Introduction. 1 These materials are public information and have been prepared solely for educational and entertainment purposes to contribute

Size: px
Start display at page:

Download "Introduction. 1 These materials are public information and have been prepared solely for educational and entertainment purposes to contribute"

Transcription

1 Introduction Patent Prosecution Under The AIA William R. Childs, Ph.D., J.D. Drinker Biddle & Reath LLP 1500 K Street, N.W. Washington, DC (202) phone (202) fax William.Childs@dbr.com This paper is being written to provide new lawyers and patent agents with a quick, practical guide for prosecuting patent applications under the America Invents Act (AIA). As such, the guidance provided herein is tailored for the need to respond to Office Actions or client instructions in a short time frame and with a limited budget. This paper is not intended to be a comprehensive guide to the America Invents Act or patent prosecution in general. This paper does not constitute legal advice. 1 First-Inventor To File (or Disclose) Under the America Invents Act (hereafter AIA ), the U.S. Patent and Trademark Office (hereafter USPTO ) is switching to a first-inventor-to-file (or disclose) (hereafter FITF ) system for determining which disclosures constitute prior art. In terms of practical patent prosecution, there are two situations in which this change will become an issue. Two Issues Where AIA Must Be Considered 1. Whenever an application is filed after March 16, 2013, a practitioner will need to determine whether or not to make a transition statement in the Application Data Sheet. 2. Determining if alleged prior art is actually prior art. Suggested Analysis I suggest the following analysis for determining if the AIA FITF provisions apply to an application. (1) determine whether an application is a pre-aia, post-aia, or Transition Application by determining the actual filing date of the instant application and the claim of priority; (2) determine the Effective Filing Date ; and (3) determine if the disclosure is prior art. 1 These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law and practice. These materials reflect only the personal views of the speaker and are not individualized legal advice. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, Drinker Biddle & Reath LLP and the speaker cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with Drinker Biddle & Reath LLP and the speaker. While every attempt was made to insure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed. 1

2 Determine Whether An Application is a Pre-AIA, Post-AIA, or Transition Application. The goal of this analysis is to quickly determine if an application of interest falls under one of the two easy cases of a pre-aia or post-aia application. If not, then the application is a Transition Application, and a more thorough analysis will be necessary to determine if the Transition Application falls under pre-aia provisions or is a Hybrid Application. The AIA FITF provisions apply to an application having an Effective Filing Date on or after March 16, Thus, the determination necessarily follows the determination of the Effective Filing Date. However, the following procedure represents a quick guide for determining if an application falls within the AIA FITF provisions. The first question to ask is whether the instant application has a filing date before March 16, If the instant application has a filing date before March 16, 2013, then the instant application is a pre-aia application and the AIA FITF provisions do not apply. Regardless of enablement or written description, the default Effective Filing Date of any application is, at the latest, the filing date of the instant application. Thus, the instant application must have an Effective Filing Date before March 16, In practice this determination will be quick and easy, because the filing date of the instant application is found on the Filing Receipt, unless the instant application is a 371 national stage application, which would use the PCT filing date. If the filing date of the instant application is before March 16, 2013, use the pre-aia statues and rules. If this date is on or after March 16, 2013, then proceed to the second question below. The second question to ask is whether the instant application has a filing date on or after March 16, 2013, and does not claim priority to a filing date before March 16, If so, then the instant Application must have an Effective Filing Date on or after March 16, Thus, the instant application is a post-aia application and the AIA FITF provisions must apply. This situation is the other easy case, because the Effective Filing Date cannot be before March 16, 2013, if no claim of priority to a date before March 16, 2013 has been made. To determine if priority has been claimed to a prior application, the Application Data Sheet and/or Official Filing Receipt can be consulted. Transition Applications A more difficult determination arises when the instant application has a filing date on or after March 16, 2013, and claims priority to a filing date before March 16, If the instant application has a filing date on or after March 16, 2013, and claims priority to an application having a filing date before March 16, 2013, then the third question to ask is whether a claim in the instant application contains new subject matter. That is, it must be 2 35 U.S.C. 100(i)(1)(A). 2

3 determined if there is new subject matter not supported by an application filed prior to March 16, This is a claim-by-claim determination. 3 If none of the claims contain new subject matter between filing date of the instant application and a pre-aia filing date to which priority was claimed, then the AIA FITF provisions do not apply, because the Effective Filing Date of each claim is before March 16, However, if one or more of the claims contains new subject matter, then all claims in the instant application and any application that claims priority to the instant application are subject to both the AIA FITF provisions and 35 U.S.C. 102(g). This Transition Application is a Hybrid Application. The guide above represents a quick way to determine whether the AIA FITF provisions apply to an instant application. However, realistically, the USPTO has indicated that the PAIR (Patent Application Information Retrieval) system and the front of Office Actions will indicate whether or not the USPTO will apply the AIA FITF provisions to the instant application. To challenge the USPTO s decision to apply the AIA FITF provisions to an application, it will be necessary to appeal. No petition is available. Thus, the determination by the USPTO will probably not be worth fighting, unless a strong reference was applied only under the AIA FITF provisions. Also, all applications that contain a claim having an Effective Filing Date are required to include a Transition Statement admitting this point. Thus, an effective, practical way to determine whether the AIA FITF provisions apply to an application is to look in PAIR or on the front of an Office Action to see if the Office considers the AIA FITF provisions as applying. Similarly, it would be wise to locate the Transition Statement on the Application Data Sheet ( ADS ) to determine how the application was presented to the Office. Determine The Effective Filing Date The determination of the Effective Filing Date of an application will be critical to determining which reference are actually prior art. If it is determined that the application is subject to the AIA FITF provisions, then the Effective Filing Date can be determined as follows. The Effective Filing Date of a claim is the filing date of the instant application or the earliest priority date to which a claim is entitled. Specifically, under 35 U.S.C. 100(i)(1)(A) and 37 C.F.R , the Effective Filing Date is the earliest U.S. provisional application, U.S. utility application, foreign priority document, or PCT application to which priority has been properly claimed under 37 C.F.R. 119, 365 (a, b, or c), 120, or 121 and has support under 35 U.S.C A quick way to determine the Effective Filing Date is to look at the Filing Receipt and find the filing date(s) to which priority is claimed, and then determine if each claim in the instant application is supported under 35 U.S.C For example, if a claim lacks support in the closest, pre-aia document in the chain of benefit or priority, then check the next earlier filing in the chain of priority for 112 support. Generally, the claims of an application will be fully supported by parent U.S. applications and PCT applications, because most practitioners avoid introducing new subject matter in claims between filings. However, the claims should also be checked to be sure. This practice will be 3 See, Examination Guidelines, 78 Fed. Reg. 11,073, section (VI)(B) (Feb. 14, 2013). 3

