On August 14, 2012, changes to implement the Transitional Program for Covered Business Method Patents - Definitions of Covered Business Method Patent and Technological Invention provisions of the America
Invents Act were published by the U.S. Patent and Trademark Office.
The rules can be found here:
http://www.uspto.gov/aia_implementation/covered_business_method_definition.pdf
The changes in this final rule take effect on
September 16, 2012. The AIA provides that this provision and any regulations issued under the provision will be repealed on September 16, 2020, with respect to any new petitions under the transitional program.
This final rule sets forth the definitions of the terms “covered business method patent” and “technological invention” that the Office will use in conducting transitional covered business method patent review proceedings.
Section 42.301(a) adopts the definition for covered business method patents provided in section 18(d)(1) of the AIA. Specifically, the definition provides that a covered business method patent means a patent that claims a method or corresponding
apparatus for performing data processing or other operations used in the practice,
administration, or management of a financial product or service, except that the term does
not include patents for technological inventions.
Section 42.301(b) sets forth the definition for technological invention for covered business method patent review proceedings. The definition of technological invention provides that in determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods, the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art, and solves a technical problem using a technical solution. The Office recognizes that, in prescribing a regulation to define technological invention, the Office must consider the efficient administration of the proceedings by the Office, and its ability to complete them timely, consistent with 35 U.S.C. 326(b).
Showing posts with label America Invents Act. Show all posts
Showing posts with label America Invents Act. Show all posts
Wednesday, August 15, 2012
Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions
On August 14, 2012, changes to implement the Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions provisions of the America Invents
Act were published by the U.S. Patent and Trademark Office.
The rules can be found here:
http://www.uspto.gov/aia_implementation/general_trial_rules.pdf
The changes in this final rule take effect on September 16, 2012.
The final rule provides a consolidated set of rules relating to Board trial practice for inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. This final rule also provides a consolidated set of rules to implement the provisions of the AIA related to seeking judicial review of Board decisions.
The final rule sets forth (1) the evidentiary standards, procedure, and default times for conducting trial proceedings; (2) the fees for requesting reviews; (3) the procedure for petition and motion practice; (4) the page limits for petitions, motions, oppositions, and replies; (5) the standards and procedures for discovery of relevant evidence, including the procedure for taking and compelling testimony; (6) the sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding; (7) the procedure for requesting oral hearings; (8) the procedure for requesting rehearing of decisions and filing appeals; (9) the procedure for requesting joinder; and (10) the procedure to make file records available to the public that include the procedures for motions to seal, protective orders for confidential information, and requests to treat settlement as business confidential information.
The rules can be found here:
http://www.uspto.gov/aia_implementation/general_trial_rules.pdf
The changes in this final rule take effect on September 16, 2012.
The final rule provides a consolidated set of rules relating to Board trial practice for inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. This final rule also provides a consolidated set of rules to implement the provisions of the AIA related to seeking judicial review of Board decisions.
The final rule sets forth (1) the evidentiary standards, procedure, and default times for conducting trial proceedings; (2) the fees for requesting reviews; (3) the procedure for petition and motion practice; (4) the page limits for petitions, motions, oppositions, and replies; (5) the standards and procedures for discovery of relevant evidence, including the procedure for taking and compelling testimony; (6) the sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding; (7) the procedure for requesting oral hearings; (8) the procedure for requesting rehearing of decisions and filing appeals; (9) the procedure for requesting joinder; and (10) the procedure to make file records available to the public that include the procedures for motions to seal, protective orders for confidential information, and requests to treat settlement as business confidential information.
Changes to Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act
On August 14, 2012, changes to implement the supplemental examination provisions of the America Invents
Act were published by the U.S. Patent and Trademark Office.
The rules can be found here:
http://www.uspto.gov/aia_implementation/Supp_Exam_Rules.pdf
The changes in this final rule take effect on September 16, 2012.
The supplemental examination provisions permit a patent owner to request supplemental examination of a patent.
