Leahy-Smith America Invents Act 1

Leahy-Smith America Invents Act

Leahy-Smith America Invents Act

Long title To amend title 35, United States Code, to provide for patent reform.

Colloquial acronym(s) AIA

Nickname(s) Patent Reform

Enacted by the  112th United States Congress

Effective September 16, 2011

Citations

Public Law 112–29 [1]

Stat. 125 Stat. 284 through 125 Stat. 341 (57 pages)

Legislative history [2]

• Introduced in the Senate as "America Invents Act" (S. 23 [3]) by Patrick Leahy (D–VT) on January 25, 2011• Committee consideration by: Judiciary Committee

• Passed the Senate on March 8, 2011 (95–5 [4])

• Passed the House on June 23, 2011 (304-117 [5]) with amendment

• Senate agreed to House amendment on September 8, 2011 (89-9 [6])• Signed into law by President Barack Obama on September 16, 2011

The Leahy–Smith America Invents Act (AIA) is a United States federal statute that was passed by Congress andwas signed into law by President Barack Obama on September 16, 2011. The law represents the most significantchange to the U.S. patent system since 1952, and closely resembles previously proposed legislation in the Senate inits previous session (Patent Reform Act of 2009).[]

Named for its lead sponsors, Sen. Patrick Leahy (D-VT) and Rep. Lamar Smith (R-TX),[7] the Act switches the U.S.patent system from a "first to invent" to a "first inventor to file" system, eliminates interference proceedings, anddevelops post-grant opposition. Its central provisions went into effect on March 16, 2013.

Leahy-Smith America Invents Act 2

Provisions

First to file and grace period

U.S. patent

The law will switch U.S. rights to a patent from the present"first-to-invent" system to a "first inventor-to-file" system for patentapplications filed on or after March 16, 2013. The law also expands thedefinition of prior art used in determining patentability. Actions andprior art that bar patentability will include public use, sales,publications, and other disclosures available to the public anywhere inthe world as of the filing date, other than publications by the inventorwithin one year of filing (inventor's "publication-conditioned graceperiod"), whether or not a third party also files a patent application.The law also notably expands prior art to include foreign offers for saleand public uses.[8] Applicants that do not publish their inventions priorto filing will receive no grace period. The proceedings at the U.S.Patent Office for resolving priority contests among near-simultaneousinventors who both file applications for the same invention("interference proceedings") are repealed, because priority will bedetermined based on filing date. An administrative proceeding—calleda “derivation” proceeding, similar to that currently used within someinterference proceedings is provided to ensure that the first person tofile the application is actually an original inventor and that theapplication was not derived from another inventor.[]

The AIA refers to the new regime as "First-Inventor-to-File (FITF)". This new regime operates differently than the"First-to-Invent" (FTI) regime currently in effect in the U.S. and the various "First-to-File" (FTF) regimes in place inthe rest of the world. Different outcomes can occur under each of these three different regimes, depending onwhether and how two different inventors publish or file patent applications.[]

Opposition proceduresThe Act revises and expands post-grant procedures. The Act retains existing ex parte reexamination,[9] addspreissuance submissions by third parties,[10] expands inter partes reexamination and renames it inter partesreview,[11] and adds post-grant review.[12]

Additional changesThe America Invents Act included the following changes:[13]

• Tax strategy inventions. Provides that any strategy for reducing, avoiding, or deferring tax liability, whetherknown or unknown at the time of the invention or application for patent, shall be deemed insufficient todifferentiate a claimed invention from the prior art.

• False marking. Eliminates false marking lawsuits except for ones filed by the U.S. government or filed by acompetitor who can prove competitive injury. In addition, marking a product with a patent that formerly coveredthe product, but has since expired, is no longer a violation.

• Filing by other than inventor. An entity can file an application on behalf of an inventor who assigned or isunder an obligation to assign the invention rights to the entity (or if the entity otherwise has financial interest inthe invention), without seeking the inventor's execution of the application. Any patent that issues belongs to theinventor absent a written assignment from the inventor or inventor's estate to the entity.

