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U.S. sees most significant patent reform in decades

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Indiana Lawyer Focus

Sweeping patent reforms became law Sept. 16 when President Barack Obama signed the America Invents Act, the most significant patent reform legislation in six decades. The AIA incorporates many changes and harmonizes U.S. practices with systems in place around the world, according to some Indiana lawyers. Some believe the revisions are more symbolic than practical, while others believe the changes will impact every aspect of how patent lawyers do their jobs.

“It changes how you go about getting a patent, defend or challenge a patent infringement case, when to file, the internal procedures for documenting patentable inventions … basically there’s a lot that has been affected and it influences all companies, start-ups and individuals big or small,” said IP attorney Todd Vare with Barnes & Thornburg in Indianapolis.
 

Todd Vare Vare

The U.S. House of Representatives passed the bill 304 -117 in June, and in early September the Senate voted 89-9 in favor of it. Research universities, technology firms and various business groups supported the changes, while most of the opposition came from small businesses that worried the reforms favored large firms with access to more capital.

Some changes will go into effect in 2011, while other aspects of the legislation will become effective in 12 or 18 months.

Specifically, the bill streamlines the patent process to eliminate the backlog of 680,000 patent applications and reduces the time it takes for a patent to be approved, currently three years. Reforms are also designed to reduce litigation and costs associated with challenging or defending a patent.

Most notably, the reforms bring the nation’s patent system into conformity with laws observed throughout the world by granting patent protection to the first person to file a patent rather than the current “first-to-invent” process.

Before the change, the existing first-to-invent standard used to determine patent ownership involved an inventor being able to demonstrate that he or she came up with an idea first. The requirements of that process involved steps patent holders and seekers frequently described as burdensome and full of delays in obtaining a patent. The “first-to-file” system gives priority in deciding who owns an invention’s patent to the first person or entity to file for the patent, regardless of the date of invention.


rost-stephen-mug.jpg Rost

Some Indiana attorneys think this new first-to-file process will create a race to the U.S. Patent & Trademark Office in order to obtain patent protection first. Stephen Rost with Taft Stettinius & Hollister said smaller companies will be under more pressure to file a patent application for each new development and invest more upfront to get that done, without knowing the potential for actually obtaining the patent.

Baker & Daniels attorney Adam Cox of Ft. Wayne isn’t sure if the new first-to-file system will have a practical impact, but he finds the change troubling.

“In the U.S., we’ve always valued individual rights and the image of the garage inventor is very pertinent in our culture,” he said, mentioning iconic inventors like Thomas Edison, Henry Ford, Bill Gates and Steve Jobs. “The thought of the garage inventor who invents first but delays filing and eventually loses to the big company who invents later but files faster is troubling. That is one reason we’ve always operated under the first-to-invent system, and this flips that notion on its head.”

But small individual inventors are often passionate and motivated to file quickly, so Cox says the impact may be less than critics expect. Rost said patent lawyers and patent agents may be asked to draft more patent applications because companies will be under increased pressure to file quickly. The number of provisional patent applications will likely skyrocket because they can be used as place holders until an actual patent can be officially requested, he said.

Other notable changes to U.S. patent laws include:

• Third parties are given the opportunity to challenge the patent office’s decision to grant a patent.

• Third parties may cite prior art to the patent office during prosecution of a patent application.

• Business method strategies to reduce taxes are not patentable.

• Only the government and those suffering a competitive injury will be allowed to sue for false patent marking.

• Failure to obtain the advice of counsel cannot be used to prove willful infringement.

• Creates a mechanism by which the patent office will reevaluate and possibly invalidate previously issued business method patents.

• Eliminates the requirement that inventors describe the “best mode” of making and using the invention as a basis for challenging the validity of a patent.

• Allows individual inventors or very small companies to file patent applications at significantly lower fees, allowing those small companies and inventors to afford filing a patent application where they might not otherwise be able to afford such an application.

The changes were designed to give the patent office more resources so it will do a better job of assessing patent applications, with the idea that rejecting bad patents will head off some litigation. The AIA has been promoted by the president as a job creator and a way to speed up the patent application process and end delays.

Half of the patents challenged in court are invalidated. The new law will allow anyone – including a company’s rivals – to scrutinize newly granted patents and give the patent office evidence to show why it should not be allowed.

“Whether these changes are viewed positively or negatively may actually depend on the type of client one represents,” Rost said.

