Patently-O Bits & Bytes by Lawrence Higgins

Is it really a First-to-File Patent System?

  • With the passage of the America Invents Act (AIA), the US was going to become a First-to-File, instead of a First-to-Invent patent jurisdiction. However, was this really accomplished with the AIA, or was something else achieved? When most people think of a First-to-File patent system, they would probably think it means exactly what it says (the first person to file the patent application has priority). However, the 1-year grace period exceptions in 35 U.S.C. 102(b) seems to create a quasi or pseudo First-to-File system.

    102(b) (1) reads:

    • DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION. – A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if –
  1. The disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor

The language of 102(b)(1) could cause lots of controversy. Essentially if an inventor puts his invention or disclosure on the internet or discloses it any public way, he/she has one year from that date to file a patent application, and the disclosure would not count as prior art against the inventor. However, the disclosure would count as prior art for a later inventor, which seems to suggest a First-to-Invent system. This creates an incentive for inventors to disclose inventions immediately so as to bar other inventors and receive an early priority date. I expect litigation about this topic and the many situations that could arise.

Judge T. John Ward, Sr. Steps Down

  • Judge Ward, who is credited with turning Marshall, Texas into an unlikely hotspot for patent litigation, will return to the practice of law at Ward & Smith. Judge Ward will practice law alongside his son T. John ("Johnny") Ward, Jr. During Ward's tenure, the Eastern District also developed a reputation as being a haven for patent holders, particularly nonpracticing entities, or "patent trolls." Could the departure of Judge Ward potentially lead to a decrease in the amount of cases filed in the Eastern District of Texas? [Link]

WIPO's Statistical Country Profiles Tool

  • Statistical country profiles provide information on patents, utility models, trademarks and industrial designs. They cover different dimensions of IP activity, including incoming and outgoing filings, the share of filings in different technological fields, total patents in force, and the use of international IP systems by applicants. The filings and grants are divided into the following categories: "resident" – domestic filings; "non-resident" – filings coming in from other countries; "abroad" – filings going out to other countries. The statistics also associate IP activity relative to countries' economic performance. For example, users can compare the trend of a country's total IP filings – defined as the sum of resident and abroad filings – with that of the country's GDP. Furthermore, they indicate the country's global rank for each indicator. [Link]

Upcoming Events:

  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • The 17th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
  • The 4th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]

Contact with leads for future Bits and Bytes.