Leahy-Smith America Invents Act 3

• Best mode. While an inventor is still required to “set forth” the best mode for accomplishing the invention, failureto disclose a best mode is not a basis for invalidating or rendering unenforceable an issued patent.[14] While thelaw formally retains the best mode requirement, by making insufficient disclosure no longer an allowable defenseagainst patent infringement, the law renders best mode unenforceable. This has left many patent lawyerswondering why the requirement was kept at all.[15]

• Prior user rights defense. If an individual/entity begins using an invention ('user') more than a year before asubsequent inventor files for a patent on the same invention, then the user will have the right to continue using theinvention in the same way after the subsequent inventor is granted a patent as long as the user did not derive theinvention from the subsequent inventor. These prior user rights are limited in scope and transferability, and theyalso have limited applicability to patents held by universities.

• Micro-entity. The AIA added a micro-entity status. A micro-entity includes an independent inventor with aprevious calendar year gross income of less than 3 times the national median household income who haspreviously filed no more than four non-provisional patent applications, not including those the inventor wasobligated to assign to an employer. A micro-entity also includes a university or an inventor under an obligation toassign the invention to a university. A micro-entity is entitled to a 75% reduction in many of the patent feespayable to the US Patent Office during prosecution of a US patent application. The patent office is expected todevelop regulations to identify which fees will be eligible for the reduction and how joint inventors may qualifyas a micro-entity.[16]

• Confidential Sale. Provides that confidential sales of products containing the patented technology will no longermark the beginning of the 1 year period to file the patent.[17]

Savings from small entity (prior to act, based on small entity fees & includes 15% surcharge), to micro entity (postact):

USPTO Fee Type* Before After Difference

Basic Utility Fee $165 $95 $70

Utility Search Fee $270 $155 $115

Utility Exam Fee $110 $63 $48

Issue Fee $755 $435 $320

3.5 Year Fee $490 $283 $208

7.5 Year Fee $1240 $713 $528

11.5 Year Fee $2,055 $1,183 $873

***** ***** ***** *****

TOTALS $5,085 $2,925 $2,160

% Net Savings for the new Micro Entity over Prior Small Entity Inventor = 42%

Leahy-Smith America Invents Act 4

USPTO practice changes• Fee Setting Authority. The USPTO would be given authority to adjust its fees in a way that "in the aggregate"

recover the estimated costs of its activities.[13]

• Review of inter partes reexamination. Direct appeal to the Federal Circuit is the only option for judicial reviewin inter partes reexamination cases.[13]

• Additional USPTO facilities. Establishes additional USPTO satellite offices, the first of which will be located inDetroit, Michigan.[13]

• Third-party submission of prior art. Third-parties may submit prior art in published application if submittedprior to the later of: the mailing date of the first office action, or six months after publication.[13]

Legislative historySenator Patrick Leahy (D-VT) introduced similar bill S. 23 [3] in the United States Senate on January 25, 2011, withseven co-sponsors (also members of the Judiciary Committee) that include Senators Coons (D-DE), Grassley (R-IA),Hatch (R-UT), Klobuchar (D-MN), Kyl (R-AZ), Lieberman (I-CT), and Sessions (R-AL). The Judiciary Committeeunanimously approved the bill, and the United States Senate passed it March 8, 2011, by a vote of 95–5. H.R. 1249:[18] was passed by the House Judiciary Committee on April 14, 2011, by a vote of 32-3.[]

The House of Representatives passed their version of the Act (H.R. 1249 [19]) on June 23, 2011 by a vote of304-117, with sixty-seven Republicans and fifty Democrats voting against the bill.[] On September 8, 2011, theSenate approved the House version by an 89-9 bipartisan vote.[20] On September 16, 2011, President Barack Obamasigned the bill into law at a ceremony at Thomas Jefferson High School for Science and Technology in NorthernVirginia.[]

Policy debateProponents of the bill argued that it may even the playing field by removing the tricks a well-funded infringer cancurrently use against a startup owning patented technology.Proponents of the bill suggested that technology companies are subject to an unprecedented wave of patent lawsuits,stifling innovation and creating an overburdened and lethargic patent system. Advocates for the America Invents Actargued that it will create jobs, bolster innovation, streamline the patent system, reduce patent litigation, and keep theU.S. competitive globally.[citation needed]

