Patents Post-Grant: USPTO Prepares to End Inter Partes Patent Reexamination

Draft Rules Released by USPTO to Transition to New Inter Partes Review Proceeding Upon enactment of the America Invents Act on September 16, 2011, the USPTO was forced to change their previous SNQ based analysis for granting a request for inter partes patent reexamination . The new standard for any...

Transitioning to a First to File System - Presented by Suffolk Law School

As part of the Suffolk Law School Podcast Series , Leigh Martinson , of McDermott Will & Emery , recently spoke on the America Invents Acts' transition from a first-to-invent to a first-to-file system. What Does the Transition Mean and What Are the Consequences? Mr. Martinson points out that...

Post Grant Review under the America Invents Act of 2011 - Presented by Suffolk Law School

As part of the Suffolk Law School Podcast Series , Dr. Eldora L. Ellison , of Sterne Kessler Goldstein & Fox , recently discussed post-grant review under the America Invents Act of 2011. Exit Inter Partes Reexamination, Enter Post Grant Review Currently, there are two types of patent reexamination...

McNees Wallace & Nurick LLC: Changes in Patent Marking Provisions

By Shawn Leppo This article is the second in a series of mini-articles considering a section of the new patent statute and how it may affect your business. Among the earliest provisions of the recently signed Leahy-Smith Patent Reform Act to go into effect are changes related to patent marking...

Lexis.com's United States Code Service Updated with Patent Reform Legislation/Leahy-Smith America Invents Act

As of September 23, the United States Code Service (USCS) on lexis.com was updated with Public Law 112-29, the Leahy-Smith America Invents Act ("AIA"). AIA makes some of the most sweeping changes in American patent law since 1952. Most significantly, effective March 16, 2013, the Act changes...

USPTO Launches America Invents Act Online Guide

From the US Patent and Trademark Office : On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act (AIA) into law, which will foster innovation and spur job creation in the United States. This Act sets into motion the most comprehensive overhaul to our nation's patent...

Foley & Lardner LLP: Practical Analysis of the Leahy Smith America Invents Act 2011

By Harold C. Wegner Foley Partner Harold C. Wegner authored a white paper that provides in-depth analysis of the Leahy Smith America Invents Act, highlighting key changes to be addressed by Corporate IP executives. To view the complete white paper, click View PDF, below. © 2011...

McNees Wallace & Nurick LLC: Tax Strategies Unpatentable under America Invents Act

By William P. Smith This article is the third in a series considering a section of the new patent statute and how it may affect your business. Another provision of the Leahy-Smith Patent Reform Act that went into effect immediately on September 16, 2011, Section 14 affects the patentability -...

McNees Wallace & Nurick LLC: What’s Left of "Best Mode" After Patent Reform?

By Geoffrey K. White Effective September 16, 2011, Section 15 of the Leahy-Smith America Invents Act modifies the requirement that patent applications disclose the "best mode" of performing the claimed invention. Section 15 eliminates challenges to best mode in litigation and expressly...

USPTO to Conduct Studies of Prior User Rights and International Patent Protection for Small Businesses per the America Invents Act

From the US Patent and Trademark Office: Public input will help the USPTO complete the studies in a quality manner Washington - The United States Patent and Trademark Office (USPTO) released two Federal Register Notices on October 7, 2011, seeking written comments and announcing...

Patents Post-Grant: USPTO Finalizing Post Grant Rule Packages

Group 2 Rule Making Effort in Final Stages Since the enactment of the Leahy-Smith America Invents Act (AIA), and even before, the USPTO has been busy fashioning new rules to implement the various provisions of the legislation. The USPTO has been aggressively seeking public comment prior to...

Patents Post-Grant: General Litigators to Practice Before the New Patent Trial & Appeal Board?

Patent Bar Required or Not? The USPTO continues to work to fashion rules to implement the new post grant proceedings of the Leahy-Smith America Invents Act (AIA). One can only speculate that the new "trial" like, post grant proceedings of the AIA will be closely modeled on the procedures...

Patents Post-Grant: Tech Giants Weigh in On USPTO Post Grant Rule Making Effort

Group 2 Comments on AIA Implementation Due to USPTO Tomorrow As pointed out last week, the USPTO has been busy fashioning new rules to implement the various provisions of the Leahy-Smith America Invents Act (AIA). Comments on Group 2 Rules , which include Inter Partes Review & Post Grant,...