A request for supplemental examination must contain: (1) a list of each item of information that is requested to be considered, reconsidered, or corrected; (2) an identification of each claim of the patent for which supplemental examination is requested; (3) a separate explanation of the relevance and manner of applying each item of information to each claim of the patent for which it was identified; and (4) a summary of the relevant portions of any submitted document, other than the request, that is over fifty pages in length.
The cost for filing a supplemental examination is $5,140 for the initial request plus $16,120 for the ex-parte re-examination fee. Both the initial request fee and the ex-parte re-examination fee must be paid at the time of initial request. The $16,120 ex-parte re-examination fee will be refunded if no re-examination is ordered. The rules also finalize the increase in the fee for filing a request for ex-parte reexamination at $17,750, a much higher amount than before.
The rules can be found here:
http://www.uspto.gov/aia_implementation/Supp_Exam_Rules.pdf
The changes in this final rule take effect on September 16, 2012.
The supplemental examination provisions permit a patent owner to request supplemental examination of a patent.
A request for supplemental examination must contain: (1) a list of each item of information that is requested to be considered, reconsidered, or corrected; (2) an identification of each claim of the patent for which supplemental examination is requested; (3) a separate explanation of the relevance and manner of applying each item of information to each claim of the patent for which it was identified; and (4) a summary of the relevant portions of any submitted document, other than the request, that is over fifty pages in length.
The cost for filing a supplemental examination is $5,140 for the initial request plus $16,120 for the ex-parte re-examination fee. Both the initial request fee and the ex-parte re-examination fee must be paid at the time of initial request. The $16,120 ex-parte re-examination fee will be refunded if no re-examination is ordered. The rules also finalize the increase in the fee for filing a request for ex-parte reexamination at $17,750, a much higher amount than before.
Changes to Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act
On August 14, 2012, changes to implement the inventor's oath or declaration provisions of the America Invents
Act were published by the U.S. Patent and Trademark Office.
The rules can be found here:
http://www.uspto.gov/aia_implementation/InventorOath_Rules.pdf
The changes in this final rule take effect on September 16, 2012.
The changes provide a mechanism for assignees to file and prosecute a patent application as the applicant on behalf of the inventor. In addition, juristic entities are required to use a registered patent agent or attorney to take action in a patent application.
35 U.S.C. 115(d)(2) provides that an applicant may provide a substitute statement where an inventor is unable to file the oath or declaration where an individual is under an obligation to assign the invention but has refused to make the oath or declaration required. Therefore, while an assignee may make an application for patent, an oath or declaration (or an assignment containing the required statements) by each inventor is still generally required.
The rules can be found here:
http://www.uspto.gov/aia_implementation/InventorOath_Rules.pdf
The changes in this final rule take effect on September 16, 2012.
The changes provide a mechanism for assignees to file and prosecute a patent application as the applicant on behalf of the inventor. In addition, juristic entities are required to use a registered patent agent or attorney to take action in a patent application.
35 U.S.C. 115(d)(2) provides that an applicant may provide a substitute statement where an inventor is unable to file the oath or declaration where an individual is under an obligation to assign the invention but has refused to make the oath or declaration required. Therefore, while an assignee may make an application for patent, an oath or declaration (or an assignment containing the required statements) by each inventor is still generally required.
Wednesday, July 25, 2012
Changes to Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act
In the Federal Register of July 17, 2012, changes to implement the preissuance submissions by third party provisions of the America Invents Act were published by the U.S. Patent and Trademark Office.
The notice can be found here:
http://www.uspto.gov/aia_implementation/120707-preissuance_submission_fr.pdf
The changes in this final rule take effect on September 16, 2012. The final rule implements 35 U.S.C. 122(e) in a new rule 37 CFR 1.290. The provisions of 35 U.S.C. 122(e) and 37 CFR 1.290 apply to any patent application filed any date, even to applications filed before the provisions take effect.
The changes provide a mechanism for third parties to submit to the Office printed publications of potential relevance to the examination of a patent application.
A third-party preissuance submission must be filed in writing within a certain statutorily specified time period and include:
(1) a list identifying the items being submitted;
(2) a concise description of the relevance of each item listed;
(3) a legible copy of each non-U.S. patent document listed;
(4) an English language translation of any non-English language item listed:
(5) a statement by the party making the submission that the submission complies with the statute and the rule; and
(6) the required fee.
