of 35 USC that incorporates the changes required by this Act?
Sep 12, 2011 at 12:55 AM
Sep 12, 2011 at 02:34 PM
Mooney knows about stopped clocks... and is strangely sensitive to gay and transgender issues - not that there's anything wrong with that.
Sep 12, 2011 at 02:35 PM
If only Mooney knew something about finance... or anything else for that matter.
Sep 15, 2011 at 04:33 PM
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