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.
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 -...
Filing Fees to Increase Substantially
From start to finish, the cost of an inter partes
patent reexamination (IPX) proceeding is estimated to be $278K by the
2011 AIPLA Economic Survey. This figure includes all expenses from the
time of filing the request to a decision of the Board of Patent...
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...
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
First to Invent system, which has been the fundamental base of US patent law
for more than 200 hundred years, has now been replaced by a First to File
system, sort of. In this Analysis, Jim Longacre discusses the similarities and
differences between the old and new patent law and gives extensive...
America Invents Act fundamentally changed the basic, and not so basic, law we
have been applying for decades. Experienced patent attorneys can recite 35 USC § 102 and explain all its nuances. In this Analysis,
Jim Longacre presents a series of quizzes designed to test your grasp of the
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
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...
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,...
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.
that defense was limited to actions...
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...
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 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
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
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...
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...
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...
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...
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...
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...
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...
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...
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...
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...