Any third-party submission must be filed prior to the earlier of:
(1) the date a Notice of Allowance under 37 CFR 1.311 is given or mailed in the application; or
(2) the later of:
(i) six months after the date on which the application is first published, or
(ii) the date the first rejection of any claim by the examiner is given or mailed.
This will mean that, in many cases, the third-party submission cannot be filed until a first office action is issued.
Information on prior public use may continue to be submitted by third parties via a protest under 37 CFR 1.291.
A web-based interface has been developed to permit third party submissions under new 37 CFR 1.290 to be filed electronically.
The notice can be found here:
http://www.uspto.gov/aia_implementation/120707-preissuance_submission_fr.pdf
The changes in this final rule take effect on September 16, 2012. The final rule implements 35 U.S.C. 122(e) in a new rule 37 CFR 1.290. The provisions of 35 U.S.C. 122(e) and 37 CFR 1.290 apply to any patent application filed any date, even to applications filed before the provisions take effect.
The changes provide a mechanism for third parties to submit to the Office printed publications of potential relevance to the examination of a patent application.
A third-party preissuance submission must be filed in writing within a certain statutorily specified time period and include:
(1) a list identifying the items being submitted;
(2) a concise description of the relevance of each item listed;
(3) a legible copy of each non-U.S. patent document listed;
(4) an English language translation of any non-English language item listed:
(5) a statement by the party making the submission that the submission complies with the statute and the rule; and
(6) the required fee.
Any third-party submission must be filed prior to the earlier of:
(1) the date a Notice of Allowance under 37 CFR 1.311 is given or mailed in the application; or
(2) the later of:
(i) six months after the date on which the application is first published, or
(ii) the date the first rejection of any claim by the examiner is given or mailed.
This will mean that, in many cases, the third-party submission cannot be filed until a first office action is issued.
Information on prior public use may continue to be submitted by third parties via a protest under 37 CFR 1.291.
A web-based interface has been developed to permit third party submissions under new 37 CFR 1.290 to be filed electronically.
Friday, September 16, 2011
First to File Patent Reform Act Signed September 16, 2011
Today, September 16, 2011, President Obama signed the "America Invents" Act into law. Among other things, this will change the United States from a "first to invent" patent system to a "first to file" patent system.
Changes to the definition of prior art and new post-grant review proceedings will not take effect for 18 months (March 16, 2011). The first-to-file provisions and changes to the grace period go into effect then. The one year grace period has been substantially eliminated except that certain disclosures made by the inventor will not be considered to be prior art if they were made a year or less before the patent application filing date. Of course, such disclosures may well result in a loss of ability to file valid foreign applications so inventors should plan to maintain secrecy until a patent application is filed, and should not rely on having a one year grace period in which to attempt to market their invention.
Some other changes take effect immediately. Other changes take effect in a year. Others take effect at other times.
A section-by-section summary is as follows:
Under Section 4, a person to whom an inventor has assigned (or is under an obligation to assign) an invention can make an application for patent. Assignees will now be able to sign Declarations where inventors refuse to sign, are deceased, or cannot be found. These provisions take effect in one year.
Section 5 changes the prior commercial use defense for business method patents. Section 5 is effective now, on the date of enactment.
Section 6 provides a variety of post-grant review procedures including inter-partes review and post-grant review petitions. A petition for a post-grant review may not be filed more than 9 months after the date of the grant of the patent or of the issuance of a reissue patent. A petition for inter partes review must be filed after the later of either--(1) the date that is 9 months after the grant of a patent or issuance of a reissue of a patent; or (2) if a post-grant review is instituted under chapter 32, the date of the termination of such post-grant review. These provisions take effect in one year.
Section 7 sets for the composition and duties of the Patent Trial and Appeal Board.
Section 8 allows any third party to submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before a certain deadline. These provisions take effect in one year.
