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
What Does the Transition Mean and What Are the Consequences?
Mr. Martinson points out that transitioning to a first-to-file
system means companies will be forced to rethink their patent strategies. Now, companies will likely rush to the Patent
Office instead of sitting on ideas for an extended period of time.
Mr. Martinson also underscores the elimination of
interference proceedings and the expanded scope of prior art now assertable
against patents. The ability to "swear behind" references has been eliminated,
and companies will now be required to closely monitor/track prior art and publications.
How Will Patent Laws Change; Particularly, 35 USC §§ 102, 103?
In his discussion, Mr. Martinson takes a closer look at the effects
on §§ 102, 103. He points out that § 102 has been completely rewritten, with
the exclusion of subsection (e). As for § 103, though there is not much change,
US practitioners are warned to be mindful in arguing obviousness. Comparing the
"obviousness" standard to Europe's "inventive step" standard, Mr. Martinson notes
that the two standards could provide a practitioner with a difference in the scope and content of prior art.
Listeners can access
Mr. Martinson's complete podcast, Transitioning
to a First to File System, at Suffolk University's
Intellectual Property Law Podcast Series - IP Law Podcast Series.
Lexis.com subscribers can explore/search Patent Law resources on Lexis.com or access any of these Mathew Bender Patent Law publications:
Non-subscribers can purchase Patent Law
treatises/resources and Mathew Bender publications from the LexisNexis Bookstore
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