More legal time will be needed to follow competitors’ filed patent applications and monitor those issues, Rost said, and that will increase the workload IP and patent-focused attorneys will have. Vare added on the flipside that companies won’t have to spend as much internally to document the invention process as they did in the first-to-intent system, compiling detailed lab notebooks and records.

“Anybody and everybody has an opinion about it being good or bad, but it is what it is,” Vare said. “As an attorney, you need to take advantage of the provisions you need and know what you might get burned by.”•
 

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  1. Am I the only one who sees that the City is essentially giving away the MSA site AND giving millions to build new buildings on the site when this site would be the perfect place for the Justice Complex? Across from City-County, check; keeping it centrally located, check, etc. It's my understanding that the GM site must be purchased by the City from Motors Liquidation Company. STOP WASTING WHAT WE ALREADY HAVE AND OUR TAX DOLLARS! The Ballard Administration has not been known for it's common sense...never voted for him and never will!

  2. This guy sounds like the classic molester/manipulator.

  3. Louis D. Brandeis was born in 1856. At 9 years of age it would have been 1865. The Brandeis family did not own slaves. My source Louis D. Brandeis: A Life, by Melvin L. Urofsky.

  4. My name is Matthew Lucas Major, I recently went through a jury trial in Bloomington , In. It was the week of Feb 19-21. Although I have been incarcerated since August 5, 2014. The reason I 'am writing to you sir is on the 21 of February the jury came in with a very excessive and wrongful verdict of guilty on 6 child molesting charges against my daughter who was 9 at the time I was accused. I also had 2 other Felonies one of Intimidation and 1 of Sexual Vicarious Gratification. Judge Marc Kellam on the second day of trial gave me a not guilty on those 2 felonies. The jury was sent out during that time and when brought back Judge Kellam told them to not concern themselves with the 2 Felonies that he ruled on them. They were told to not let evidence they had already heard influence there verdicts. I never in my life touched any child sexually and definitely not with my own daughter. When I was arrested Detective Shawn Karr told me I would be convicted guilty just on my daughters word even without evidence. That's just what happened. my public defender did me so wrong he never once proved to the court and jury all the lies the child told, and Jeremy Noel my public defender could of proven the lies easily. The stories in Serenity's depositions and Forensic interview changed and were not consistent as Prosecutor Darcie Fawcett claimed they were. Yet my attorney never mentioned that. The facts that the child accused me of full penetration in her vagina and rectum was proven lies. Doctor Roberta Hibbard of Riley hospital in Indianapolis confirmed Serenity's hymen intact, no scars, no tearing, no signs of rape to her. Yet my attorney didn't use that knowledge . the DNA was all in my favor. I tell you I will spend my entire life in prison going through rape and beatings etc. even Judge Kellam abused his authority by telling the jurors to listen and believe what the prosecutors side in evidence like my daughters testimony. In one interview with the detectives my daughter got flustered with her mom and said on camera " I'm saying what you told me to mom"!! Yet Mr. Noel said nor did anything to even resemble a defense attorney. Judge Kellam allowed edited version of a taped conversation between the child and her mother. Also Judge Kellam allowed the Prosecutor too bring in to my case a knife found under my seat, the knife wasn't part of my case. She was allowed by my attorney and the judge to put a huge picture of it on the screen and huge picture of my naked privates in a full courtroom and open court. Ms. Fawcett says to jury see how easy Mr. Major could reach the knife and cut his Childs throat. Even though I had no weapons charge against these cases. This gave the jurors prejudice thought against me thinking I threatened her with that knife and how scared she would of been knowing i could get it and kill her. On my sentencing court March 19, 2014 my public defender told Judge Kellam he wish to resign from being my attorney and wished for the court to give me outside council to file a error to trial or appeal. We were denied. Now after openly knowing my public defender don't want to represent me he has to. Well when as parents we make our kids clean a room when they really don't wish to, well the child will but don't mean she will do a good job, that's where I'm at with Mr. Noel. please dont ignore mine and my families pleas for your help . we have all the legal proof you could need to prove Im innocent. Please dont make my spend years in prison innocent when you can fix this wrong. Im not saying Im a perfect man or that I was a perfect dad to my 2 children none of us are. Ive made some bad choices in life and I paid for them. But I didnt ever touch or rape my daughter . I love my children with all my heart. And now through needing attention and a ex-wife who told my granny several times she wish she could put me in prison to get me out of their