Opponents of the Bill contended that it will lead to results similar to other nations' patent systems on which the bill ismodeled — market incumbents will become further entrenched, the rate of startup formation will fall to levels inother countries, and access to angel and venture capital will fall to the levels of other countries, as described in theImpact of the Changes section below. A startup that relies on patents for protection from competitive risk, would,under the AIA, lose the protections of the previous regime to assemble the capital, strategic partners, and time forR&D and testing. The startup, exposed to the risk of copying by an established player in the marketplace, will beunable to attract venture capital, and so will lack the financial resources necessary to commercialize the startup’sinvention and grow the company. The weakening of patent protection diminishes incentives for investments anddevelopment.[21]

In addition, opponents of the bill pointed out that the proposed revisions create greater options for accused infringers,and weaken the rights of patentees,[22][23][24] and that patent reform should remain in the hands of the court system.Opponents argue that patent reform should be confined to administrative reforms at the USPTO.[25] The time, effortand money that will be spent after issuance under the AIA on inter partes review and post-grant review would bebetter spent improving initial examination.[26] According to patent attorney and reexamination specialist TaranehMaghame, “the root of the problem trying to be addressed by the reexamination process could be better solved ifquality patents are issued in the first instance.”[26]

Leahy-Smith America Invents Act 5

First Inventor to File and grace period

Proponents of the AIA submitted that it would simplify the application process and bring U.S. patent law into betterharmony with the patent law of other countries, most of which operate on the "first-to-file" system.[] Proponents alsoclaimed that it would eliminate costly interference proceedings at the USPTO[] and reduce U.S. applicants’disadvantages in seeking patent rights outside of the United States.[]

Opponents contended that a "first inventor-to-file" system favored larger firms with well-established internalpatenting procedures, patent committees and in-house attorneys over small business inventors. They claimed that, ina novel and perverse way found in no other country, the Act would weaken patent protection only in America.[27][]

Opponents also submitted that it would (i) cause loss of patent rights due to new prior art published after theinvention date but before the filing date, (ii) weaken the current grace period so it cannot be relied on, compellinginventors to behave as if there were no grace period,[] (iii) replace "interferences" with costly derivation proceedings,which are generally even more expensive than interferences,[28] (iv) create a “race to the Patent Office” with everynew idea, increasing the number of patent applications filed, with the attendant costs in attorney fees and diversionof company personnel to patent application preparation,[] (v) increase examination backlogs at the USPTO, [citation

needed] (vi) do nothing to reduce U.S. applicants’ costs of acquiring patents outside of the U.S., and (vii) decreaseaverage patent quality.[29][][30][][]

It was found that the proposed new regime behaves more like a new and unique kind of patent system withcharacteristics of both the FTI and FTF regimes, rather than a harmonized system sharing characteristics of both.[]

Opponents pointed out that under First-to-Invent, a company with extensive resources could choose to practiceFirst-to-File, by simply racing to the patent office as soon as every invention is conceived, eliminating any need tokeep records of invention conception. Some pointed out that the changes switch the U.S. from a “first to conceive”system to a “first to reduce to practice.” Meanwhile, a company with limited resources could still use First-to-Invent,only filing patents that matter after funding is obtained. Under First-(Inventor)-to-File, the reverse is not true: allparties, regardless of their resources, must adhere to “race to the patent office”. This places small entities at anenormous disadvantage to large entities.There was a question of whether changing to FTF would be constitutional. Article I, Section 8 of the Constitutionstates: “To promote the Progress of ... useful Arts, by securing for limited Times to ... Inventors the exclusive Rightto their respective ... Discoveries.” The term "inventor" means "the first to invent." "To invent" means "to createsomething that has not existed before." Therefore, by the standard definitions of our language, adoption of FTFwould require amending the constitution. All peer-reviewed papers published in scholarly journals found this orsimilar problems.[][31][32] For this reason, the new AIA is not a first to file, but a first inventor to file system. Iteliminates retrospective analysis of murky "inventorship" arguments between two parties, each who inventindependently. Instead, it rewards those who invent, and then file first.Canada changed from FTI to FTF in 1989 and experienced a measurable "adverse effect on domestic-orientedindustries and skewed the ownership structure of patented inventions towards large corporations, away fromindependent inventors and small businesses." [33]

Judicial review of reexamination decisions

Opponents noted that the AIA contained a provision that would deny the right of patent owners to obtain judicial review of adverse USPTO decisions in ex parte patent reexaminations by civil action in district court – a right that has existed under 35 U.S.C. § 306 [34]/ § 145 since the inception of reexamination in 1980. They contended that abolishing this right will leave direct appeal to the Federal Circuit as the only judicial recourse – an intolerable scenario for patent owners who need to rely on evidence that was unavailable during the administrative appeal stage.[35] Opponents contended that this provision will exacerbate ex parte reexamination abuses by creating an unprecedented end-run around Federal District Courts in potentially all patent disputes. They warned that alleged infringers would simply file ex parte reexamination requests with USPTO, receive a final agency decision subject

