Tag Archives: Patent Reform

Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part III

In this final post of our trilogy, we present a third scenario where the first-to-file regime under AIA offers previously unavailable opportunities for disqualifying certain prior art references. The fact pattern is as follows: Inventor X made a novel base nanomaterial and filed a US patent application on January 1, 2009 (Application A), which was assigned to Company … Continue reading this entry

Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part II

Authored by Peng Sun* and Tianran Yan Our previous post discussed the need for invoking the first-to-file regime in order to maximize the value of certain pre-AIA applications that claim foreign priorities.  Here, we present another scenario where the different prior art standards between the AIA and the pre-AIA patent law is likely to justify a … Continue reading this entry

Urgent: Time Flying in 2013 as First-to-File and New Fee Systems Now Arriving!

An updated URGENT alert that the new U.S. first-to-file patent reform laws are now less than two weeks away. Many companies, whether nanotech, cleantech, biotech, or other types of emerging technology companies, should consider the merits of filing new, quality patent applications by March 15, 2013. Time is flying in 2013. The USPTO recently issued its finalized rules … Continue reading this entry

Final Phases of Patent Reform Now Upon Us - Mark March 16, 2013 on Your Calendar and Plan Now

The final phases of U.S. patent reform become active on March 16, 2013 when the U.S. patent system switches to a “first-to-file” system. The USPTO has to date only issued draft guidance on this switch. Hopefully, they will issue final guidelines soon so patent applicants can adapt well to the new regime, particularly if the final … Continue reading this entry

Lamar Smith New Chair of House Committee on Science, Space and Technology; Impact on NNI?

In a move which could favorably impact the National Nanotechnology Initiative (NNI), House Congressional Republicans recently selected Rep. Lamar Smith (R-Texas) to chair the House Committee on Science, Space and Technology. Rep. Smith has been a supporter of nanotechnology, having sponsored legislation such as HR 5940 to improve the National Nanotechnology Initiative. A statement released … Continue reading this entry

Patent Reform Marches on to Critical Dates of September 16, 2012 and March 16, 2013, as Patents Again Make Front Page Headlines

The recent, large judgement against Samsung in the Apple v. Samsung patent litigation has again brought patenting to the front pages of American news media. In that context, the September 16, 2012 and March 16, 2013 critical dates for when fundamentally new patent law takes effect takes on added importance. It is crucial for the innovation community to … Continue reading this entry

NanoBiz Conference, September 4-6, 2012, Boston, Critical Patent Updates

The 11th Annual Nanobusines Conference will be held September 4-6, 2012 in Boston, in conjunction with the Nanomanufacturing Summit. We are planning a session on patenting and important updates with patent reform. Last year’s panel provided for a lively conversation as the new patent law was reviewed. Now, new developments have surfaced one year later as critical regulations are … Continue reading this entry

US PTO's 2012 Steep Fee Increases Controversial; Cleantech and Nanotech Involvement

We are urgently reviewing the proposed PTO fee increases based on PTO documents issued over the past week. The US PTO appears to agree that some of the steep fee increases, particularly the RCE fee increases, will be controversial. We encourage in 2012 all nanotech entities, cleantech entities, and every other entity under the sun who values patenting … Continue reading this entry

Patent Reform Moving Ahead - Debates Continue, PTO Rules Emerging,... Price Outrage?

Two items of note today: 1) The US PTO today finally issued its proposed rules to implement its novel procedure called supplemental examination.  Bad news; and maybe outrage to follow.  They will charge a PTO fee of $5,180.00 “for processing and treating a request for supplemental examination.”  They will also charge a whopping fee of … Continue reading this entry

PTO Procedures Under The America Invents Act, March 26, 2012

Cleantech & Nano Blog is a proud sponsor of ACI’s “A Practical and Tactical Guide for Maneuvering New and Amended Procedures and Mastering the Intricacies of PTO Practice in the Wake of Patent Reform” forum to be held on March 26 and 27, 2012 in New York City. Information provided by ACI: The America Invents Act … Continue reading this entry

Patent Reform a Good Reminder re IP and Your Organization

Over the past month, we have been busy providing inputs to clients, including a variety of different types of organizations, on the new patent reform. Despite the variety in types of organizations, a common theme emerges: this is a good time to step back and look at your organization as a whole and determine how IP is … Continue reading this entry