lives. Well my ex finally accomplished her goal. Sad part is she is destroying our daughter with all this horrific lies and things she taught my daughter to say. My daughter will need therapist to ever hope for a chance of a normal life after what she had done to her by her mom and their side of the family. My daughter told everyone even on stand she had a dream months before i supposedly molested her in this dream I was molesting her and when I finally did it matched her dream perfectly. She admitted to watching movies about little girls being molested and watching U-Tube videos about child molesting all before it happened supposedly to her. Doesn't that sound very unusual that a non molested 9 yr old would need to know so much about being molested? The only reason I could think a 9 year old would need so much information is to be prepared to know what to say and be able to say how it felt what took place etc.. So when questioned by authorities she would be prepared. And there again sir if a parent is pre grooming a 9 year old child she would need intimate details . Like telling her daughter about a couple moles on my private area. The child admitted to sneaking my cell and looking many many times at nudes of me and my girlfriend even one where my penis was entering my girlfriends vagina. In that picture my moles are obvious. Yet when prosecutor showed everyone in court my privates and pictures of the moles she said the only way the child would know about them is if she saw them for herself. My attorney once again said nothing about the pictures my child saw. Or could a ex-wife be able to describe my moles to help her case against getting rid of me? I beg you help me. This is my very existence. Ive lost everything , a good job, a wonderful girlfriend, my freedom, but worse thing Ive lost is my children. They were my reason to get up every morning and strive to be better. The wonderful bond I had with my Serenity is gone. After this I would be afraid to even hug her for fear of what next can they do to me. I'm not afraid to tell you I sit here in this cell and try to hold back my tears. Everyone knows you cant show weakness in prison. My life has already been threatened here at Wabash Valley Prison. After only 3 days of arrival. I was tricked into signing a waiver now Im in G Block General Population with 6 child molesting felony charges. Mrs. Hart as a 18 year old I almost died hooked to machines in hospital almost 1 month and now I know that fear was childish compared to this . I cant help but put emotions in this, after all Mrs. Hart Im human and God help Me I never been more afraid in my life. I didnt hurt my little girl I didnt touch her sexually. As much as it shreds me and fills my mind what Im facing I worry more about my mom and granny because of their great love for me mam they are suffering so deeply. I aint done this things but my loved ones suffering right along beside me and If you take my case you will be in essence freeing them also. I sent momma this letter and asked her to email it to you. I'm scared I have been done so unjustly by our legal system and I need you to fix this and give me freedom. I ask you please don't just ignore my pleas. Here in America its nice to be able to trust our legal justice system, well they destroyed my and my loved ones trust in our justice system . And I'm trusting in You !!! My entire family is suffering this nightmare with me. My 77 year old granny had a stroke and isn't doing so well. My single mother that raised 3 kids alone is dying from Lupus and since my arrest has stayed so sick and weary. Our lives torn to peices by a government I was taught I could trust in. my momma has tried so many innocent project and wrongfully accused and cant get anywhere. please please help me. A quote from the late Nelson Mandela: To be free is not merely to cast off ones chains, But to live in a way that respects and enhances The Freedom Of Others. I have Faith in you and your clinic to cast my chains off and give me freedom I do deserve as a wrongfully accused Man, son, brother, father, friend. Matthew Major DOC# 246179 Cause # : 53c02-1308-FA-000779 God Bless you. Please contact me with your decision so I know you made a life changing decision for me , just please at least write me so I know you care enough about your citizens to respond to cries for your help. You can speak openly with my mother Charlotte Spain (828) 476-0406: 71 Lakeview Dr. Canton, NC 28716 Thank You Matthew Major I know yall get thousands of request and inmates claiming innocence, and each person who are innocent deserve to have organizations like yours willing to fight for them and I give yall so much Thanks and I thank God everyday yall are out there caring enough to help free the innocents. Since discovering firsthand how easily lives and families can be destroyed by Poor Defense attorneys not doing their job . And Prosecutors allowed to do as they please in court

  5. Frankly, it is tragic that you are even considering going to an expensive, unaccredited "law school." It is extremely difficult to get a job with a degree from a real school. If you are going to make the investment of time, money, and tears into law school, it should not be to a place that won't actually enable you to practice law when you graduate.

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