4 especially important when the Effective Filing Date is based on a U.S. provisional, Foreign Priority filing, or Continuation-In-Part applications, because the introduction of new subject matter in claims from these applications is common. I suggest looking for verbatim or near verbatim support. If the claims do not find verbatim support or the priority document is not in English, I suggest taking steps to determine if the claims are supported, such as requesting authorization for a more thorough inspection of the claims. A thorough determination of whether claims are entitled to full support under 112 will include a detailed analysis of written description and enablement. Determine if the Disclosure Is Prior Art If it is determined that the application is subject to the AIA FITF provisions, a Disclosure cited by the USPTO must be analyzed to determine if the Disclosure is prior art under 35 U.S.C. 102(a)(1) and/or 102(a)(2). The statutes, regulations, and guidelines for determining which Disclosures constitute prior art are complex, controversial, and untested. Therefore, it would be wise to consult with a partner and/or the client to determine if they have a preference for how to address prior art rejections falling under the AIA FITF provisions. That being said, the following represents a practical way to determine if a Disclosure qualifies as prior art. Determine if the Disclosure is Prior Art Under 35 U.S.C. 102(a)(1) The first question to ask is whether the Disclosure was patented, published, on sale, in public use, or otherwise publically available more than one year before the Effective Filing date of a claim. If it was, then the Disclosure is prior art under 102(a)(1), because no exception under 35 U.S.C. 102(b)(1) applies. If not, proceed to the next question. The second question to ask is whether the Disclosure was patented, published, on sale, in public use, or otherwise publically available one year or less before the Effective Filing Date. If it was, then the Disclosure is prior art under 102(a)(1), unless an exception under 102(b)(1) applies. However, both exceptions turn on whether the disclosure or the subject matter thereof was obtained from the inventor or a joint inventor. Therefore, I suggest proceeding as if the Disclosure is prior art under 102(a)(1) for the purposes of preparing comments and/or draft amendments for the client. I also suggest asking the client if there were any public disclosures that could be an exception under 102(b)(1). I suggest this course of action, because the in-house counsel and/or inventors are in a much better position to know if the inventors made any public disclosures that could qualify as an exception. Further, the procedure and rules for disqualifying art under 35 U.S.C. 102(b)(1) are new and untested. Also, the procedure will almost certainly require a time consuming (expensive) submission of Declarations and other evidence. The client is in the best position to determine if such an costly and uncertain course of action should be taken. Further, the USPTO has interpreted the exceptions under 102(b)(1) as applying narrowly to a Disclosure. In particular, the USPTO Examination guidelines indicate the Disclosure must be identical to that of the subject matter to be disqualified. 4 However, the 4 See, USPTO Examination Guidelines of February 14, 2013, response to comment 22. 4

5 guidelines bend the term identical by indicating that the mode of disclosure need not be the same, need not be word-for-word, and can be a more general description. This vague interpretation creates uncertainty as to which parts of a Disclosure may be disqualified as prior art. For at least these reasons, I suggest proceeding as if 102(b)(1) exceptions do not apply, until the client indicates a willingness to accept the expense, delay, and uncertainly this option will likely require. If the Disclosure was not patented, published, on sale, in public use, or otherwise publically available before the Effective Filing Date, then the Disclosure is not prior art under 102(a)(1). However, the Disclosure should be analyzed to determine if it is prior art under 35 U.S.C. 102(a)(2), because this is a completely separate basis for a prior art rejection. Determine if the Disclosure is Prior Art Under 35 U.S.C. 102(a)(2) The determination of whether a Disclosure is prior art under 102(a)(2) is a completely separate analysis from that of 102(a)(1), above. For example, the exceptions under 102(b)(1) apply only to 102(a)(1), and the exceptions under 102(b)(2) apply only to 102(a)(2). The first question to ask is whether the Disclosure is a U.S. Patent, U.S. Publication, or WIPO published PCT application that designates the U.S., has a non-identical inventorship, and was Effectively Filed before the Effective Filing Date of a claim. If the type of reference is permitted, and inventorhip is non-identical, then this question will turn on the following question. Is the effective filing date of the subject matter being relied upon in the Disclosure earlier than the Effective Filing Date of a claim? If so, then the Disclosure is prior art, unless an exception under 102(b)(2) applies. The problems with the exceptions under 102(b)(2) are analogous to those under section 102(a)(1). Therefore, I generally suggest proceeding as if the Disclosure is prior art under section 102(a)(2) for the purposes of addressing the rejections on the merits. However, if the Disclosure was commonly assigned as of the Effective Filing Date of a claim, then I suggest proceeding as if the Disclosure can be disqualified under 102(b)(2)(C). I suggest this course of action, because the determination of a common assignee is usually possible without having to ask the client. Once the assignments are confirmed to have the exact same assignee as of the Effective Filing Date in the USPTO assignments data base, 5 then the attorney of record can remove the Disclosure as prior art under 102(a)(2) by submitting a statement of common ownership. Alternatively, the client can provide an attorney with sufficient proof for a statement of common ownership to be submitted. A Quick Summary and Guide to the America Invents Act First Inventor To File Provisions (AIA FITF). If the actual filing date of the instant U.S. application was before March 16, 2013, then the AIA FITF provisions do not apply. If the actual filing date of the instant application was on or after March 16, 2013, and no priority date before March 16, 2013 is claimed, then the AIA FITF provisions apply

6 If the filing date of the instant U.S. application is on or after March 16, 2013, and claims priority to an application filed before March 16, 2013, then check to see if each claim is supported by an earlier application. If there is no new subject matter present in any claim, then pre-aia provisions apply. If any new subject matter is present in a claim, then the application is a Hybrid Application and both AIA and pre-aia rules apply. Independent of the above determination, check the Transition Statement and the PAIR system to see which law the USPTO will be applying. Under the AIA FITF provisions, the Effective Filing Date is determined on a claim-byclaim basis, and is the earliest filing date to which a claim is entitled to priority (i.e., enablement and written description). Under the AIA FITF provisions, if a Disclosure was publically available more than one year before the Effective Filing Date of a claim, then the Disclosure is prior art under 35 U.S.C. 102(a)(1). No exceptions apply. If the Disclosure was publically available one year or less before the Effective Filing Date of a claim, then proceed as if the Disclosure is prior art until an exception under 102(b)(1) can be established. If the Disclosure is a U.S. Patent, U.S. Publication, or WIPO publication designating the U.S., has non-identical inventorship, and had an effective filing date before the Effective Filing Date of the instant application, then proceed as if the Disclosure is prior art unless an exception under 102(b)(2) can be established (i.e., a common assignee as of the Effective Filing Date). If the Disclosure was not publically available before the Effective Filing Date, and the Disclosure was not a U.S. Patent, U.S. Publication, or WIPO publication designating the U.S. that was effectively filed before the Effective Filing Date of the instant application, then the Disclosure is not prior art. Pre-Issuance Submission of Prior Art Under 35 U.S.C. 122, 35 U.S.C. 301 and 37 C.F.R , a third party can file prior art consisting of patents or publications with a concise description of relevance. Basically, this provision of the AIA allows for the crowd sourcing of prior art that may be relevant to a published patent application. This will typically arise in practice when a U.S. published patent application with threatening claims is detected. A client will then inquire how to avoid potential infringement or may directly request that a lawyer invoke this procedure. Who? Any member of the public may file a third-party submission provided that they are not the applicant or an individual having a duty to disclose under When? A third party can file the pre-issuance submission before the later of 6 months after publication or before the first rejection, and before a Notice of Allowance issues. The first step should be to determine the status of the Application. The status of an application can be determined by looking up the application on PAIR. Determine if the application of interest is available in PAIR (i.e., it or a child application was published), and determine if a first Office 6

7 Action has issued (rejecting a claim) or if a Notice of Allowance has issued. If no claim has been rejected and no Notice of Allowance has issued, then a submission can be filed. If a Notice of Allowance has issued, then no submission can be made. If a claim has been rejected, then determine the U.S. publication date of the application of interest. If the six month period has not expired and no Notice of Allowance has issued, then a submission can still be filed. If a claim has been rejected six months past the publication date or a Notice of Allowance has issued, then no submission can be made. Which type of application? A submission can be filed in any non-provisional utility, design, or plant application that has been published or is publically available. A submission can even be filed in an application which has been abandoned, as long as the application or its child was published. No pre-issuance submission can be filed for an issued patent, a reissue application, or a reexamination proceeding. How? A submission can be filed via EFS (electronic), hand delivery, first-class mailing, or USPS. No facsimiles. A submission must include: a form PTO/SB/429 (i.e., the list ), a legible copy of each document listed (except U.S. Patents and U.S. Application Publications), an English language translation of Non-English documents (do not need to be certified translations), a statement that the individual is not an individual having a duty to disclose (and 35 U.S.C. 122(e) and 1.290), and a concise statement of relevance of each item listed in the document list. The concise statement of relevance must be factual: it cannot contain arguments. Cost? The USPTO requires $180 for every ten items, rounded up. The fee is waived if the submission includes a first and only statement and cites three or fewer items. Practical Resources 6 6 (1) USPTO s FAQs: and (2) 77 Federal Register (July 17, 2012). 7

