Intellectual Property

Recent Posts

The PTAB Cannot Adopt a Phillips Claim Analysis for AIA Trial Proceedings
Posted on 4 Sep 2014 by Scott A. McKeown

Requests for Comment Touch Upon Claim Construction Standards at the PTAB Back in June, the USPTO issued a Request For Information (RFI) in the Federal Register. The Notice , entitled, Request for Comments on Trial Proceedings Under the America Invents... Read More

Patents Post-Grant: Is There Value to Ex Parte Patent Reexamination after the AIA?
Posted on 15 Feb 2013 by Scott A. McKeown

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,... Read More's United States Code Service Updated with Patent Reform Legislation/Leahy-Smith America Invents Act
Posted on 29 Sep 2011 by LexisNexis Patent Community Staff

As of September 23, the United States Code Service (USCS) on 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... Read More

Patents Post-Grant: Older Patents Soon Subject to USPTO Inter Partes Review
Posted on 15 Sep 2011 by Scott A. McKeown

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... Read More

Patents Post-Grant: Post Grant Fee Structure a Boon for Patent Trolls?
Posted on 29 Feb 2012 by Scott A. McKeown

Modern Patent Troll Business Model Insulated from New Post Grant Challenges Roughly two weeks ago the USPTO published the last of the Post Grant related rule packages established by the America Invents Act (AIA). The rule packages propose hefty filing... Read More

Brinks Hofer Gilson & Lione: President Signs Patent Reform Technical Corrections Bill
Posted on 23 Jan 2013 by Brinks Hofer Gilson & Lione

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... Read More

Patents Post-Grant: Settling Post Grant Patent Proceedings
Posted on 31 Jul 2012 by Scott A. McKeown

Will Contesting Parties Embrace the New Post Grant Settlement Provision? One of the more intriguing provisions of the new post grant patent proceedings of the America Invents Act (AIA) is the ability to settle these patentability disputes by agreement... Read More

Patents Post-Grant: 2011 Year in Review — Patent Reform & The New Post Grant Landscape
Posted on 3 Jan 2012 by Scott A. McKeown

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 ... Read More

Patent Reform Update - September 08, 2011
Posted on 8 Sep 2011 by Marla Grossman

Last night, the Senate agreed to a limit on debate and amendments on the House-passed patent reform bill, H.R. 1249. The Senate will debate this bill at about 10:30 a.m. EST this morning for up to 5 hours of debate. At about 4 p.m. EST today, the... Read More

Common Patentee Missteps in Inter Partes Review
Posted on 17 May 2013 by Scott A. McKeown

Preliminary Responses: Just Because You Can Doesn't Mean You Should The new post grant patentability challenges of the America Invents Act (AIA) have been warmly embraced by the public as a cost effective patent dispute resolution tool . Patent... Read More

Williams Mullen: Planning for the First to File
Posted on 19 Sep 2011 by Williams Mullen

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... Read More

Sunstein Kann Murphy & Timbers LLP: Patent Filers: Beware the Ides of March
Posted on 24 Sep 2012 by Sunstein Kann Murphy & Timbers LLP

January 2 to March 15, 2013 will be beyond busy, so planning is essential By Bruce D. Sunstein , a member of our Patent Practice Group The Ides of March in the coming year should be heeded by all patent filers. March 15, 2013 is the last day on which... Read More

Brinks Hofer Gilson & Lione: President Obama Signs Patent Reform Legislation
Posted on 19 Sep 2011 by Brinks Hofer Gilson & Lione

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... Read More

Patent Reform Bill Passed!
Posted on 9 Sep 2011 by Marla Grossman

A vote on Senate amendments to the America Invents Act began approximately 4 p.m. today. Specifically, the Senate had roll call votes on 3 amendments, in this order: To strike section 37 regarding calculation of the 60-day period for applying... Read More