Leahy-Smith America Invents Act 6

only to Federal Circuit review, essentially bypassing Federal courts. Opponents feared that given the deference theFederal Circuit must accord the agency (Zurko), large number of prospective/alleged infringers would choose thisnew favorable path to challenge a patent, overwhelming the USPTO, causing much lengthier delays in reexaminationand holding up patentees' patent rights for years.

Post-grant opposition

Advocates argued that allowing a challenge of a patent in the first year after the issuance or reissuance of a patentwould improve patent quality by allowing third party inputs. Opponents note that: (a) inter partes review under theBill[36] allows a third party to challenge the validity of any claim(s) in a patent *after* the first year; (b) re-exams arein fact used, not as an alternative to litigation, but rather as a supplement to litigation. In FY2008, 62% of currentinter partes re-exams and 30% of ex parte re-exams were simultaneously in litigation;[37] (c) predatory corporationscan and do file multiple post-grant oppositions against startup companies for the purpose of inflicting financial painand through this practice have successfully extracted patent licensing and purchase agreements on favorableterms;[38] (d) the existing inter partes process in a contested case now takes 34 to 53 months for an un-appealedreexam (assuming no “rework” by the patent office and no secondary appeals to the BPAI, the Federal Circuit, or theSupreme Court), and 5 to 8 years for appealed cases.[39] When Congress created inter partes reexamination, itdirected the USPTO to conduct these reexaminations with "special dispatch."[40] The Bill expands the existing interpartes procedure, adding discovery and a hearing in the Patent Trial and Appeal Board. Consequently, under the Bill,pendency of the inter partes procedure will likely increase, despite the legislative fiat requiring 18 monthdisposition;[41] and (e) the Bill all but requires a federal district court to stay a patent infringement suit copendingwith an inter partes review.[42] Because of the enormous costs and long pendency of inter partes review, the grant ofa stay in a copending infringement suit could effectively be "game over" for the patent owner.[37]

Post Grant Review is available only if the challenger has not already initiated a civil action in District Court. PostGrant Review proceedings are to be conducted by the Patent Trial and Appeal Board, which will replace the Boardof Patent Appeals and Interferences on September 16, 2012 for proceedings that commence on or after that date. PostGrant Review proceedings may be terminated either by settlement or by decision of the Board. There is also estoppelassociated with the challenger at the USPTO, the District Courts and the International Trade Commission (ITC) inasserting invalidity on any ground that could have been reasonably raised during Post Grant Review.[43]

Impact of the changes

The use of reexamination, or the threat of its use, in patent infringement litigation is common.[44] “[G]amesmanshipof the reexamination process has, in the view of some, become more the rule than the exception. Reportedly it hasbecome ‘standard procedure’ that a defendant in patent litigation ‘take an aggressive stance by saying it plans torequest a re-exam on the patent-in-suit or even all’ of the plaintiffs patents. The threat of reexamination is then usedas leverage in licensing negotiations, intimidating patent-holders into settling out of court for lower amounts thanthose to which the value of their patents might entitle them.”[45] Reexamination requests from companies accused ofpatent infringement have recently more than tripled.[46] “Ironically, Congress intended that the reexamination processshould have just the opposite effect: "Patent office reexamination will greatly reduce, if not end, the threat of legalcosts being used to 'blackmail' such [patent-] holders into allowing patent infringements or being forced to licensetheir patents for nominal fees." [47]

Critics argued that the AIA would prevent startup companies, a potent source of inventions, from raising capital andbeing able to commercialize their inventions. Typically, an inventor will have a sufficient conception of theinvention and funding to file a patent application only after receiving investment capital. Before receiving investorfunding, the inventor must have already conceived the invention, proven its functionality, and done sufficient marketresearch to propose a detailed business plan. Investors will then scrutinize the business plan and evaluate competitiverisk, which is inherently high for startup companies as new entrants into the market.[48] Opponents of the Billcontended that, if the bill becomes law, venture funding will be diverted to less risky investments.