8 Prioritized Examination Prioritized Examination is a USPTO program that allows an Applicant to pay an additional fee to have a qualifying patent application examined on an prioritized basis until a final disposition is reached. The goal of the program is to have a final disposition (i.e., Final Office Action or Notice of Allowance) within 12 month of the date prioritized status is granted. Who? Any applicant who desires to file an qualifying patent application. Which Types of Patent Applications Qualify? Prioritized Examination applies to non-provisional utility and plant applications filed under 35 U.S.C. 111(a), which includes Continuation Applications, Divisional Applications, Continuations-In-Part (CIP), and By-Pass Continuations (from PCT Applications). A Request for Continued Examination (RCE) can be prioritized, but only one per application. However, a National Stage Application claiming priority to a PCT Application under 35 U.S.C. 371 cannot be prioritized, until an RCE is filed in the application. Eligibility Requirements? No more than 4 independent claims. No more than 30 total claims. No multiple dependent claims. The petition ( Request ) must be present on the same day as the filing, and all filing requirements under 37 C.F.R 1.51(b) must be complete, including all fees paid. year. Requests for utility applications must be filed electronically (EFS-web). Requests for plant applications must be paper filed. Prioritized Examinations are currently limited to 10,000 applications or RCEs per fiscal Prioritized Until When? The grant of special status under prioritized examination does not necessarily last for the pendency of the application. Instead, prioritized status continues until one of the following events occurs: 1. A Petition for Extension of Time is filed. 2. The claims are amended to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim. 3. An RCE is filed. 4. A Notice of Appeal is filed. 5. Request for Suspension of Action is filed. 6. A Notice of Allowance is mailed. 7. A Final Office Action is mailed. 8

9 8. The Application goes abandoned. 9. Examination is complete. As long as Applicants do not file anything that results in a loss of special status (i.e., items 1-5), Prioritized Examination should proceed until the a Final Office Action or Notice of Allowance is mailed. Thus, best practices will include answering non-final Office Actions without filing Extensions of Time and without amending or adding claims to lose eligibility. How Much? To apply, Applicants must pay the $4,000 prioritized examination fee (large entity) and the prioritized processing fee under 37 C.F.R. 1.17(i) ($140). This prioritized examination fee is refunded if the Petition is not granted. Practical Resources 7 Micro Entity Status The default status of any application is to pay large entity fees. However, many fees can be discounted by 50% for Applicants that qualify for small entity status and, under 37 C.F.R. 1.29, 75% for Applicants that qualify for micro entity status. These discounts typically apply to USPTO fees associated with filing, searching, examining, issuing, or appealing patent applications, and maintaining patents. 8 There are two paths to qualify as a Micro Entity. The Higher Education Path requires that the majority of Applicant s income comes from an institution of higher education in the U.S. or its protectorates, or that the application is assigned, licensed, or under obligation to assign interest to such an institution. The Narrow Path requires that the Applicant qualify as a small entity, 9 not have been named as an inventor on 4 or more patent applications; not have a gross income exceeding three times the median household income ($150,162 in 2011); and not assigned, licensed, etc, the application to a party with a gross income exceeding three times the median household income. The higher education path should be considered whenever it s determined that the application is connected to an institution of higher education through assignment, license, or employment. The narrow path is best avoided, because it only applies to the first four applications, and includes a gross income phase out for both the individual and assignee/licensee. However, if the narrow path is used, then it is important to keep up with the gross income and the number of applications by each inventor, because the status must be updated if the applicant no longer qualifies for micro entity status. 7 (1) USPTO s FAQs: and (2) 76 Federal Register (September 23, 2011). 8 Always check the latest USPTO fees for large, small, and micro entities before filing. 9 Generally, an entity qualifies as a small entity if one or more of the following applies: it s a non-profit organization, an individual, or a business with less than 500 employees. 9

10 Practical Resources 10 Supplemental Examination Under 35 U.S.C. 257, Supplemental Examination allows for a patent owner to request that the USPTO reopen examination of a patent to consider, correct, or reconsider any information believed to be relevant to the patent. Generally, a Certificate of Correction can correct insubstantial changes, such as typographical errors. Reissue and ex parte reexam can correct problems in the claims. Only Supplemental Examination can correct the file wrapper of an issued patent. Using Supplemental Examination, a patent owner can file a request for Supplemental Examination to immunize the claims against invalidity and/or unenforceability challenges based on mistakes or omissions in the file history. The main question to ask is if there were misstatements or omission during the pendency of the patent application that need to be corrected. This can range from a failure to submit references in an information disclosure statement ( IDS ) to misstatements in Declarations. Who? A Supplemental Examination can only be filed by the owner or all of the owners of an issued patent. No one else, not even an exclusive licensee, can file for Supplemental Examination. When? A Supplemental Examination can be filed any time during the period of enforceability of a patent. However, the results of Supplemental Examination do not immunize against allegations pled in a civil action or notice to the patentee before the filing of the Request for Supplemental Examination. Thus, Supplemental Examination cannot help with law suits already brought against a patent owner, so it s better to correct the patent as soon as the flaw is detected. How? A Request for Supplemental Examination can include up to 12 items of information, a listing of the items of information, and a separate explanation of each item of information to each and every claim. More than one Supplemental Examination can be filed. The Office will take three months to decide if the items of information raise a substantial new question of patentability. If so, the Office will order ex parte reexamination. If not, then the patent owner has the USPTO on record as saying that the issue did not raise a substantial new question of patentability. In some ways, this result could be the best one. Cost? The request fee is $5,140 and the reexamination fee is $16,120 for a total default cost of $21,260 per reexamination request filed. However, if the USPTO does not order the ex parte reexamination, then the $16,120 is refunded. 10 (1) and (2) 77 Federal Register (December 19, 2012). 10

11 That being said, the rules regarding the number items of information and page limits are complex. Further, the cost of having attorneys apply each item of information to each and every claim will probably cause the service fees to sky rocket. Of course, if the ex parte examination is ordered, then the costs will be those of an ex parte reexam. Practical Resources 11 Changes to Oaths, Declarations, and Transition Statements Applications filed on or after September 16, 2012, follow AIA declaration, assignment, power of attorney rules. Whether a case is subject to AIA declaration, assignment, power of attorney is based on filing date of the case being filed. Again, the filing date of a national stage application is the date the PCT application was filed, not the date the national stage application is filed at the USPTO. If the application has a filing date after September 16, 2012, then use the AIA forms on the USPTO site 12 or the post-aia forms at your firm, if applicable. If the application has a filing date before September 16, 2012, then use the pre-aia forms. This will mostly apply to National Stage Applications and previously filed applications. Regarding Transitions Statement, the box should only be checked for Hybrid Applications, as discussed above. Practical Resources (1) USPTO s FAQs: and (2) 77 Federal Register (August 14, 2012)

12 Appendix (a) NOVELTY; PRIOR ART.--A person shall be entitled to a patent unless-- (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. (b) EXCEPTIONS.-- (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.--A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if-- (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.--A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if-- (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. 12

