LexisNexis® Legal Newsroom
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 ...

Strategic Patenting in a Post Patent Reform Environment

Strategic patenting is the methodical filing and prosecution of patent applications. Strategic patenting is performed with the objective of creating a patent portfolio that can be monetized through sale, licensing or litigation. Strategic patenting involves the purposeful mining of ideas from researchers...

Inequitable Conduct, Willfulness, and Inducement under the AIA

In this Analysis, Anthony W. Shaw discusses the role of inequitable conduct, supplemental examinations, reissue, inventorship, foreign filings without a license, disclaimers, best mode, and willful infringements and inducement to infringe in the post America Invents Act world. Mr. Shaw writes: Reducing...

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...

Troutman Sanders LLP: Judge Turk Breathes New Life Into False Marking Claims

By Dabney Carr If you thought passage of the America Invents Act would end the flood of false patent marking claims, think again. In December, Judge Turk in the Western District of Virginia ruled that a false marking plaintiff could proceed under state consumer protection laws and that such...

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...

Patents Post-Grant: Supplemental Examination Rules Issued by USPTO

New Mechanism to Cleanse Inequitable Conduct Yesterday, the USPTO issued a Notice of Proposed Rule Making to outline the procedures for conducting supplemental examination ( here ). (See the earlier discussion on the related changes to patent reexamination fees provided by this Notice). As a reminder...

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...

Foley & Lardner LLP: USPTO Issues Proposed Rules Packages to Implement America Invents Act

By Stephen B. Maebius , Courtenay Brinckerhoff , Kristel Schorr and Benjamin A. Berkowitz On February 7, 2012, the USPTO released seven proposed rules packages to implement the new trial proceedings that the Patent Trial and Appeal Board (Board) will conduct under the Leahy-Smith America Invents Act...

USPTO Proposes Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions

From the US Patent and Trademark Office: Washington - The United States Patent and Trademark Office (USPTO) has proposed a consolidated set of rules related to trial practice before the Patent Trial and Appeal Board. The proposed rules implement the provisions of the Leahy-Smith America Invents Act...

Patents Post-Grant: USPTO Buzz — Rule Packages and PTAB Roll Out

PTAB Rule Packages to Publish on August 14th The final rule packages for the new post grant patent proceedings of the Patent Trial & Appeal Board (PTAB) were expected to issue last week but were obviously delayed. The USPTO informed the Intellectual Property Section of the ABA (at the ABA annual...

USPTO Publishes Final Rules for Supplemental Examination and Inventor’s Oath or Declaration

From the USPTO : Changes will implement provisions of the America Invents Act Washington - The U.S. Department of Commerce's United States Patent and Trademark Office (USPTO) announced today [August 13th] that it will publish final rules in the Federal Register on August 14, 2012, to implement...

USPTO Publishes Final Rules for Administrative Trials Under America Invents Act

From the USPTO : Inter Partes Review, Post-Grant Review, and Covered Business Method Patents Addressed Washington - The U.S. Department of Commerce's United States Patent and Trademark Office (USPTO) announced today [August 13th] that it will publish final rules in the Federal Register...

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...

Brinks Hofer Gilson & Lione: Patent Office's New Fee Structure Begins March 19, 2013

The Leahy-Smith America Invents Act (AIA) provided the USPTO with new fee-setting authority. The authority specifically permits the USPTO to set fees to recover the cost of patent operations, reduce the current patent application backlog, decrease patent application pendency, improve patent quality,...

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...

Patents Post-Grant: Patent Trolls Drive Demand for New AIA Post Grant Proceedings

Demand for IPR Driven by Patent Troll Assertions On September 16th, 2012 the new post grant patent proceedings of the America Invents Act (AIA) became available to patent challengers for the first time. These proceedings have only been available for a few months, but there has been a robust demand...

Fitch, Even, Tabin & Flannery LLP: USPTO Announces Final Rules and Examination Guidelines to Implement the Final Phase of the America Invents Act

As reported in previous Fitch Even IP Alerts, the final provisions of the Leahy-Smith America Invents Act (AIA) will go into effect on March 16, 2013. Under these provisions, the U.S. patent system is changing from a "first-to-invent" system to a so-called "first-to-file" system....