obvIPat - Obviously Patentable

The blog for inventors, in-house counsel, & entrepreneurs.

Archive for September, 2011

The Patent Act of 2011-Dawn of a New Era

by Orlando Lopez

Yesterday, Thursday September 8,  the Senate passed the House version of the Patent Reform Act. The Patent Reform Bill moves the US from a first to invent  to a first to file system. The Bill also creates an opposition procedure, changes the nature of the one-year safe harbor, changes the requirement for obtaining a patent (section 102 of the Patent Act), does away with false marking trolls, emasculates  the best mode requirement and sets up an “I invented it first” defense against patent infringement. September 8, 2011 marks a significant change in the patent law (a day of celebration or a day that will live in infamy, depending on who you speak with). Once signed by the President, (which, according to the speech that same day, the President will do) the Bill has a time period it goes into effect. That time period will allow all of us to adjust to the new regime. Whether or not the Bill is challenged as being unconstitutional, only time will tell. In the meantime, we are moving to a cleaner patent practice (no more swearing back-my mother would have liked that change), more pressures on the inventors since the safe harbor now covers  less territory and definitely a faster pace for the scribes (the patent attorneys), since now we have a race to the patent office to see who files first.

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The Danger of Claiming Broadly: CyberSource Corp. v. Retail Decisions, Inc.

by Orlando Lopez

While a patent attorney attempts to obtain the broadest possible claims, there is the danger of claiming too broadly.  In CyberSource, the District Court and the Court of Appeals for the Federal Circuit (CAFC) both found that the method claim was invalid since it recited a mental process.  Both the District Court and the CAFC also invalidated the Beauregard claim, the claim that recites a computer program product having a computer usable medium that has computer readable code embodied therein that causes the processor to perform the method.  The invalidation of the Beauregard claim, at first sight, brings terror to the hearts of the friends of software claims.  Read the rest of this entry »

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Patent Reform: The Senate Closer To Cloture

by Orlando Lopez

Scheduled for Tuesday, September 6, at the U.S. Senate, is a cloture vote on a motion to proceed to the House Patent Reform Bill.  By considering the House Bill instead of a committee version, the Senate is considering a watered-down version of the prohibition against fee diversion (taking money from the USPTO and using it for other purposes, referred to as robbing Kappos to pay Paul) and a previously invented defense against infringement.  Both of these two provisions are unpopular with patent practitioners.  The previously invented defense, which allows an infringer to escape because the infringer had invented the patented invention before the patent owner, also conflicts with the “promoting the useful arts” provision of the Constitution.  The Senate embarks on this debate on the heels of the publication of a survey showing the unpopularity of many of the Patent Reform Bills with practitioners, and on the heels of the publication of an article showing the negative effects of the first to file system patent filings by small entities.  Many of us are willing to pay the price of first to file in order to see the end of fee diversion.  We will wait and see what develops in the Senate, although in today’s climate we have reduced expectations.

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