Patent Prosecution Under The AIA

Patent Prosecution Under The AIA Patent Prosecution Under The AIA A Practical Guide For Prosecutors William R. Childs, Ph.D., J.D. August 22, 2013 DISCLAIMER These materials are public information and have been prepared solely for educational

More information

K&L Gates Webinar Current Developments in Patents. Peggy Focarino Commissioner for Patents September 13 th, 2012

K&L Gates Webinar Current Developments in Patents. Peggy Focarino Commissioner for Patents September 13 th, 2012 K&L Gates Webinar Current Developments in Patents Peggy Focarino Commissioner for Patents September 13 th, 2012 IP Jobs Report IP intensive industries accounted for about $5.06 trillion in value added,

More information

Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act Final Rules

Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act Final Rules Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act Final Rules FOR: NEIFELD IP LAW, PC, ALEXANDRIA VA Date: 2-19-2013 RICHARD NEIFELD NEIFELD IP LAW, PC http://www.neifeld.com

More information

PATENT PROSECUTION STRATEGIES IN AN AIA WORLD: SUCCEEDING WITH THE CHANGES

PATENT PROSECUTION STRATEGIES IN AN AIA WORLD: SUCCEEDING WITH THE CHANGES PATENT PROSECUTION STRATEGIES IN AN AIA WORLD: SUCCEEDING WITH THE CHANGES BY: Juan Carlos A. Marquez Stites & Harbison PLLC 1 OVERVIEW I. Summary Overview of AIA Provisions II. Portfolio Building Side

More information

Delain Law Office, PLLC

Delain Law Office, PLLC Delain Law Office, PLLC Patent Prosecution and Appeal Tips From PTO Day, December 5, 2005 Nancy Baum Delain, Esq. Registered Patent Attorney Delain Law Office, PLLC Clifton Park, NY http://www.ipattorneyfirm.com

More information

First Inventor to File: Proposed Rules and Proposed Examination Guidelines

First Inventor to File: Proposed Rules and Proposed Examination Guidelines First Inventor to File: Proposed Rules and Proposed Examination Guidelines The Federal Laboratory Consortium for Technology Transfer America Invents Act Webinar Series October 1, 2012 Kathleen Kahler Fonda

More information

Changes at the PTO. October 21, 2011 Claremont Hotel. Steven C. Carlson Fish & Richardson P.C. Bradley Baugh North Weber & Baugh LLP

Changes at the PTO. October 21, 2011 Claremont Hotel. Steven C. Carlson Fish & Richardson P.C. Bradley Baugh North Weber & Baugh LLP Changes at the PTO October 21, 2011 Claremont Hotel Steven C. Carlson Fish & Richardson P.C. Bradley Baugh North Weber & Baugh LLP Overview: Changes at the PTO Some Causes for Reform Patent Trial and Appeals

More information

USPTO Implementation of the America Invents Act. Janet Gongola Patent Reform Coordinator Direct dial:

USPTO Implementation of the America Invents Act. Janet Gongola Patent Reform Coordinator Direct dial: USPTO Implementation of the America Invents Act Janet Gongola Patent Reform Coordinator Janet.Gongola@uspto.gov Direct dial: 571-272-8734 Three Pillars of the AIA 11/30/2011 2 Speed Prioritized examination

More information

The America Invents Act : What You Need to Know. September 28, 2011

The America Invents Act : What You Need to Know. September 28, 2011 The America Invents Act : What You Need to Know September 28, 2011 Presented by John B. Pegram J. Peter Fasse 2 The America Invents Act (AIA) Enacted September 16, 2011 3 References: AIA = America Invents

More information

America Invents Act: Patent Reform

America Invents Act: Patent Reform America Invents Act: Patent Reform Gunnar Leinberg, Nicholas Gallo, and Gerald F. Gibbs, Jr. LeClairRyan January 4 th 2012 gunnar.leinberg@leclairryan.com; nicholas.gallo@leclaairryan.com; and gerald.gibbs@leclairryan.com

More information

America Invents Act of 2011 Part 1: Impact on Litigation Strategy Part 2: Strategic Considerations of the FTF Transition

America Invents Act of 2011 Part 1: Impact on Litigation Strategy Part 2: Strategic Considerations of the FTF Transition America Invents Act of 2011 Part 1: Impact on Litigation Strategy Part 2: Strategic Considerations of the FTF Transition Dave Cochran Jones Day Cleveland December 6, 2012 Part 1: Impact on Litigation Strategy

More information

Considerations for the United States

Considerations for the United States Considerations for the United States Speaker: Donald G. Lewis US Patent Attorney California Law Firm Leahy-Smith America Invents Act First Inventor to file, with grace period Derivation Actions Prior user

More information

FINAL RULES IMPLEMENTING EIGHTEEN MONTH PUBLICATION OF PATENT APPLICATIONS

FINAL RULES IMPLEMENTING EIGHTEEN MONTH PUBLICATION OF PATENT APPLICATIONS FINAL RULES IMPLEMENTING EIGHTEEN MONTH PUBLICATION OF PATENT APPLICATIONS November 3, 2000 As discussed in our November 29, 1999, Special Report on the Omnibus Reform Act of 1999, legislation was enacted

More information

America Invents Act: Patent Reform

America Invents Act: Patent Reform America Invents Act: Patent Reform Gunnar Leinberg, Nicholas Gallo, and Gerald Gibbs LeClairRyan December 2011 gunnar.leinberg@leclairryan.com; nicholas.gallo@leclaairryan.com; and gerald.gibbs@leclairryan.com

More information

These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of

These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of May 14, 2013 These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law. These

More information

Changes to Implement the First Inventor to File Provisions of the Leahy-Smith. AGENCY: United States Patent and Trademark Office, Commerce.

Changes to Implement the First Inventor to File Provisions of the Leahy-Smith. AGENCY: United States Patent and Trademark Office, Commerce. This document is scheduled to be published in the Federal Register on 07/23/2012 and available online at http://federalregister.gov/a/2012-17915, and on FDsys.gov [3510-16-P] DEPARTMENT OF COMMERCE United

More information

2001 through 2017 IPLEGALED, Inc. All Rights Reserved

2001 through 2017 IPLEGALED, Inc. All Rights Reserved CHAPTER 2 FREQUENTLY USED DOCUMENTS AND CONCEPTS There are a number of documents and concepts peculiar to patent practice that you will use frequently in your professional practice. They are essentially

More information

Chapter 1900 Protest Protest Under 37 CFR [R ] How Protest Is Submitted

Chapter 1900 Protest Protest Under 37 CFR [R ] How Protest Is Submitted Chapter 1900 Protest 1901 Protest Under 37 CFR 1.291 1901.01 Who Can Protest 1901.02 Information Which Can Be Relied on in Protest 1901.03 How Protest Is Submitted 1901.04 When Should the Protest Be Submitted

More information

Policies of USPTO Director Kappos & U.S. Patent Law Reform

Policies of USPTO Director Kappos & U.S. Patent Law Reform Policies of USPTO Director Kappos & U.S. Patent Law Reform December 15, 2011 Speaker: Ron Harris The Harris Firm ron@harrispatents.com The USPTO Under Director David Kappos USPTO Director David Kappos

More information

Prioritized Examination and New Prior Art defined for First-Inventor-to-File

Prioritized Examination and New Prior Art defined for First-Inventor-to-File Prioritized Examination and New Prior Art defined for First-Inventor-to-File SIPO-US IP Council Conference New York June 3, 2013 Denise Kettelberger PhD, JD Nielsen IP Law, LLC USPTO Concerns Increasing