Leahy-Smith America Invents Act 7

Proponents of the Bill argued that revision of both post grant opposition and interference will help US inventors.They pointed out that a patent that has survived a post-grant review will be stronger than one without. Neither sideput forward a cost-benefit balance showing that the added strength of these patents will compensate for the loss ofaccess to venture capital, though the venture capitalists that have opined on the likely balance have concluded thatthe post-grant review will reduce access to capital more than it increases patent strength.[49]

Proponents also argued that the Act provides numerous benefits to small businesses such as fast-track patentexamination, fee reductions, and expanded prior user rights.[50]

Other issues

Critics of the bill expressed concern that the administration has been guided by the same people who previouslylobbied for patent reform on behalf of IBM and Microsoft, and that their appointments were a violation of theObama Administration's "Revolving Door Ban". USPTO Director David Kappos represented IBM, Marc Berejka(Senior Policy Advisor, Office of the Secretary, U.S. Department of Commerce) lobbied on behalf of Microsoft, andSecretary of Commerce Gary Locke, to whom the USPTO reported until Locke was made Ambassador to China onAugust 1, 2011, also has extensive ties to Microsoft.[51]

Opponents raised the concern that the bill could cause the USA to lose its leadership position in innovation,particularly as a result of the adverse impact on small companies, who were unrepresented in the negotiationsleading up to this bill.[52] Also, critics complained that this bill will not do enough to curb “non-practising entities”from engaging in purportedly overly aggressive behaviors.[53]

Critics pointed out that the new bill fails to address a glaring issue that will seemingly continue to exist under thenew system: the extensive backlog of existing patent applications. Instead of hiring more examiners to process thisbacklog, "...Congress chose to multiply the alternative dispute-resolution procedures at the PTO, giving the officemore work to do without a guarantee of more money. The result was a muddle as well as a missed opportunity."[53]

Notes[1] http:/ / www. gpo. gov/ fdsys/ pkg/ PLAW-112publ29/ content-detail. html[2] http:/ / thomas. loc. gov/ cgi-bin/ bdquery/ z?d111:HR03590:@@@S[3] http:/ / hdl. loc. gov/ loc. uscongress/ legislation. 112s23[4] http:/ / www. resenate. gov/ legislative/ LIS/ roll_call_lists/ roll_call_vote_cfm. cfm?congress=112& session=1& vote=00035[5] http:/ / clerk. house. gov/ evs/ 2011/ roll491. xml[6] http:/ / www. senate. gov/ legislative/ LIS/ roll_call_lists/ roll_call_vote_cfm. cfm?congress=112& session=1& vote=00129[7] Jackson, Leahy, Smith and Ryan named policymakers of the year (http:/ / www. politico. com/ news/ stories/ 1111/ 69373. html), Politico,

Published 2011-11-29, Accessed 2012-02-01.[9][9] .[10][10] , §7.[11][11] , §5 modifying .[12][12] , §5 adding[13] http:/ / www. uspto. gov/ aia_implementation/ bills-112hr1249eh. pdf[14] Patent Reform Becomes Law: The Leahy-Smith America Invents Act (http:/ / www. dorsey. com/ eu_ip_leahysmith_91411/ )[15] Jan Wolfe, Patent Reform's Reduced 'Best Mode' Requirement Creates Uncertainty (http:/ / www. law. com/ jsp/ cc/ PubArticleCC.

jsp?id=1202518225784), law.com, October 10, 2011. Consulted on October 30, 2011.[16] http:/ / www. uspto. gov/ news/ pr/ 2011/ 11-50. jsp[17] http:/ / www. natlawreview. com/ article/ leahy-smith-america-invents-act[18] http:/ / thomas. loc. gov/ cgi-bin/ bdquery/ z?d112:h. r. 1249:[19] http:/ / hdl. loc. gov/ loc. uscongress/ legislation. 112hr1249[20] Senate Approves Patent Reform Bill (http:/ / pubs. acs. org/ cen/ news/ 89/ i37/ 8937news1. html)[21] Gary M. Lauder, Venture Capital - The Buck Stops Where?, "Medical Innovation & Business Journal", Vol. 2 - Issue 2 (Summer 2010) p.

