Patent Reform Act of 2011: “America Invents Act”


The U.S. patent system has fostered incredible advances in technology and sustained innovation. Changes to that system are invariably controversial, as is the current Patent Reform Act of 2011, now titled the “America Invents Act.” This bill is the fourth successive congressional proposal to make substantive changes to the patent system, and passed in the Senate on March 8, 2011 by an overwhelming 95-5 vote. A corresponding bill with a few changes was introduced in the House of Representatives on March 30, 2011.

The Patent Office, c. 1855, National Portrait Gallery, Smithsonian Institution

Who’s On First? The first major change involves switching from the current system, called “first to invent” which awards a patent to the first inventor, to a system called “first to file” which grants a patent to the first inventor who files a patent application. To attain priority under the proposed law, an inventor will need to file their patent application first, before anyone else files or publicly discloses the subject matter. A one-year exception or “grace period” will apply to the inventor’s own publications, or publications derived from them, within a year prior to the application’s effective filing date. If an inventor is not the first to file their patent application, they may use a new “derivation proceeding” at the U.S. Patent & Trademark Office (USPTO) to argue the first application was derived from their original work.

No, I Was First: A second change allows a person accused of patent infringement to argue they used the invention first, though they didn’t apply for a patent and may not have told anyone. The Senate bill limits this “prior user” defense to business method patents, while the House bill allows it against all patents.

Is That Your Final Answer? The proposed law includes three mechanisms for challenging a patent: either before or after grant of the patent, and with or without the participation of the patentee. The “third-party requested post-grant review” is similar to the current reexamination procedure, challenging the validity of a patent within nine months after it is granted. The House bill changes this time frame to 12 months.

An “inter partes post-grant review” is a contest between the patentee and a challenger that may begin more than nine months after issuance, evaluating novelty and obviousness compared to prior publications. The more controversial measure is called a “pre-issuance third-party submission,” in which anyone can review a published patent application within six months after publication and send the USPTO a prior publication with a description of its relevance. Challengers may be prevented in later lawsuits from requesting re-examination of the patent, or objecting that the patent is invalid.

Read the Label: Products often indicate patent numbers, and lawyers have recently pursued lawsuits alleging that such “patent marking” includes expired or unrelated patents. The bills will end these suits, except if brought by the U.S. government or a competitor who can prove competitive injury.

Do Your Best: Patent applications under the proposed law are still required to describe the “best mode” to accomplish the invention. However, the bills would remove failure to do so from being used to invalidate an issued patent.

Company Patents: Many employers already prepare and file patent applications on behalf of their employees, who often have assigned (or are obligated to assign) inventions to the company. The proposed law makes the process of filing these applications easier.

Phone Home: Within a year, the proposed law mandates reports by the USPTO on the duration of the post-grant reviews, on prior user rights in selected industrialized countries, and by the Small Business Administration on the impact of the first-to-file system on small businesses.

And Many More: Under the bills, tax strategies will not be patentable business methods or inventions, though the House bill excepts tax preparation software. The proposed law would also order the USPTO to prioritize examination for “technologies important to American competitiveness,” such as “green technologies.” The House bill adds several provisions for automatic and discretionary pauses to patent infringement lawsuits. And the bills establish additional USPTO offices outside Washington, D.C.

Follow the Money: The USPTO is the only federal agency that makes a profit, because the fees they take in from inventors and patentees exceed their operating costs. However, for a long time Congress has had a habit of taking some of that money and distributing it to various pet projects. The proposed law would end this practice, creating a USPTO Public Enterprise Fund and giving the USPTO authority to set or adjust its fees to recover the estimated costs of its activities. Inscrutably, the House bill also grants the USPTO “fee setting authority” but continues to state specific fees.

An Elephant Named ‘Backlog’: Arguably the largest problem with the patent system for at least a decade has been the ever-growing backlog of patent applications waiting in the USPTO, a problem described by one official as “deficit examining.” The big question of the America Invents Act is whether it will aid, or impair, efforts to reduce this backlog.

Michael W. Montgomery is a registered patent attorney at the law firm of Christopher & Weisberg, P.A., an intellectual property boutique headquartered in Fort Lauderdale. His practice focuses on building and protecting intellectual property portfolios, litigation and client counseling in intellectual property and technology matters.

copyright Montgomery 2011


Crowd-sourcing Software Patent Evaluations

In talking with the guys at The Conversation, I mentioned the U.S. Patent & Trademark Office‘s project for crowd-sourcing evaluations of software patent applications, called Peer-to-Patent.

Dan and Dave expressed some interest in the peer-to-patent program:

“[Never heard of it], but it sounds awesome.”

–Dave Nanian


There is a guide on how it works, and here is their attempt at marketing copy:

“Peer-to-Patent opens the patent examination process to public participation for the first time. Become part of this historic program. Help the USPTO find the information relevant to assessing the claims of pending patent applications. Become a community reviewer and improve the quality of patents.”