More information

Moving Patent Applications Through the USPTO: Options for Applicants

Moving Patent Applications Through the USPTO: Options for Applicants Moving Patent Applications Through the USPTO: Options for Applicants Navy T2 ORTA/Legal Workshop June 28, 2011 Kathleen Kahler Fonda Senior Legal Advisor, Office of Patent Legal Administration United States

More information

Pre-Issuance Submissions under the America Invents Act

Pre-Issuance Submissions under the America Invents Act Pre-Issuance Submissions under the America Invents Act By Alan Kendrick, J.D., Nerac Analyst The Leahy-Smith America Invents Act (AIA) was signed into law By President Obama in September 2011 and the final

More information

Chapter 1400 Correction of Patents

Chapter 1400 Correction of Patents Chapter 1400 Correction of Patents 1400.01 Introduction 1401 Reissue 1402 Grounds for Filing 1403 Diligence in Filing 1404 Submission of Papers Where Reissue Patent Is in Litigation 1405 Reissue and Patent

More information

America Invents Act (AIA) The Patent Reform Law of 2011 Initial Summary

America Invents Act (AIA) The Patent Reform Law of 2011 Initial Summary PRESENTATION TITLE America Invents Act (AIA) The Patent Reform Law of 2011 Initial Summary Christopher M. Durkee James L. Ewing, IV September 22, 2011 1 Major Aspects of Act Adoption of a first-to-file

More information

America Invents Act H.R (Became Law: September 16, 2011) Michael K. Mutter Birch, Stewart, Kolasch & Birch October 11-12, 2011

America Invents Act H.R (Became Law: September 16, 2011) Michael K. Mutter Birch, Stewart, Kolasch & Birch   October 11-12, 2011 America Invents Act H.R. 1249 (Became Law: September 16, 2011) Michael K. Mutter Birch, Stewart, Kolasch & Birch www.bskb.com October 11-12, 2011 H.R. 1249 became law Sept. 16, 2011 - Overview first inventor

More information

Presented to The Ohio State Bar Association. May 23, 2012

Presented to The Ohio State Bar Association. May 23, 2012 Your Guide to the America Invents Act (AIA) Presented to The Ohio State Bar Association May 23, 2012 Overview A. Most comprehensive change to U.S. patent law in over 60 years; signed into law Sept. 16,

More information

How the USPTO Rules Implement the AIA: Prosecution Strategies and Tips. by Andrew D. Meikle Birch Stewart Kolasch & Birch LLP

How the USPTO Rules Implement the AIA: Prosecution Strategies and Tips. by Andrew D. Meikle Birch Stewart Kolasch & Birch LLP How the USPTO Rules Implement the AIA: Prosecution Strategies and Tips by Andrew D. Meikle Birch Stewart Kolasch & Birch LLP USPTO Rule Jargon AIA (America Invents Act) FITF (first-inventor-to-file system

More information

Information Disclosure Statements 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP

Information Disclosure Statements 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP Information Disclosure Statements THE BASICS What is an IDS? An IDS is a paper submitted to the U.S. Patent and Trademark Office by an Applicant providing a list of documents having potential relevance

More information

Newly Signed U.S. Patent Law Will Overhaul Patent Procurement, Enforcement and Defense

Newly Signed U.S. Patent Law Will Overhaul Patent Procurement, Enforcement and Defense September 16, 2011 Practice Groups: IP Procurement and Portfolio Management Intellectual Property Litigation Newly Signed U.S. Patent Law Will Overhaul Patent Procurement, Enforcement and Defense On September

More information

New Patent Application Rules Set to Take Effect November 1, 2007

New Patent Application Rules Set to Take Effect November 1, 2007 INTELLECTUAL PROPERTY October 2007 New Patent Application Rules Set to Take Effect November 1, 2007 The United States Patent and Trademark Office (USPTO) has issued new rules for the patent application

More information

First-Inventor-to-File

First-Inventor-to-File First-Inventor-to-File Duke Patent Law Institute May 14, 2013 Presented by Tom Irving Copyright Finnegan 2013 Disclaimer These materials are public information and have been prepared solely for educational

More information

STATUS OF. bill in the. Given the is presented. language. ability to would be. completely. of 35 U.S.C found in 35. bills both.

STATUS OF. bill in the. Given the is presented. language. ability to would be. completely. of 35 U.S.C found in 35. bills both. STATUS OF PATENTT REFORM LEGISLATION On June 23, 2011, the United States House of Representatives approved its patent reform bill, H.R. 1249 (the Leahy-Smith America Invents Act). Thee passage follows

More information

Patent Rule Changes to Support Implementation of the United States Patent and Trademark Office 21 st Century Strategic Plan

Patent Rule Changes to Support Implementation of the United States Patent and Trademark Office 21 st Century Strategic Plan Patent Rule Changes to Support Implementation of the United States Patent and Trademark Office 21 st Century Strategic Plan October 7, 2004 The United States Patent and Trademark Office (PTO) has established

More information

Chapter 2500 Maintenance Fees

Chapter 2500 Maintenance Fees Chapter 2500 Maintenance Fees 2501 2504 2506 2510 2515 2520 2522 2530 2531 2532 2540 2542 2550 2560 2570 2575 2580 2590 2591 2595 Introduction Patents Subject to Maintenance Fees Times for Submitting Maintenance

More information

AGENCY: United States Patent and Trademark Office, Commerce. SUMMARY: The United States Patent and Trademark Office (USPTO) has modified

AGENCY: United States Patent and Trademark Office, Commerce. SUMMARY: The United States Patent and Trademark Office (USPTO) has modified This document is scheduled to be published in the Federal Register on 05/17/2013 and available online at http://federalregister.gov/a/2013-11870, and on FDsys.gov [3510-16-P] DEPARTMENT OF COMMERCE United

More information

Patent Prosecution Update

Patent Prosecution Update Patent Prosecution Update March 2012 Contentious Proceedings at the USPTO Under the America Invents Act by Rebecca M. McNeill The America Invents Act of 2011 (AIA) makes significant changes to contentious

More information

TECHNOLOGY & BUSINESS LAW ADVISORS, LLC

TECHNOLOGY & BUSINESS LAW ADVISORS, LLC TECHNOLOGY & BUSINESS LAW ADVISORS, LLC www.tblawadvisors.com Fall 2011 Business Implications of the 2011 Leahy-Smith America Invents Act On September 16, 2011, the Leahy-Smith America Invents Act (AIA)

More information

Correction of Patents

Correction of Patents Correction of Patents Seema Mehta Kelly McKinney November 9, 2011 Overview: Three Options Certificate of Correction Reissue Reexamination in view of the America Invents Act (AIA) Certificate of Correction

More information

Priority Claims, Incorporation By Reference, and how to fix errors, big and small. March 9, Jack G. Abid. Orlando, Florida

Priority Claims, Incorporation By Reference, and how to fix errors, big and small. March 9, Jack G. Abid. Orlando, Florida Priority Claims, Incorporation By Reference, and how to fix errors, big and small. March 9, 2016 Jack G. Abid Orlando, Florida Roadmap I. Introduction A. What? B. Why C. Yes, People Screw This Up II. Priority

More information

PATENT PROSECUTION HIGHWAY

PATENT PROSECUTION HIGHWAY PATENT PROSECUTION HIGHWAY William Chung Scully, Scott, Murphy & Presser, PC 400 Garden City Plaza, Suite 300 Garden City, NY 11530 516-742-4343 intprop@ssmp.com Overview of Requirements for PPH 2.0 (1)

More information

United States Patent and Trademark Office and Japan Patent Office Collaborative Search. AGENCY: United States Patent and Trademark Office, Commerce.