Section 10 authorizes the Director, for a seven-year period and subject to conditions, to set or adjust fees charged by the USPTO under specified federal patent and trademark laws. Section 10 also specifies that fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents shall be reduced by 50 percent with respect to small entities, and shall be reduced by 75 percent with respect to any "micro entity."
A micro entity is defined as an applicant who makes a certification that the applicant--
(1) qualifies as a small entity, as defined in regulations issued by the Director;
(2) has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under section 111(b), or international applications filed under the treaty defined in section 351(a) for which the basic national fee under section 41(a) was not paid;
(3) did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
(4) has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.
Section 10 also requires an additional fee of $400 for each application for an original patent, except for a design, plant, or provisional application, that is not filed by electronic means. Section 10 takes effect on enactment.
Section 11 sets forth new government fees. Section 11 also establishes a fee of $4800 for prioritized examination, and establishes a 15% surcharge for specified fees to be credited to the U.S. Patent and Trademark Appropriation Account, remain available until expended, and used only for specified expenses relating to patent applications. Section 11 takes effect on enactment (September 16, 2011).
Section 12 provides for supplemental examination. A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish. Within 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct the supplemental examination and shall conclude such examination by issuing a certificate indicating whether the information presented in the request raises a substantial new question of patentability. Section 12 takes effect in one year.
Section 13 decreases the percentage of certain invention-related royalties and income that must be paid to the federal government and increases the percentage that must be given to small business firms when a nonprofit organization has a funding agreement with the government for the operation of a government-owned, contractor-operated facility. Section 13 takes effect on enactment.
Section 14 deems tax strategies to be within the prior art (unpatentable). Any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art. Section 14 takes effect on enactment (September 16, 2011).
Section 15 prohibits using a failure to disclose the best mode as a basis to invalidate patent claims. Section 15 takes effect on enactment (September 16, 2011).
Section 17 prevents using an accused infringer's failure to obtain the advice of counsel to prove that any infringement was willful or induced.
Section 18 requires the Director to establish an eight-year transitional post-grant review proceeding for reviewing the validity of covered business-method patents not later than one year after enactment.
Section 19 amends federal judicial code to state that no State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights. Section 19 grants the Federal Circuit exclusive jurisdiction of appeals relating to patents or plant variety protection. Section 19 applies to any civil action commenced on or after the date of the enactment of this Act (September 16, 2011).
Section 20 makes various minor technical amendments.
Section 21 authorizes the U.S. Patent and Trademark Office to pay subsistence and travel-related expenses of persons attending certain USPTO-conducted intellectual property programs who are not federal employees. It also authorizes the Director to fix a basic pay rate below a certain level for administrative patent and trademark judges. Section 21 is effective October 1, 2011.
Section 22 establishes in the Treasury a Patent and Trademark Fee Reserve Fund. If fee collections by the Patent and Trademark Office for a fiscal year exceed the amount appropriated to the Office for that fiscal year, fees collected in excess of the appropriated amount shall be deposited in the Patent and Trademark Fee Reserve Fund. The amendments made by this section shall take effect on October 1, 2011.
Section 23 states that the Director shall, not later than three years after enactment, establish at least three U.S. satellite offices for the U.S. Patent and Trademark Office.
Section 24 states that the satellite office of the United States Patent and Trademark Office to be located in Detroit, Michigan, shall be known and designated as the ‘Elijah J. McCoy United States Patent and Trademark Office’
Section 25 Authorizes the USPTO to establish regulations providing, at the request of the applicant, prioritized examination of applications for products, processes, or technologies important to the economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization.
Section 26 requires the Director to make a study on the manner in which this Act and the amendments made by this Act are being implemented by the Office, and to make a report to Congress within four years after enactment.
Section 27 requires the Director to conduct a study on effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist.
Section 28 requires the Director to establish and maintain in the Office a Patent Ombudsman Program. The duties of the Program’s staff shall include providing support and services relating to patent filings to small business concerns and independent inventors.
Section 29 requires the Director sto, not later than the end of the 6-month period beginning on the date of the enactment of this Act, establish methods for studying the diversity of patent applicants, including those applicants who are minorities, women, or veterans. The Director shall not use the results of such study to provide any preferential treatment to patent applicants.