Reactions to Patent Reform at Nanotech Conference

I enjoyed attending the recent NanoBusiness Commercialization Association Conference in Boston on September 26-27.  We provided a panel discussion on patent reform which provided spirited questions and comments. For example, concern was expressed from the audience that large companies would use new post-grant review processes to hamper the progress of small companies with new patents. We … Continue reading this entry

Nanomanufacturing Summit 2011 & 10th Annual NanoBusiness Conference

Join the nanotechnology community beginning Sunday, September 25, 2011 for three days of dynamic discussion among leaders from emerging areas of nanomanufacturing and commercialization of nanotechnology-enabled products. Foley is proudly sponsoring the panel, “A New Patent Era! Reform and Recent Court Decisions Impacting IP Strategy and Valuation” which will includes the following guest speakers: Henning Richter … Continue reading this entry

Patent Reform: Universities and Others will have to Wait on Micro Entity Status

We called the US PTO today to confirm one important point:  universities and other applicants will have to wait for more rule-making to use the new micro entity status.  This gives a 75% discount on many PTO fees for selected applicants, including qualified universities, per new 35 USC Section 123. Many commentaries on patent reform have simply said … Continue reading this entry

A Better Chip: More Federal Government Innovation Initiatives per President Obama on September 16, 2011

Before signing patent reform legislation on Friday, September 16, 2011, President Obama spoke briefly of new federal innovation initiatives which include nanotech and cleantech.  More detailed information has been provided. Nanowerk reports some of the developments:  "The National Institutes of Health will collaborate with the Defense Advanced Research Projects Agency (DARPA), and the U.S. Food … Continue reading this entry

Patent Reform: Obama Speaks, Obama Signs

President Obama finally signed the America Invents Act for patent reform and also provided interesting remarks before signing.  A video of his remarks and his signing is available, including opening comments from a Thomas Jefferson student who has a patent already. In addition, in the middle of the President’s remarks, he made some brief remarks about a new … Continue reading this entry

"You Win in the Turns" - Patent Reform Kicking In

"There is a business adage that says, ‘You win in the turns.’  That is, when there are big shifts in the marketplace, the best companies gain market share and put distance between themselves and their competitors because they have the vision and flexibility to spot tectonic change and leap ahead when it occurs, while others … Continue reading this entry

Staying Awake on Best Mode as Patent Reform Steams Ahead to Enactment

One of the central aspects of the recently passed patent reform in Congress is the elimination of the best mode defense by amendment to 35 USC Section 282.  However, Congress did not in parallel eliminate the best mode from the requirements of 35 USC Section 112.  In other words, the US PTO is still supposed to grant patents … Continue reading this entry

Patent Reform Widely Discussed While Obama Waits to Sign

Patent reform is widely being discussed now since Congress passed the legislation last week and President Obama is waiting to sign the legislation.  I found it interesting that a leading university group, AUTM, applauded the passage on their website, whereas a leading angel investor I listened to is against it.  The issue there is whether the massive change and … Continue reading this entry

OK, Congress Passed Patent Reform Today

OK, Congress passed patent reform today.  Finally.  The PTO will certainly have a lot of work to do in preparing the regulations needed to implement the new law.  Six years it took.  There is an old saying about political debate, "Be brief, be brilliant, be gone."  The reform process was not brief.  Time will tell … Continue reading this entry

Patent Reform to Impact Cleantech/Nanotech: Historic Vote Today

The Senate – finally – will vote on patent reform today at 4 p.m.  President Obama – finally – will sign the legislation soon after.  The President’s speech on jobs is set for this evening, and patent reform may be mentioned in the speech.  However, no one quite knows with certainty what the impact will … Continue reading this entry

Patent Reform Legislation & PTO's Green Tech Accelerated Examination

Last week, the House passed complex patent reform legislation, HR 1249.  In considering how this might be reconciled with a Senate version passed earlier this year, PTO fee diversion is a key issue.  Many in the high tech community, including cleantech and nanotech, would like to see fee diversion end so as to promote a stronger … Continue reading this entry