United States Patent and Trademark Office and Japan Patent Office Collaborative Search. AGENCY: United States Patent and Trademark Office, Commerce. This document is scheduled to be published in the Federal Register on 07/10/2015 and available online at http://federalregister.gov/a/2015-16846, and on FDsys.gov [3510 16 P] DEPARTMENT OF COMMERCE United

More information

IPDAS Forms Library: A Complete List

IPDAS Forms Library: A Complete List IPDAS Forms Library: A Complete List A Complete Library of Practice-Specific Documents. The IPDAS forms library contains more than 450 templates for use in: USPTO and international filings (PCT, Hague,

More information

UNITED STATES OF AMERICA PATENT RULES Title 37 - Code of Federal Regulations as revised on October 27, 2015, effective November 30, 2015

UNITED STATES OF AMERICA PATENT RULES Title 37 - Code of Federal Regulations as revised on October 27, 2015, effective November 30, 2015 UNITED STATES OF AMERICA PATENT RULES Title 37 - Code of Federal Regulations as revised on October 27, 2015, effective November 30, 2015 TABLE OF CONTENTS CHAPTER I - UNITED STATES PATENT AND TRADEMARK

More information

CORRECTION OF ISSUED PATENTS

CORRECTION OF ISSUED PATENTS CORRECTION OF ISSUED PATENTS 2012 IP Summer Seminar Peter Corless Partner pcorless@edwardswildman.com July 2012 2012 Edwards Wildman Palmer LLP & Edwards Wildman Palmer UK LLP Types of Correction Traditional

More information

Accelerating the Acquisition of an Enforceable Patent: Bypassing the USPTO s Backlog Lawrence A. Stahl and Seth E. Boeshore

Accelerating the Acquisition of an Enforceable Patent: Bypassing the USPTO s Backlog Lawrence A. Stahl and Seth E. Boeshore Accelerating the Acquisition of an Enforceable Patent: Bypassing the USPTO s Backlog Lawrence A. Stahl and Seth E. Boeshore The U.S. Patent and Trademark Office (USPTO) dockets new patent applications

More information

Practice Tips for Foreign Applicants

Practice Tips for Foreign Applicants Practice Tips for Foreign Applicants Mark Powell Deputy Commissioner for International Patent Cooperation Overview Changes in Practice America Invents Act (AIA) Patent Law Treaty (PLT) & Patent Law Treaties

More information

POTENTIAL UPCOMING CHANGES IN U.S. PATENT LAWS: THE PUBLICATION OF PATENT APPLICATIONS

POTENTIAL UPCOMING CHANGES IN U.S. PATENT LAWS: THE PUBLICATION OF PATENT APPLICATIONS Copyright 1996 by the PTC Research Foundation of Franklin Pierce Law IDEA: The Journal of Law and Technology *309 POTENTIAL UPCOMING CHANGES IN U.S. PATENT LAWS: THE PUBLICATION OF PATENT APPLICATIONS

More information

Annex 2 DEFINITIONS FOR TERMS AND FOR STATISTICS ON PROCEDURES

Annex 2 DEFINITIONS FOR TERMS AND FOR STATISTICS ON PROCEDURES DEFINITIONS FOR TERMS AND FOR STATISTICS ON PROCEDURES This annex contains firstly definitions of the main terms used in the report 51. After that there is an explanation of the patent procedures relating

More information

John Doll Commissioner for Patents. February 1, 2006

John Doll Commissioner for Patents. February 1, 2006 John Doll Commissioner for Patents February 1, 2006 USPTO Request for Public Input: Strategic Planning Agency developing new strategic plan Part of budget process Planning for at least six-year period

More information

PATENTS TRADEMARKS COPYRIGHTS TRADE SECRETS ZIOLKOWSKI PATENT SOLUTIONS GROUP, SC INTELLECTUAL PROPERTY ATTORNEYS. Patent Process FAQs

PATENTS TRADEMARKS COPYRIGHTS TRADE SECRETS ZIOLKOWSKI PATENT SOLUTIONS GROUP, SC INTELLECTUAL PROPERTY ATTORNEYS. Patent Process FAQs PATENTS TRADEMARKS COPYRIGHTS TRADE SECRETS ZIOLKOWSKI PATENT SOLUTIONS GROUP, SC INTELLECTUAL PROPERTY ATTORNEYS Patent Process FAQs The Patent Process The patent process can be challenging for those

More information

Should you elect non publication?

Should you elect non publication? Should you elect non publication? Short answer: yes, in most cases, assuming no foreign filing. Longer answer: see below. Jack S. Emery, JD, PhD jack@jacksemerypa.com March, 2013 Under current law in most

More information

CHANGES TO IMPLEMENT THE INVENTOR S OATH OR DECLARATION PROVISIONS OF

CHANGES TO IMPLEMENT THE INVENTOR S OATH OR DECLARATION PROVISIONS OF CHANGES TO IMPLEMENT THE INVENTOR S OATH OR DECLARATION PROVISIONS OF THE LEAHY-SMITH AMERICA INVENTS ACT (AIA); FREQUENTLY ASKED QUESTIONS 1 EFFECTIVE DATE Q.1.1: What is the effective date for the inventor

More information

PRACTICE TIPS FOR PATENT PROSECUTION BEFORE THE USPTO

PRACTICE TIPS FOR PATENT PROSECUTION BEFORE THE USPTO PRACTICE TIPS FOR PATENT PROSECUTION BEFORE THE USPTO HERSHKOVITZ IP GROUP INTA 2012 WASHINGTON, D.C. www.hershkovitzipgroup.com Try to obtain written instructions (Order Letter) from client (the following

More information

U.S. Patent Law Reform The America Invents Act

U.S. Patent Law Reform The America Invents Act U.S. Patent Law Reform The America Invents Act August 15, 2011 John B. Pegram Fish & Richardson What s New in 2011? Patent Law Reform is high on Congressional agenda A desire to legislate Bipartisan Patent

More information

New Post Grant Proceedings: Basics by

New Post Grant Proceedings: Basics by New Post Grant Proceedings: Basics by Tom Irving Copyright Finnegan 2013 May 14, 2013 Disclaimer These materials are public information and have been prepared solely for educational and entertainment purposes

More information

Patent Reform Fact and Fiction. What You Need to Know to Prepare for the First Inventor to File Transition. November 27, 2012

Patent Reform Fact and Fiction. What You Need to Know to Prepare for the First Inventor to File Transition. November 27, 2012 Patent Reform Fact and Fiction What You Need to Know to Prepare for the First Inventor to File Transition November 27, 2012 Wolf, Greenfield & Sacks, P.C. 600 Atlantic Avenue Boston, Massachusetts 02210

More information

GLOSSARY OF INTELLECTUAL PROPERTY TERMS

GLOSSARY OF INTELLECTUAL PROPERTY TERMS 450-177 360 Huntington Avenue Boston, MA 02115 Tel 617 373 8810 Fax 617 373 8866 cri@northeastern.edu GLOSSARY OF INTELLECTUAL PROPERTY TERMS Abstract - a brief (150 word or less) summary of a patent,

More information

MBHB snippets Alert October 13, 2011

MBHB snippets Alert October 13, 2011 Patent Reform: First-Inventor-to-File to Replace the Current First-to-Invent System By Kevin E. Noonan, Ph.D. The Leahy-Smith America Invents Act of 2011 ( AIA ) was signed into law by President Obama

More information

PROCEDURES FOR INVALIDATING, CLARIFYING OR NARROWING A PATENT IN THE PATENT OFFICE UNDER THE AMERICA INVENTS ACT (AIA)

PROCEDURES FOR INVALIDATING, CLARIFYING OR NARROWING A PATENT IN THE PATENT OFFICE UNDER THE AMERICA INVENTS ACT (AIA) I. Prior to AIA, there were two primary ways for a third party to invalidate a patent in the patent office: A. Interference under 35 U.S.C. 135 & 37 C.F.R. 41.202, which was extremely limited, as it required:

More information

August 31, I. Introduction

August 31, I. Introduction CHANGES TO U.S. PATENT PRACTICE FOR LIMITATIONS ON CLAIMS, CLAIM FEES, RELATED APPLICATIONS AND APPLICATIONS CONTAINING PATENTABLY INDISTINCT CLAIMS, CONTINUING APPLICATIONS, AND REQUESTS FOR CONTINUED

More information

Patent Prosecution in View of The America Invents Act. Overview

Patent Prosecution in View of The America Invents Act. Overview Patent Prosecution in View of The America Invents Act Courtenay C. Brinckerhoff David Dutcher Paul S. Hunter 2 Overview First-To-File (new 35 U.S.C. 102) Derivation Proceedings New Proceedings For Patent

More information

Get Your Design Patent Fast!

