By Audrey Millemann

There has been a lot of media attention over the new patent laws (the “America Invents Act”) adopted by Congress and signed by the President in September 2011, six years after being introduced. Commentators have called the Act the most significant change in 60 years (since the 1952 amendments). One of the Acts purposes is to reduce the backlog of pending patent applications (estimated at over 700,000) by expediting the examination and issuance of the patents. Another goal of the Act is to make United States law more consistent with foreign patent laws. 

First to File

The most important change makes the United States a “first-to-file” system instead of a “first-to-invent” system. The new system is more accurately called a “first-inventor-to-file” because the applicant must still be the true inventor. If two inventors invent the same thing, however, the relevant question is not when the invention was conceived, but when the application was filed. The applicant’s date of invention is no longer determinative. Thus, inventors will now be engaged in a race to file an application in the Patent and Trademark Office (“PTO”). Continue Reading New Patents Laws

On September 8, 2011, the Senate voted 89-9 to pass the America Invents Act (the “Act”). Thereafter the bill was sent to President Obama, who is expected to sign it into law. While the provisions of the Act include more funding for the United States Patent and Trademark Office, the eventual elimination of interference proceedings, and the creation of a potentially more streamlined post-grant challenge process, the most noteworthy portion of the Act grants priority to a patent application based on the application’s filing date. This represents a significant departure from the longstanding United States patent law giving the first person to invent a device priority over all others.

The “first to file” provision of the Act will be met with mixed reactions. Individual inventors and small businesses claim that the “first to file” provision will create a race to the Patent Office, requiring them to expend significant amounts of money and other resources in order to quickly file patent applications ahead of other parties who may be working in a similar technological field. Larger businesses believe that the Act will be beneficial to the patent system by reducing the number of disputes relating to the priority of patent applications by creating an objective priority date. Of a more general concern is the possibility that the rush to file patent applications might result in a lower overall quality of the claims described in patents, potentially resulting in ambiguity and causing difficulty in interpreting those claims in the context of patent infringement litigation.Continue Reading On the President’s Desk: the America Invents Act

By Audrey A. Millemann

The Court of Appeals for the Federal Circuit recently addressed the issue of the patentability of process (method) claims in one of the first cases decided since the Supreme Court’s 2010 decision in Bilski v. Kappos, 130 S. Ct. 3218 (2010). The case is CyberSource Corp. v. Retail Decisions, Inc., 2011 U.S. App. LEXIS 16871 (Fed. Cir. Aug. 16, 2011).

The plaintiff, CyberSource, owned a patent for a method and system of detecting fraud in a credit card transaction between a purchaser and a merchant over the Internet. According to the patent’s specification, the prior art systems for detecting credit card fraud worked well in face-to-face transactions, but did not work in transactions for the sale of downloadable content over the Internet. The invention, as described in the patent, overcame the problems of the prior art by using Internet address information (e.g., IP addresses, email addresses, etc.) to analyze whether the purchaser’s Internet address was the same as the Internet address previously used with the same credit card number. Continue Reading Federal Circuit Limits Patentable Processes