Category: Patent Legislation

By Donald Zuhn — On Wednesday, the House introduced its own version of the "America Invents Act" (H.R. 1249).  Although the legislation introduced in the House and the bill that was passed in the Senate earlier this month (S. 23) share the same name, the two bills are not identical (a discussion of the differences…

By Kevin E. Noonan  — Today, the Chairman of the Judiciary Committee in the House of Representatives, Lamar Smith (R-TX) (at right), introduced a version of the America Invents Act (passed by the Senate as S. 23).  While identical in most respects, the bill has come provisions that differ from the Senate bill.  (Update: the…

By Donald Zuhn — On Wednesday afternoon, the House Subcommittee on Intellectual Property, Competition and the Internet will hold a hearing on the House version of Senate bill S. 23, otherwise known as the "America Invents Act."  The hearing on the as yet unnumbered House bill, which begins at 1:30 pm (ET), will consist of…

By Kevin E. Noonan — Nestled unobtrusively in a section of S. 23 called "Technical Amendments," S. 23 (the "America Invents Act") has done something that neither Congress nor any court has been able to do for 80 years:  remove (or at least blunt) the duty of candor owed by an applicant to the U.S.…

By Kevin E. Noonan — Senate bill S. 23 (the "America Invents Act") contains several provisions changing the statutory authority of the U.S. Patent and Trademark Office (falling short, fortunately, of giving the Office substantive rule-making authority). The most far-reaching of these changes is contained in Section 9, which gives the Office (for the first…

By Kevin E. Noonan — Seante bill S. 23 (the "America Invents Act"), as passed on March 13, 2011, contains few provisions related to aspects of patent law administered by the judiciary.  This is ironic, in view of the extent to which calls for reform of damages, venue, willfulness, and other issues provided a major…

By Kevin E. Noonan — S. 23 (the "America Invents Act" or, colloquially the patent reform bill) contains additional provisions for the U.S. Patent Office to obtain information related to patentability, both pre- and post-grant, as well as establishing a replacement for the Board of Patent Appeals and Interferences called the Patent Trial and Appeal…

By Kevin E. Noonan — The "America Invents Act" (S. 23 or the patent reform bill) passed by the Senate contains revisions to current inter partes reexamination as well as provisions for an entirely new post-grant review proceeding. Section 5(a) sets forth the revisions to inter partes reexamination.  The most significant of these is a…

By Kevin E. Noonan — The "America Invents Act" (S. 23; aka the patent reform bill) makes significant changes in the power of an assignee, or someone who has obligated an inventor to assign, to file an application without obtaining an oath or declaration (or even permission or knowledge) of the inventor, raising an interesting…

By Kevin E. Noonan — The Senate passed S. 23 last week, which will make several significant changes in U.S. patent law if its provisions survive deliberations in the House (which is preparing its own bill).  One of the most fundamental of these is the change from the current "first-to-invent" to a "first-inventor-to-file" system.  In…