Get Your Design Patent Fast! 1 Get Your Design Patent Fast! Accelerated Examination And Expedited Examination Robert M. Spear Design Patent Specialist, TC2900 USPTO 2 Fast Patents! Accelerated examination applications are special

More information

Tips On Maximizing Patent Term Adjustment

Tips On Maximizing Patent Term Adjustment Portfolio Media. Inc. 860 Broadway, 6th Floor New York, NY 10003 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com Tips On Maximizing Patent Term Adjustment Law360,

More information

US Patent Prosecution Duty to Disclose

US Patent Prosecution Duty to Disclose July 12, 2016 Terri Shieh-Newton, Member Therasense v. Becton Dickinson & Co., (Fed. Cir. en banc May 25, 2011) Federal Circuit en banc established new standards for establishing both 10 materiality and

More information

Chapter 1800 Patent Cooperation Treaty

Chapter 1800 Patent Cooperation Treaty Chapter 1800 Patent Cooperation Treaty 1801 Basic Patent Cooperation Treaty (PCT) Principles 1802 PCT Definitions 1803 Reservations Under the PCT Taken by the United States of America 1805 Where to File

More information

Patent Law & Nanotechnology: An Examiner s Perspective. Eric Woods MiRC Technical Staff

Patent Law & Nanotechnology: An Examiner s Perspective. Eric Woods MiRC Technical Staff Patent Law & Nanotechnology: An Examiner s Perspective Eric Woods MiRC Technical Staff eric.woods@mirc.gatech.edu Presentation Overview What is a Patent? Parts and Form of a Patent application Standards

More information

Il brevetto USA alla luce delle nuove regole e dei nuovi scenari competitivi

Il brevetto USA alla luce delle nuove regole e dei nuovi scenari competitivi Il brevetto USA alla luce delle nuove regole e dei nuovi scenari competitivi Nuove strategie e procedure per la valorizzazione del IP Summer School Netval e Università Bologna Bertinoro 12.09.2012 Francesco

More information

Post-Allowance Prosecution: The End Game That Goes On To The End

Post-Allowance Prosecution: The End Game That Goes On To The End Post-Allowance Prosecution: The End Game That Goes On To The End By Robert M. Hansen i Partner The Marbury Law Group, PLLC 11800 Sunrise Valley Dr., 15 th Floor Reston, VA 20191 703-391-2900 703-391-2901

More information

The Limited Ability of a Patent Owner to Amend Claims and Present New Claims in Post-Grant and Inter Partes Reviews

The Limited Ability of a Patent Owner to Amend Claims and Present New Claims in Post-Grant and Inter Partes Reviews The Limited Ability of a Patent Owner to Amend Claims and Present New Claims in Post-Grant and Inter Partes Reviews By: Lawrence Stahl and Donald Heckenberg The Leahy-Smith America Invents Act (AIA) includes

More information

PATENT COOPERATION TREATY (PCT)

PATENT COOPERATION TREATY (PCT) E PCT/GL/ISPE/6 ORIGINAL: ENGLISH DATE: June 6, 2017 PATENT COOPERATION TREATY (PCT) PCT INTERNATIONAL SEARCH AND PRELIMINARY EXAMINATION GUIDELINES (Guidelines for the Processing by International Searching

More information

Part IV: Supplemental Examination

Part IV: Supplemental Examination Strategic Considerations in View of the USPTO s Proposed Rules Part IV: Supplemental Examination Presented By: Sam Woodley & Irene Hudson Fish & Richardson AIA Webinar Series Date March 27, 2012 April

More information

USPTO Programs for Expediting Patent Prosecution: Accelerated Exam, Patent Prosecution Highway, Green Technology. Susan Perng Pan November 2010

USPTO Programs for Expediting Patent Prosecution: Accelerated Exam, Patent Prosecution Highway, Green Technology. Susan Perng Pan November 2010 USPTO Programs for Expediting Patent Prosecution: Accelerated Exam, Patent Prosecution Highway, Green Technology Susan Perng Pan November 2010 Accelerated Examination Available in non-reissue non-provisional

More information

USPTO PUBLISHES FINAL RULES FOR DERIVATION PROCEEDINGS UNDER AMERICA INVENTS ACT

USPTO PUBLISHES FINAL RULES FOR DERIVATION PROCEEDINGS UNDER AMERICA INVENTS ACT USPTO PUBLISHES FINAL RULES FOR DERIVATION PROCEEDINGS UNDER AMERICA INVENTS ACT October 19, 2012 The United States Patent & Trademark Office ("USPTO") has now published its final rules for implementing

More information

U.S. Patent and Trademark Office Issues Proposed Rules for Post-Issuance Patent Review under the America Invents Act

U.S. Patent and Trademark Office Issues Proposed Rules for Post-Issuance Patent Review under the America Invents Act February 16, 2012 Practice Groups: Intellectual Property Intellectual Property Litigation U.S. Patent and Trademark Office Issues Proposed Rules for Post-Issuance Patent Review under the America Invents

More information

EFFECTIVE DATES OF THE VARIOUS RULES AND REQUIREMENTS

EFFECTIVE DATES OF THE VARIOUS RULES AND REQUIREMENTS THE NEW PATENT RULES PUBLISHED AUGUST 21, 2007 By Richard Neifeld I. INTRODUCTION Acronyms referred to below. ESD - Examination Support Document FAOM - First office Action On the Merits SRR - Suggested

More information

Venue Differences. Claim Amendments During AIA Proceedings 4/16/2015. The Patent Trial and Appeal Board

Venue Differences. Claim Amendments During AIA Proceedings 4/16/2015. The Patent Trial and Appeal Board The Patent Trial and Appeal Board Created by statute, and includes statutory members and Administrative Patent Judges Claim Amendments During AIA Proceedings The PTAB is charged with rendering decisions

More information

INTER PARTES REEXAMINATION MECHANICS AND RESULTS

INTER PARTES REEXAMINATION MECHANICS AND RESULTS INTER PARTES REEXAMINATION MECHANICS AND RESULTS Eugene T. Perez Birch, Stewart, Kolasch & Birch, LLP Gerald M. Murphy, Jr. Birch, Stewart, Kolasch & Birch, LLP Leonard R. Svensson Birch, Stewart, Kolasch

More information

Appendix R Patent Rules. CONSOLIDATED PATENT RULES Title 37 - Code of Federal Regulations Patents, Trademarks, and Copyrights

Appendix R Patent Rules. CONSOLIDATED PATENT RULES Title 37 - Code of Federal Regulations Patents, Trademarks, and Copyrights Appendix R Patent Rules CONSOLIDATED PATENT RULES Title 37 - Code of Federal Regulations Patents, Trademarks, and Copyrights CHAPTER I Editor s Note (November 9, 2007): All final rules that became effective

