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...
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...
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...
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...
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...
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...
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,...
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...
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...
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....