Fifth Annual IP Scholars Forum - Patent Law Reform

Friday, October 28, 2011

The Forum’s purpose is to bring together a small group of prominent scholars for intensive, high-level discussions on cutting-edge issues of common interest. Papers will not be formally presented at the forum. Instead, we will engage in free-flowing discussion based on the forum topic and the papers submitted.  This year's forum will focus on the general subject of patent law reform.

As of now, it appears likely that, at long last, patent law reform will be enacted into law.  The Senate passed its version of the "America Invents Act" (S.23) on March 9 and the House Judiciary Committee approved its version of the Act (H.R. 1249) on April 14.  While the respective bills differ in some respects, those differences are expected to be resolved shortly, and the most significant changes to patent law since the 1952 Act are expected to become law before the end of the year.

While the precise contours of the reform effort are still to be determined, it appears likely that any new law would: (1) adopt a first inventor to file, as opposed to the current first to invent, system, with changes to the current grace period and an expanded prior user rights provision; (2) establish a new post-grant opposition procedure; (3) authorize a special procedure for ex parte reexamination of business method patents; (4) provide for third-party submissions of prior art; (5) permit the PTO, as opposed to Congress, to set patent fees; (5) make it more difficult to prevail in false marking actions; (6) prohibit issuance of patents on strategies relating to determining one's tax liability; and (7) prohibit the assertion of failure to disclose the best mode as a basis to attack a patent's validity in court.

House Judiciary Committee Chairman Lamar Smith stated that the above reforms would discourage frivolous lawsuits, enhance patent quality and streamline international principles.  Do you agree?  Will the reforms advance U.S. innovation and economic growth?  Will they result in any significant reduction in the backlog of cases at the PTO? Does special treatment for inventions related to methods of doing business and tax liability make sense? Will the reforms facilitate patent harmonization efforts?  Are they consistent with what other countries are doing?

Jay Dratler

Jeff Samuels

A. Samuel Oddi

Ryan Vacca

Robert (Bob) Karhl

Jay Dratler, Goodyear Professor of IP, Emeritus

Jeff Samuels,

Director, Center for IP Law and Technology and David L. Brennan

Professor of Law

A. Samuel Oddi,

Giles Sutherland Rich Professor of IP

Ryan Vacca,

Assistant Professor of Law

Robert (Bob) Kahrl,

Distinguished Practitioner-in-Residence

 Additional Information

Participants are expected to prepare a short paper (10-15 pages) on some aspect of the forum topic and should be distributed by email about a month prior to the forum.

For those who would like to do so, we will arrange for papers to be published in symposium format in our Akron IP Journal.

An informal collegial dinner will be held on Thursday, October 27th, the evening before the Forum.  A light breakfast and lunch will be provided on the day of the Forum.

Attendance will be limited to permit intimate discussion, so please respond soon.  You may RSVP to Shannon Aupperle, at

Vital Information

Main Contact Person: Shannon Aupperle, IP Administrative Assistant
(330) 972-7988 

Driving Directions to Campus

(No need to rent a car if you fly; students can provide shuttle service.
Akron-Canton Airport (CAK) is most convenient,
but Cleveland Hopkins (CLE) is accessible.) 

Campus Map 

Suggested Hotel: Quaker Square Inn at the University of Akron
(easy walk from Law School)
135 South Broadway, Akron, OH 44308, (330) 253-5970