Section 30 states that it is the sense of Congress that the patent system should promote industries to continue to develop new technologies that spur growth and create jobs across the country which includes protecting the rights of small businesses and inventors from predatory behavior that could result in the cutting off of innovation. Apparently, lobbying by large companies to push through patent reform is not considered predatory behavior.
Section 31 requires the Director to, in consultation with the Secretary of Commerce and the Administrator of the Small Business Administration, carry out a study
to determine how the Office, in coordination with other Federal departments and agencies, can best help small businesses with international patent protection.
Section 32 requires the Director to work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.
Section 33 states that notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Section 34 directs the Comptroller General to conduct a study of the consequences of litigation by non-practicing entities, or by patent assertion entities, related to patent claims.
Section 35 states that except as otherwise provided in this Act, the provisions of this Act shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to any patent issued on or after that effective date.
Section 37 sets forth a provision concerning calculation of the filing period for patent extension applications related to drug products and certain other items subject to regulation under the Federal Food, Drug, and Cosmetic Act.
Many changes will be subject to implementation rules drafted by the U.S. Patent and Trademark Office. These rules have not yet been written.
Changes to the definition of prior art and new post-grant review proceedings will not take effect for 18 months (March 16, 2011). The first-to-file provisions and changes to the grace period go into effect then. The one year grace period has been substantially eliminated except that certain disclosures made by the inventor will not be considered to be prior art if they were made a year or less before the patent application filing date. Of course, such disclosures may well result in a loss of ability to file valid foreign applications so inventors should plan to maintain secrecy until a patent application is filed, and should not rely on having a one year grace period in which to attempt to market their invention.
Some other changes take effect immediately. Other changes take effect in a year. Others take effect at other times.
A section-by-section summary is as follows:
Under Section 4, a person to whom an inventor has assigned (or is under an obligation to assign) an invention can make an application for patent. Assignees will now be able to sign Declarations where inventors refuse to sign, are deceased, or cannot be found. These provisions take effect in one year.
Section 5 changes the prior commercial use defense for business method patents. Section 5 is effective now, on the date of enactment.
Section 6 provides a variety of post-grant review procedures including inter-partes review and post-grant review petitions. A petition for a post-grant review may not be filed more than 9 months after the date of the grant of the patent or of the issuance of a reissue patent. A petition for inter partes review must be filed after the later of either--(1) the date that is 9 months after the grant of a patent or issuance of a reissue of a patent; or (2) if a post-grant review is instituted under chapter 32, the date of the termination of such post-grant review. These provisions take effect in one year.
Section 7 sets for the composition and duties of the Patent Trial and Appeal Board.
Section 8 allows any third party to submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before a certain deadline. These provisions take effect in one year.
Section 10 authorizes the Director, for a seven-year period and subject to conditions, to set or adjust fees charged by the USPTO under specified federal patent and trademark laws. Section 10 also specifies that fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents shall be reduced by 50 percent with respect to small entities, and shall be reduced by 75 percent with respect to any "micro entity."
A micro entity is defined as an applicant who makes a certification that the applicant--
(1) qualifies as a small entity, as defined in regulations issued by the Director;
(2) has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under section 111(b), or international applications filed under the treaty defined in section 351(a) for which the basic national fee under section 41(a) was not paid;
(3) did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
(4) has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.
Section 10 also requires an additional fee of $400 for each application for an original patent, except for a design, plant, or provisional application, that is not filed by electronic means. Section 10 takes effect on enactment.
Section 11 sets forth new government fees. Section 11 also establishes a fee of $4800 for prioritized examination, and establishes a 15% surcharge for specified fees to be credited to the U.S. Patent and Trademark Appropriation Account, remain available until expended, and used only for specified expenses relating to patent applications. Section 11 takes effect on enactment (September 16, 2011).
Section 12 provides for supplemental examination. A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish. Within 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct the supplemental examination and shall conclude such examination by issuing a certificate indicating whether the information presented in the request raises a substantial new question of patentability. Section 12 takes effect in one year.
