Foley & Lardner LLP: Senate Passes House Patent Reform Bill (H.R. 1249) — President Now Expected to Sign!

By Stephen B. Maebius , Courtenay C. Brinckerhoff and Liane M. Peterson On September 8, 2011, by a vote of 89-9, the Senate approved the House version of the Leahy-Smith America Invents Act (H.R. 1249), leaving only President Obama's signature as the final step to make patent reform a reality...

Troutman Sanders LLP: Patent Reform Awaits President’s Signature

By Douglas "Doug" D. Salyers , James Moore Bollinger , Jeffrey C. Morgan , James "Jim" E. Schutz , Trenton A. Ward , Robert A. Madayag , and Dustin B. Weeks Yesterday, September 8, 2011, Congress approved the Leahy-Smith America Invents Act (AIA) , a bill that introduces some of...

McNees Wallace & Nurick LLC: Patent Reform on the Way

By Shawn Leppo and Elizebeth Maag The America Invents Act, the most significant patent reform to come out of Congress in the past fifty years, has surmounted its final congressional test and was passed by the Senate on September 8, 2011. The Act is now on its way to President Obama, who has...

Troutman Sanders LLP: Patent Reform's Impact on Virginia: Venue, Multi-Defendant Litigation and False Marking

By Dabney Carr Some of our colleagues have produced a concise summary of the most significant aspects of the Leahy-Smith America Invents Act (AIA) , which can be found here . In advance of the legislation's expected enactment by the President, we'd like to highlight a few provisions that...

Patents Post-Grant: Older Patents Soon Subject to USPTO Inter Partes Review

Pre-1999 Patent Filings No longer Immune to Inter Partes Challenge Back in August, I explained the import of various effective date provisions of the Leahy-Smith America Invents Act (AIA) as they relate to current and future post grant USPTO challenges. The AIA changes the USPTO standard for...

Brinks Hofer Gilson & Lione: President Obama Signs Patent Reform Legislation

On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act, also known as the patent reform bill. The America Invents Act makes the most sweeping changes to U.S. patent law in years, including moving the U.S. towards a first-inventor-to-file system, creating new USPTO proceedings...

Williams Mullen: Planning for the First to File

Editor M. Bruce Harper Historically, the United States has been a first-to-invent jurisdiction. A diligent inventor that applied for a U.S. patent might be able to assert superior rights over a subsequent inventor, even if the subsequent inventor was the first to file a U.S. patent...

Williams Mullen: Changes in Pre-Grant and Post-Grant Challenges at the U.S. Patent Office (USPTO)

Editor Timothy J. Bechen, Alison S. McGeary The Leahy-Smith America Invents Act, H.R. 1249 ("the Act") will become law once the President signs it this month. The Act proposes many changes to current pre-grant and post-grant challenges and further introduces enhanced post-grant...

Williams Mullen: The Joinder Provision in the Patent Reform Act: Leveling the Playing Field Against Multi-Defendant NPE Suits

Editor Robert C. Van Arnam A new season is under way and some of the rules have changed. For years, defendants have been forced to play together in unscheduled away games on the Non-Practicing Entities' ("NPE") home field. That should no longer be the case. The recently...

Foley & Lardner LLP: 2011 Patent Reform Act Signed by President Obama on September 16, 2011

By Courtenay C. Brinckerhoff On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act into law. As outlined below, several important changes take effect on the date of enactment (September 16, 2011), including some significant litigation-related changes and the new...

Re-Inventing the US Patent System

From the USPTO, Director's Forum: David Kappos' Public Blog In the past 50 years, we have seen technology evolve at a faster pace than any other period in history, but our patent laws have not kept up. Earlier today [September 16th], that changed. In an ongoing commitment to the innovative...

Eric E. Bensen on PTO Proceedings after the America Invents Act

On September 16, 2012, as a result of the America Invents Act, there will be available in the USPTO five separate proceedings through which the PTO could take a second look at an issued patent and, if warranted, make changes to the patent's claims or otherwise reconsider information considered in...

Immediate and Delayed Effects of the America Invents Act

Last week, the America Invents Act ("AIA"), which effectuates the most significant and wide-ranging changes to US patent law since the Patent Act of 1952, was passed by the Senate and signed into law. There are many fundamental changes to US patent law created by the Act; however, generally...

Eric E. Bensen on the America Invents Act

Years of efforts to reform U.S. patent law culminated in the enactment of the America Invents Act (AIA) on September 16, 2011. Although significantly narrower in scope than its unenacted predecessors, the AIA nonetheless makes a number of important changes. Among them is converting the U.S. system from...

Patents Post-Grant: USPTO Post Grant Cheat Sheet

Key Facts & Dates for all Post Grant USPTO Proceedings While the America Invents Act (AIA) provides many new post grant proceedings, it also introduces changes to existing proceedings. While I have written about these changes previously , it would seem helpful to condense the important facts...

McNees Wallace & Nurick LLC: Patent Fee Increases

By Carmen Santa Maria This article is the first in a series of mini-articles considering a section of the new patent statute and how it may affect your business. Effective Friday, September 16, 2011, upon the signing of the Leahy-Smith Patent Reform Act by President Obama, new fees are in effect...

Ballard Spahr LLPL: Important Fee Provisions of New Patent Reform Act Take Effect Monday

By Mary Anthony Merchant, Ph.D. and Estelle Tsevdos On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act , which makes significant changes to U.S. patent law. Certain provisions related to fee increases take effect next week on September 26, 2011. The U...

Fitch, Even, Tabin & Flannery: Summary of the Leahy-Smith America Invents Act

By Nicholas T. Peters UPDATE: As expected, President Barack Obama signed the Leahy-Smith America Invents Act (the "Act") into law on Friday, September 16, 2011. This legislation is a major rewrite of the patent laws of the United States. The new law adjusts the landscape of patent...

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...

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 -...