TUESDAY, OCTOBER 20, 2009 9:10a.m.

IPO's U.S. Patent Reform Primer: No. 6 in a Series 

SENATE BILL CHANGES U.S. PATENT LAW FROM FIRST-TO-INVENT TO “FIRST-INVENTOR-TO-FILE” SYSTEM -- Section 2 of S. 515, the patent reform bill that was reported out of the Senate Judiciary Committee on April 2, 2009, at pp. 2-17 amends 35 U.S.C. §§102 and 135 and related sections to adopt a “first-inventor-to file” system to govern which of competing inventors will receive a patent.  The system is called first-inventor-to-file instead of “first-to-file” to emphasize that the first-filing party must be an inventor in order to be entitled to a patent.  At p. 15, the bill abolishes patent interference proceedings, which are used to determine the first inventor under current law.  Interference proceedings would be replaced by “derivation proceedings” (p. 11), which would be used to resolve charges that an earlier patent applicant obtained the invention from the applicant requesting the proceeding.  The U.S. is the only country with a first-to-invent system.  IPO supports the Senate bill’s switch to first-inventor-to-file.  (A future column will cover House bill H.R. 1260, which makes first-inventor-to file contingent on a change in patent laws of other countries.)
  
Click here for IPO’s Legislative Action Center.

CORRECTION:  On October 14, the “U.S. Patent Reform Primer” stated that “the actual words ‘prior art’ . . .  do not appear in the existing statute . . . .”  In fact, while the term “prior art” is not used in 35 U.S.C. §102, it is used in §103.

CORPORATE IP MANAGEMENT ROUNDTABLE IN BOSTON, MA -- On October 22, IPO’s Corporate IP Management Committee is hosting a roundtable discussion on issues facing in-house IP practitioners including suggestions for managing IP in a challenging environment of reduced budgets, creative strategies for improving efficiencies in the delivery of IP legal services, and ways to enhance management recognition of IP value.  Panelists include JOHN WILLIAMSON, K&L Gates, ANGELO CHACLAS, chief IP counsel at Pitney Bowes Inc.; KRISH GUPTA, chief IP counsel at EMC Corporation; and, BRENDA PANICHI, chief IP counsel at Gillette.  Advance registration is required.  For more information or to register, click here.

IP BRIEFS -- Compiled from newswires and other sources:

Subway Sues Las Vegas Restaurant for Trademark Infringement -- Last week, Subway, the franchisor of sandwich shops, sued a Las Vegas restaurant called "Subway Avenue" for trademark infringement, unfair competition and Internet cybersquatting. (Las Vegas Sun)

FINNEGAN TO SPONSOR IPO ROUNDTABLE IN BOSTON, MA -- Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is sponsoring IPO’s Corporate IP Management Roundtable in Boston on October 22.  Panelists will discuss issues facing in-house IP practitioners in a challenging economic environment.  For more information or to register, click here.