McNees Wallace & Nurick LLC: Expanded Defense to Patent Infringement under the America Invents Act

The recently signed Leahy-Smith Patent Reform Act, better known as the America Invents Act, significantly expands the defense to patent infringement based on prior commercial use and applies to any patent issued on or after September 16, 2011. Previously, that defense was limited to actions...

McNees Wallace & Nurick LLC: Post-Grant Review and Inter Partes Review – New Tools from the America Invents Act

By Elizebeth M. Maag The new patent law creates two new post grant review provisions to provide administrative alternatives for parties to challenge the validity of issued patents more quickly and more cost effectively than in traditional litigation. These provisions are identified as post-grant...

Patents Post-Grant: Patent Trial & Appeal Board Rules Drafted by Major Bar Associations

ABA, AIPLA and IPO Suggest PTAB Model Rules to USPTO Early last week, the major bar associations submitted comments to the USPTO on the current Group 2 Rule Making effort. As a reminder, Group 2 Rules are a second phase of USPTO rules designed to implement features of the America Invents Act ...

Challenges to Applications and Patents Post America Invents Act

In this Analysis, John M. White addresses challenges to applications and patents in the post America Invents Act world. It includes analysis of protest, third party submission of prior art, public use proceedings, derivation proceedings, supplemental examination, post grant review, citation of prior...

Patents Post-Grant: 2011 Year in Review — Patent Reform & The New Post Grant Landscape

Top Stories of 2011 2011 was perhaps the most significant year to date in terms of post grant patent practice. The perennial legislative effort generally known as "patent reform" finally bore fruit as the Leahy-Smith America Invents Act (AIA); patent reexamination filings in 2011 reached...

Fitch, Even, Tabin & Flannery LLP: USPTO Issues Changes to Implement Post-Patent Provisions and Third-Party Preissuance Submissions

By Fitch Even attorney Nada J. Ardeleanu As reported earlier, the Leahy-Smith America Invents Act has made several major changes to U.S. patent law. The U.S. Patent and Trademark Office (USPTO) has begun to issue proposed rules to comply with this legislation, posting two proposed rules on January...

USPTO Issues Reports Required by the America Invents Act on the Prior User Rights Defense Study and the International Patent Protection for Small Business Study

From the United States Patent and Trademark Office: WASHINGTON - The United States Patent and Trademark Office (USPTO) has submitted reports for two intellectual property law studies required by the America Invents Act (AIA) to Congress. The first report was prepared under Section 3 of the AIA...

USPTO Announces Public Hearings and Request for Comments on Genetic Diagnostic Testing per the America Invents Act

From the US Patent and Trademark Office : Public input will help the USPTO complete report in a quality manner Washington - The United States Patent and Trademark Office (USPTO) is gathering information on genetic diagnostic testing for purposes of preparing a report for Congress on the...

Brinks Hofer Gilson & Lione: President Signs Patent Reform Technical Corrections Bill

On January 14, 2013, President Obama signed into law a "technical corrections" bill that amends provisions of the Leahy-Smith America Invents Act (AIA), the recently enacted patent reform legislation. While much of the technical corrections bill deals with typographical, grammatical and drafting...

Brinks Hofer Gilson & Lione: Transitioning to First-Inventor-to-File: Part I

For patent seekers and patent attorneys alike, March 16, 2013 will be a momentous date. On that day, the U.S. transitions from its current "first-to-invent" system to a "first-inventor-to-file" (FITF) system. Although the FITF system has been in place in every other country in the...

Troutman Sanders LLP: U.S. Becomes “First-to-File” Country for Patents on March 16, 2013 - Consider Strategic Action Now

By Robert Schaffer and Joseph R. Robinson On March 16, 2013, the United States will become a "first-to-file" country for determining the rights of different inventors competing for a patent covering the same invention. This is part of the recent "America Invents Act" (AIA). To...

Patents Post-Grant: Is There Value to Ex Parte Patent Reexamination after the AIA?

Ex Parte Patent Reexamination Filings Fall by 50% After AIA Prior to September 16, 2012, ex parte patent reexamination was the only USPTO option for challenging the validity of patents that issued from patent applications filed before November 29, 1999. This is because the inter partes patent reexamination...