Congress Passes “Patent Reform”—The America Invents Act
As the editor of Elman’s Patent Reform News and chair of the Patent Legislation Committee of the Philadelphia Intellectual Property Law Association (PIPLA) for much of the past decade, I had a ringside seat this year as Congress gave a painful birth to the Leahy-Smith America Invents Act (“AIA”), which Pres. Obama signed into law on September 16th. A few of its provisions are now in effect, many will start up on September 16, 2012, and the rest will kick in on March 16, 2013.
In the past and currently, U.S. patent law has applied (subject to a serious burden of proof) the principle that the first person to invent something is entitled to a patent on it. But for future patent applications, from March 2013 on, this principle will be superseded by a different one: the first inventor to file a U.S. patent application will get the patent. That switch has gotten the big play in news reports, but in my view, that’s not where the most significant changes are. In fact, the AIA will put more responsibility on the patent office to expedite the patent examination process and then weed out improvidently granted patents by newly crafted administrative proceedings, soft-pedaling the role traditionally played by the federal court system. And more sources of information will be added to the prior art against which a patentable invention must be found to be both novel and non-obvious.
Also continuing in debate has been the question of what kinds of inventions should be coverable by patents. In June 2010 the Supreme Court addressed an aspect of this in the Bilski case. Now the issue is on deck with respect to a medical diagnostic test. Watch for the Supreme Court’s decision next year in Prometheus Labs v. Mayo Clinic. For more info, visit our website and send us your questions on patent practice.
Science Fiction Meets Legal Vision™
A year ago, I sponsored a panel discussion at the World Technology Summit of how science fiction authors such as Jules Verne, H.G. Wells and Robert Heinlein had uncannily envisioned the future. This year I took the opportunity to celebrate Damon Knight, who in 1953 conceived the technology of gene splicing, back when Watson and Crick had just sussed out the double helix structure of DNA. My story this year first took form in a display on the back cover of the June 2011 issue of Biotechnology Law Report, featuring an illustration by Philadelphia artist Tim Durning that transports yours truly into the world of Damon Knight’s novella Natural State, where a “house plant” is … the plant from which you’d grow your house.
30 Years of Biotechnology Law
I followed up on this subject in the article Highlighting the Course of Biotech Law published October 1 in the 30th Anniversary Issue of GEN Genetic Engineering and Biotechnology News. (The version on the Web links to a video podcast of my own prognostications.) That article reminds us that January 2012 also marks the corresponding anniversary of the first issue of Biotechnology Law Report, which I founded in 1982 with publisher Mary Ann Liebert and continue to serve as Editor-in-Chief. At this time I welcome the colleagueship of Steve Zweig who joins stalwart Judith Gunn Bronson on our BLR team, while bidding a fond farewell to Prof. Bob Bohrer.
Legal Aspects of Cybersecurity
Readers of last year’s edition of this newsletter will recall that I’d had the opportunity to meet Richard Clarke at a bar association luncheon in Washington, D.C. when he spoke about his book Cyber War. This fall I met Mark Bowden at the World Affairs Council in Philadelphia, promoting his book Worm: The First Digital World War. I cherish my autographed copy of each.The February 2011 issue of Acquisition International magazine has an article for which I was interviewed about legal aspects of cyberspace. And in July, I gave a talk at the IT Expert Series Data Security Summit asking provocatively: Are You Legally Prepared for the Coming Cyberwar? Preparing Your Legal Playbook in Anticipation of Data Security Breaches. Don’t hesitate to contact me with any questions on the subject.
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In June, my grandson in Hawaii, Elijah Suraj Elman Singh, was joined by a younger brother Joshua Devan and a cousin in southern California, Jack Michael. In October I had the pleasure of visiting grandson Jack and his adoptive parents. We also welcome into our firm’s extended family Scott Powell’s daughter Sylvie.
Once again …. a blessing: May happiness, health and prosperity be yours — next year and forever!