Section 13 decreases the percentage of certain invention-related royalties and income that must be paid to the federal government and increases the percentage that must be given to small business firms when a nonprofit organization has a funding agreement with the government for the operation of a government-owned, contractor-operated facility. Section 13 takes effect on enactment.
Section 14 deems tax strategies to be within the prior art (unpatentable). Any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art. Section 14 takes effect on enactment (September 16, 2011).
Section 15 prohibits using a failure to disclose the best mode as a basis to invalidate patent claims. Section 15 takes effect on enactment (September 16, 2011).
Section 17 prevents using an accused infringer's failure to obtain the advice of counsel to prove that any infringement was willful or induced.
Section 18 requires the Director to establish an eight-year transitional post-grant review proceeding for reviewing the validity of covered business-method patents not later than one year after enactment.
Section 19 amends federal judicial code to state that no State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights. Section 19 grants the Federal Circuit exclusive jurisdiction of appeals relating to patents or plant variety protection. Section 19 applies to any civil action commenced on or after the date of the enactment of this Act (September 16, 2011).
Section 20 makes various minor technical amendments.
Section 21 authorizes the U.S. Patent and Trademark Office to pay subsistence and travel-related expenses of persons attending certain USPTO-conducted intellectual property programs who are not federal employees. It also authorizes the Director to fix a basic pay rate below a certain level for administrative patent and trademark judges. Section 21 is effective October 1, 2011.
Section 22 establishes in the Treasury a Patent and Trademark Fee Reserve Fund. If fee collections by the Patent and Trademark Office for a fiscal year exceed the amount appropriated to the Office for that fiscal year, fees collected in excess of the appropriated amount shall be deposited in the Patent and Trademark Fee Reserve Fund. The amendments made by this section shall take effect on October 1, 2011.
Section 23 states that the Director shall, not later than three years after enactment, establish at least three U.S. satellite offices for the U.S. Patent and Trademark Office.
Section 24 states that the satellite office of the United States Patent and Trademark Office to be located in Detroit, Michigan, shall be known and designated as the ‘Elijah J. McCoy United States Patent and Trademark Office’
Section 25 Authorizes the USPTO to establish regulations providing, at the request of the applicant, prioritized examination of applications for products, processes, or technologies important to the economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization.
Section 26 requires the Director to make a study on the manner in which this Act and the amendments made by this Act are being implemented by the Office, and to make a report to Congress within four years after enactment.
Section 27 requires the Director to conduct a study on effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist.
Section 28 requires the Director to establish and maintain in the Office a Patent Ombudsman Program. The duties of the Program’s staff shall include providing support and services relating to patent filings to small business concerns and independent inventors.
Section 29 requires the Director sto, not later than the end of the 6-month period beginning on the date of the enactment of this Act, establish methods for studying the diversity of patent applicants, including those applicants who are minorities, women, or veterans. The Director shall not use the results of such study to provide any preferential treatment to patent applicants.
Section 30 states that it is the sense of Congress that the patent system should promote industries to continue to develop new technologies that spur growth and create jobs across the country which includes protecting the rights of small businesses and inventors from predatory behavior that could result in the cutting off of innovation. Apparently, lobbying by large companies to push through patent reform is not considered predatory behavior.
Section 31 requires the Director to, in consultation with the Secretary of Commerce and the Administrator of the Small Business Administration, carry out a study
to determine how the Office, in coordination with other Federal departments and agencies, can best help small businesses with international patent protection.
Section 32 requires the Director to work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.
Section 33 states that notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Section 34 directs the Comptroller General to conduct a study of the consequences of litigation by non-practicing entities, or by patent assertion entities, related to patent claims.
Section 35 states that except as otherwise provided in this Act, the provisions of this Act shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to any patent issued on or after that effective date.
Section 37 sets forth a provision concerning calculation of the filing period for patent extension applications related to drug products and certain other items subject to regulation under the Federal Food, Drug, and Cosmetic Act.
Many changes will be subject to implementation rules drafted by the U.S. Patent and Trademark Office. These rules have not yet been written.
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