More information

America Invents Act (AIA) Post-Grant Proceedings

America Invents Act (AIA) Post-Grant Proceedings America Invents Act (AIA) Post-Grant Proceedings Various Post-Grant Proceedings under AIA Ex parte reexamination Modified by AIA Sec. 6(h)(2) Continue to be available under AIA Inter partes reexamination

More information

Strategies for Expediting U.S. Patent Prosecution. Rachel K. Pilloff

Strategies for Expediting U.S. Patent Prosecution. Rachel K. Pilloff Strategies for Expediting U.S. Patent Prosecution Rachel K. Pilloff Strategies for Expediting U.S. Prosecution 1. Petition to Make Special 2. Track One Prioritized Examination 3. Request for Accelerated

More information

Good afternoon, Please acknowledge receipt by return . Thank you, Erin Sheehan Policy Assistant

Good afternoon, Please acknowledge receipt by return  . Thank you, Erin Sheehan Policy Assistant From: Erin Sheehan Sent: Friday, October 05, 2012 1:54 PM To: fitf_rules; fitf_guidance Cc: Todd Dickinson; Vincent Garlock; James Crowne; Claire Lauchner Subject: First Inventor to File Proposed Rules

More information

THE AMERICA INVENTS ACT

THE AMERICA INVENTS ACT THE AMERICA INVENTS ACT Edward Baba & Bret Field February 19, 2013 March 4, 2013 Bozicevic, Field & Francis LLP Overview Brief Review of Patents 101 Leahy-Smith America Invents Act Law Prior to March 16,

More information

Patent Exam Fall 2015

Patent Exam Fall 2015 Exam No. This examination consists of five short answer questions 2 hours ******** Computer users: Please use the Exam4 software in take-home mode. Answers may alternatively be hand-written. Instructions:

More information

Three Types of Patents

Three Types of Patents What is a patent? A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from

More information

Patents and the Protection of Proprietary Biotechnology Information

Patents and the Protection of Proprietary Biotechnology Information Patents and the Protection of Proprietary Biotechnology Information Susan Haberman Griffen Anna Tsang Finnegan, Henderson, Farabow, Garrett & Dunner, LLP May 20, 2005 Page 1 2005 DISCLAIMER These materials

More information

Prosecuting an Israel Patent Application and Beyond

Prosecuting an Israel Patent Application and Beyond page 1 of 11 Prosecuting an Israel Patent Application and Beyond Updated July 2017 LIST OF CONTENTS 1. General Information (page 2) a. Language b. Conventions c. Obtaining a filing date and number d. Excess

More information

Accelerated Examination. Presented by Hans Troesch, Principal Fish & Richardson P.C. March 2, 2010

Accelerated Examination. Presented by Hans Troesch, Principal Fish & Richardson P.C. March 2, 2010 Accelerated Examination Presented by Hans Troesch, Principal Fish & Richardson P.C. March 2, 2010 Overview The Basics Petition for accelerated examination Pre-examination search Examination Support Document

More information

Navigating through the Obviousness-Type Double Patenting Minefield Landslide Vol. 10, No. 3 January/February 2018

Navigating through the Obviousness-Type Double Patenting Minefield Landslide Vol. 10, No. 3 January/February 2018 Navigating through the Obviousness-Type Double Patenting Minefield Landslide Vol. 10, No. 3 January/February 2018 Elizabeth A Doherty, PhD 925.231.1991 elizabeth.doherty@mcneillbaur.com Amelia Feulner

More information

PATENT RULES Title 37 - Code of Federal Regulations Patents, Trademarks, and Copyrights

PATENT RULES Title 37 - Code of Federal Regulations Patents, Trademarks, and Copyrights PATENT RULES Title 37 - Code of Federal Regulations Patents, Trademarks, and Copyrights [Editor s Note (December 18, 2000): All final rules that were published since the last revision of the Manual of

More information

Key Words Glossary Contents

Key Words Glossary Contents Key Words Glossary Contents Note: This keyword glossary is meant to be a comprehensive guide to all of the terms of art that you will need in going through the course. But, if you run across a term or

More information

Note: When any ambiguity of interpretation is found in this provisional translation, the Japanese text shall prevail. Part III Patentability

Note: When any ambiguity of interpretation is found in this provisional translation, the Japanese text shall prevail. Part III Patentability Note: When any ambiguity of interpretation is found in this provisional translation, the Japanese text shall prevail. Part III Patent Act (Requirements for ) Article 29(1) Any person

More information

Inequitable Conduct Judicial Developments

Inequitable Conduct Judicial Developments Inequitable Conduct Judicial Developments Duke Patent Law Institute May 16, 2013 Presented by Tom Irving Copyright Finnegan 2013 Disclaimer These materials are public information and have been prepared

More information

SEC PROVISIONS TO IMPLEMENT THE PATENT LAW TREATY

SEC PROVISIONS TO IMPLEMENT THE PATENT LAW TREATY Review of United States Statutory Implementation of the Patent Law Treaty By Richard Neifeld, Neifeld IP Law, PC 1 I. INTRODUCTION The "Patent Law Treaty " (PLT) is an international treaty administered

More information

PATENT LAW DEVELOPMENTS

PATENT LAW DEVELOPMENTS PATENT LAW DEVELOPMENTS Patentable Subject Matter, Prior Art, and Post Grant Review Christine Ethridge Copyright 2014 by K&L Gates LLP. All rights reserved. DISCLAIMER The statements and views expressed

More information

The Leahy-Smith America Invents Act (AIA)

The Leahy-Smith America Invents Act (AIA) POLICY BRIEF SEPTEMBER 2011 no. 184 The Comprehensive Patent Reform of 2011 Navigating the Leahy-Smith America Invents Act John Villasenor The Leahy-Smith America Invents Act (AIA) approved in September

More information

AGREEMENT BETWEEN OWNERS OF PATENT RIGHTS

AGREEMENT BETWEEN OWNERS OF PATENT RIGHTS AGREEMENT BETWEEN OWNERS OF PATENT RIGHTS THIS AGREEMENT is made by and between the United States of America as represented by the Secretary of the Navy through the Naval Research Laboratory ( NRL or the

More information

Friend or Foe: the New Patent Challenge Procedures at the Patent Trial and Appeal Board

Friend or Foe: the New Patent Challenge Procedures at the Patent Trial and Appeal Board Friend or Foe: the New Patent Challenge Procedures at the Patent Trial and Appeal Board Asserting rights are no longer the province of pencil-pushing technology companies. Many businesses, big and small

More information

AUSTRALIA Patents Act 1990 Compilation date: 24 February 2017 Includes amendments up to: Act No. 61, 2016 Registered: 27 February 2017

AUSTRALIA Patents Act 1990 Compilation date: 24 February 2017 Includes amendments up to: Act No. 61, 2016 Registered: 27 February 2017 AUSTRALIA Patents Act 1990 Compilation date: 24 February 2017 Includes amendments up to: Act No. 61, 2016 Registered: 27 February 2017 TABLE OF CONTENTS Chapter 1. Introductory 1 Short title 2 Commencement

More information

After Final Practice and Appeal

After Final Practice and Appeal July 15, 2016 Steven M. Jensen, Member Why is a Final Rejection Important? Substantive prosecution is closed Filing a response to a Final Office Action does not stop the time for responding Application

More information

Patents. What is a Patent? 11/16/2017. The Decision Between Patent and Trade Secret Protection

Patents. What is a Patent? 11/16/2017. The Decision Between Patent and Trade Secret Protection The Decision Between Patent and Trade Secret Protection November 2017 John J. O Malley Ryan W. O Donnell vklaw.com 1 Patents vklaw.com 2 What is a Patent? A right to exclude others from making, using,

More information