Stanford Professor Mark Lemley's Things You Should Care About in the New Patent Statute

I had the pleasure of speaking with Professor Mark Lemley at the Advanced Patent Law Institute, Palo Alto on December 8-9, 2011. 

Professor Lemley has authored and co-authored many papers with penetrating insights into the US patent system. He may be even the most prolific patent scholar of our time given he ranks third in total downloads among all law professors. He mostly writes about intellectual property and patent law, presumably niche topics with a small audience, so this is quite a feat. 

I commented we have been around this for years, but it must be difficult for people getting into US patent law now given all these changes. He replied you can imagine the challenge I have teaching two bodies of US patent law (past law and the America Invents Act law (AIA)) to my class at Stanford. 

How do we address the changes and complexity in US patent law today? An important part of understanding the AIA is identifying the effective dates. To help you avoid being buried in all the details, I point to Professor Lemley's Things You Should Care About in the New Patent Statute which outlines twenty significant AIA changes by their effective dates.  

If you are interested here's a link to Professor Lemley's other papers. 


Copyright © 2012 Robert Moll. All rights reserved. 

PTO Reports - Prior User Rights and International Patent Protection for Small Businesses

On January 13, 2012, the PTO delivered to Congress the Prior User Rights Report and the International Patent Protection for Small Businesses Report as required by the American Invents Act (AIA).  The following links lead to PDF copies of the reports:

• Prior User Rights Defense Report
• International Patent Protection for Small Businesses Report

The Prior User Rights Defense Report compares US prior user rights with that of foreign countries. It considers prior user right's impact on innovation, startups, small businesses, and individual inventors. And it looks at how first-to-file in the AIA relates to the prior user rights defense.

Under current law, the prior user defense is limited to business method patents. The AIA expands the defense to any subject matter provided (1) the subject matter was reduced to practice and commercially used at least one year before the patent's effective filing date or the patent owner's disclosure of the invention, whichever is earlier; and (2) the subject matter wasn't derived from the patent owner or an entity or person in privity (having a legal interest in the patent) with the patent owner.

The International Patent Protection for Small Business Report considers how to help small businesses with respect to foreign patent protection.

The PTO prepared the reports with the United States Trade Representative, the Department of Justice, the Department of State, the US Small Business Administration and incorporated input from public hearings and comments.

Copyright © 2012 Robert Moll. All rights reserved.