14–19 (http:/ / journals. lww. com/ medinnovbusiness/ Fulltext/ 2010/ 06010/ Venture_Capital___The_Buck_Stops_Where_. 4. aspx)"[22] Gene Quinn, IP Watchdog, " Unions Oppose Patent Reform Legislation Too (http:/ / www. ipwatchdog. com/ 2009/ 03/ 10/

unions-oppose-patent-reform-legislation-too/ id=2170/ )." March 10, 2009.[23] Scott Jagow, Marketplace, " The Battle over Patents (http:/ / www. publicradio. org/ columns/ marketplace/ scratchpad/ 2009/ 03/

the_battle_over_patents. html)." March 10, 2009.

Leahy-Smith America Invents Act 8

[24][24] ScienceNOW Daily News, "A Fight over Open Access and Patent Reform." March 10, 2009.[25] Ron D. Katznelson, Patent Reforms Must Focus On The U.S. Patent Office, " Medical Innovation & Business Journal, Vol. 2, No. 2, pp.

77-87 (Summer 2010) (http:/ / works. bepress. com/ cgi/ viewcontent. cgi?article=1062& context=rkatznelson)"[26] Interview with Taraneh Maghame, http:/ / reexamcenter. com/ 2009/ 10/ the-reexamination-center-executive-interview-taraneh-maghame.

Retrieved June 7, 2011.[27] Senator Diane Feinstein Remarks on first-to-file, U.S. Senate, March 2, 2011. Senator Feinstein on Patent Reform - YouTube (http:/ / www.

youtube. com/ watch?v=xTWTpbIx4tE& feature=player_embedded)[28] Charles L. Gholz, Would Derivation Proceedings Be The Same as Derivation Interferences?, Medical Innovation & Business: Summer 2010

- Volume 2 - Issue 2 - p 39–42, http:/ / journals. lww. com/ medinnovbusiness/ Fulltext/ 2010/ 06010/Would_Derivation_Proceedings_Be_The_Same_As. 7. aspx . The issue is similar in the U.K. – in 2006, in IDA Ltd. v. University ofSouthampton, [2006] EWCA Civ. 145, http:/ / www. bailii. org/ ew/ cases/ EWCA/ Civ/ 2006/ 145. html, the court observed “Many disputesof fact are likely to arise – who thought of what and who suggested what to whom are the sort of issues where perceptions after the event areall too likely to differ … Parties to these disputes should realise, that if fully fought, they can be protracted, very very expensive andemotionally draining. … very often development or exploitation of the invention under dispute will be stultified by the dead hand ofunresolved litigation.”

[29] Small Business Coalition on Patent Legislation letter to SBA Administrator (http:/ / www. connect. org/ news/ pdf/Coalition-Letter-to-SBA-Dec-15-09. pdf), Dec. 15, 2009.

[30] Boundy & Marquardt, Patent Reform’s Weakened Grace Period: Its Effects On Startups, Small Companies, University Spin-Offs AndMedical Innovators, " Medical Innovation & Business Journal, vol. 2 no. 2 (Summer 2010) (http:/ / journals. lww. com/ medinnovbusiness/Fulltext/ 2010/ 06010/ Patent_Reform_s_Weakened_Grace_Period__Its_Effects. 6. aspx)"

[31] The Patent Reform Act’s Proposed First-To-File Standard: Needed Reform or Constitutional Blunder?, in THE JOHN MARSHALLREVIEW OF INTELLECTUAL PROPERTY LAW, 2006 (http:/ / heinonline. org/ HOL/ LandingPage?collection=journals& handle=hein.journals/ johnmars6& div=13& id=& page=)

[32] Compilation of all papers on FTF constitutionality published between 2001-2009 (http:/ / www. rearden. com/ public/090413_First_to_File_scholarly_papers_in_last_10_years-1. pdf)

[33] "Does it Matter Who Has the Right to Patent: First-to-Invent or First-to-File? Lessons from Canada," April 2009, NBER Working Paper No.w14926 (http:/ / papers. ssrn. com/ sol3/ papers. cfm?abstract_id=1394833##)

[34] http:/ / www. law. cornell. edu/ uscode/ 35/ 306. html[35] Charles E. Miller & Daniel P. Archibald, Attenuated Judicial Review of Patent and Trademark Office Decisions: “Technical Amendment,”

or Stacking The Deck Against Inventors? Medical Innovation & Business Journal, vol. 2 no. 2 (Summer 2010), pp. 89-93 (http:/ / www.ipadvocate. org/ mibj/ pdfs/ Miller_PTO Review. pdf).