The project is not currently running, and no “active patent applications” are being evaluated:

U.S. Peer-to-Patent in Evaluation:

“The U.S.Patent and Trademark Office and New York Law School are presently preparing an evaluation of the two-year Peer-to-Patent U.S. pilot. Results of that evaluation should be complete by the end of the year.

However, David Kappos (the current leader at the Patent & Trademark Office) was involved in designing it, and has recently (Friday) expressed interest in continuing it.


Also, there is a related grass-roots effort coordinated by the center for patent innovations at the New York Law School, called Post-issue. Rather than evaluating pending patent applications, Post-issue attempts to gather similar community input on certain issued patents:

“Post-Issue Peer to Patent, or simply Post-Issue, seeks to improve the quality of patents by providing a framework for ferreting out weak, non-meritorious patent claims in patents that have issued.

Harnessing the power of a community of peer reviewers created through Peer to Patent (www.peertopatent.org), Post-Issue elicits previously unidentified prior art that may invalidate or narrow the claims of issued patents. In so doing Post-Issue provides greater freedom to innovate, removes uncertainty from the patent system, and provides greater certainty as to the value of issued patents.

Whether for-profit or non-profit, whether for responding to demand letters or litigation or for improving a party’s own patents, all parties are invited to request posting of patents to Post-Issue for review.”


Calibrate your expectations, because participating in this kind of program takes a lot more effort than your average comment on a blog (and probably more than your average blog post!)

If the service is successful, it just might be worth the effort.


The Conversation on Patents: “Patent Schmatent”

Podcasts are an amazing concept — but there are thousands of them, and good ones can be hard to find. One guy who consistently records excellent work is “your internet pal,” Dan Benjamin.

I met Dan outside FOWA Miami. His first question was “What do you think of the iPad?” which led to an interesting conversation about the future of mobile computing, publishing, content creation contrasted with consumption, etc.

He later asked me “How much do you know about patent law and the stuff Apple is up to?”

“Dan Benjamin brings together geeks and attorneys to talk about the intersection of patents and software development, and speculate about Apple’s motivations and goals regarding their recent Android-inspired lawsuit against HTC.”

So I was a guest speaker on The Conversation, a podcast with 30-40 thousand listeners. The episode title is “Patent Schmatent,” and we talked about:

  • software patents and copyrights
  • technological innovation during the Middle Ages
  • “why have a patent system?”
  • Apple v. HTC
  • “what are they thinking?”

It seemed to go well, and I had a lot of fun talking with Dan, Dave and Wil. Hope to record more podcasts, one of these days.

Podcast: “Patent Schmatent


The Setup

the setup is interesting.screenshot of The Setup website

Self-described as “a bunch of nerdy interviews,” they basically ask “What do people use to get the job done?”

The interview questions are all the same, consisting of four questions:

  1. Who are you, and what do you do?
  2. What hardware are you using?
  3. And what software?
  4. What would be your dream setup?

Like most good introspective exercises, you can approach it on different levels–and with more or less rigor. Here are my answers:

Who are you and what do you do?

Michael Montgomery. Husband, father, lawyer, technology fan, internet afficionado, speaker, organizer, and write with a fountain pen.

I blog sometimes, and work for Christopher & Weisberg as a registered patent attorney and intellectual property lawyer. On the web, I play with markup & styling, teaches, presents, help with Godbit, RefreshLauderdale and RefreshMiami.

What hardware are you using?

At work, I use a nondescript box from a company I won’t name, that’s been downgraded to XP for compatibility with ProLaw, our office back-end. The displays are a 19″ HP f1905 and another 19″ nondescript second monitor.

At the office, I have a 30Gb iPod driving Tivoli Audio Model Two stereo speakers.

My laptop is an HP G70 with 4Gb of RAM and Vista Home Premium. It came with a free upgrade to Windows 7, but I haven’t yet had the courage. At home, I use a 19″ HP L1945w and the laptop as a second monitor.

I tend to carry an 8Gb iPhone, and usually either a book or Moleskine notebook. And a pen.

And what software?

For browsers, I use Firefox and Chrome (mostly for apps like Gmail). For text and code, Notepad++ rocks. For documents, I use OpenOffice Writer by choice and MS Word when required.

For websites, Textpattern usually, ExpressionEngine for larger projects, and WordPress for blogs. Dropbox (love it!) for synchronizing, and Jungle Disk (meh) for backup. Delicious for bookmarks.

Online I use Gmail, Google Calendar, Google Reader, Remember the Milk, Readernaut, Etherpad.

I go by Montgomery most everywhere. For games, LotRO, EVE and Babas Chess.

What would be your dream setup?

Vastly improved voice recognition capability–so good it doesn’t require a headset. I don’t understand why we’re all still typing!

Corollary: kill the keyboard and mouse. Long live the pen!