[36][36] , §5 amends[37] Guest Post: Hot Topics in US Patent Reexamination (http:/ / www. patentlyo. com/ patent/ 2009/ 03/

guest-post-hot-topics-in-us-patent-reexamination. html?cid=6a00d8341c588553ef011168d0dd50970c. )[38] Avistar, 2009 Annual Report, p.F-26, http:/ / files. shareholder. com/ downloads/ AVSR/ 1239617659x0x386332/

36FFB1CC-FE65-4E85-B625-C7CF8BB4CDEB/ 2009_Annual_Report_FINAL. pdf. Retrieved April 28, 2011.[39] http:/ / www. iam-magazine. com/ blog/ IAMBlogInterPartesReexamWhitepaper. pdf.[40][40] .[41][41] , §7 amendment to .[42][42] , §5 amendment to .[45][45] Mercado, Raymond A. (2011). The Use and Abuse of Patent Reexamination: Sham Petitioning Before the USPTO. 12 Columbia Science

and Technology Law Review 93.[46] Joseph Rosenbloom, The Reexamination Gamble, IP L. & Bus., July 1, 2008, at 31.[47] H.R. Rep. No. 96-1307, pt. 1, at 4 (1980), reprinted in 1980 U.S.C.C.A.N., at 6463.” quoted in Mercado, Raymond A. (2011). The Use and

Abuse of Patent Reexamination: Sham Petitioning Before the USPTO. 12 Columbia Science and Technology Law Review 93, n66.[48][48] Nesheim, John L. (2000). High Tech Start Up, The Complete Handbook for Creating Successful New High Tech Companies, New York:

The Free Press.[49] John Neis, "Post-Grant Review-Our Next Nightmare? VC Perspective", Medical Innovation & Business, Summer 2010, Volume 2, Issue 2,

pp.43–45, http:/ / journals. lww. com/ medinnovbusiness/ Fulltext/ 2010/ 06010/ Post_Grant_Review_Our_Next_Nightmare__VC. 8. aspx.Retrieved June 20, 2011.

[51] "Critics raise concerns at Commerce," in Politico 11/2/09 (http:/ / www. politico. com/ news/ stories/ 1109/ 29002. html)[52] Two Views of Innovation, Colliding in Washington; NY Times, January 13, 2008, By John Markoff (http:/ / www. nytimes. com/ 2008/ 01/

13/ business/ 13stream. html?_r=1)[53] Intellectual property - Many patents, still pending; The Economist, September 10, 2011 (http:/ / www. economist. com/ node/ 21528643)

Leahy-Smith America Invents Act 9

External links• Implementation of the Leahy-Smith America Invents Act: Hearing before the Committee on the Judiciary, House

of Representatives, One Hundred Twelfth Congress, Second Session, May 16, 2012 (http:/ / purl. fdlp. gov/ GPO/gpo30309)

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Article Sources and ContributorsLeahy-Smith America Invents Act  Source: https://en.wikipedia.org/w/index.php?oldid=563924873  Contributors: Agmonaco, AkUCB, Anders.Warga, BD2412, BillMichaelson, Bjulve-ucb,Blaynepeacock, BlueMoonlet, Brad.miller.87, BrianWo, Brianwc, Brinskelle, CGarvey, Carlitosrosario, ChagSameach, Chischool, Cntras, Cybercobra, Dale Arnett, Danaman5, Dctoedt, Dheneb,Dilligen, DrFleischman, DrewFisher, Dsheffie, Edcolins, Edward, Flowanda, GoldRingChip, Gorgonzilla, Inwyrd, Ipsign, Janeway Ranch, Jbruin152, JohnHiett, Johndburger, Keyur mithawala,Kgrutter, Kkolehouse, LadyArguer, Librsh, Nemesis63, Nnolte, Nowa, Ocaasi, Oren0, Pipac, Planetary Chaos Redux, Ravensfire, Robert K S, RossPatterson, Rvcpatatty, Speedplane, Stephen328, Tabletop, Ternto333, Thecheesykid, Tim bates, Toddsullivan, TracyDann, TutterMouse, Vanished user fweflklkaskwi4r592uofmoaihr, Videoguy2000, VivekVish, W0lfie, WLGades,Wrp103, Xxiao ucb, Δ, 62 anonymous edits

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