America Invents Act: Patent Reform
|
|
- Matthew Potter
- 5 years ago
- Views:
Transcription
1 America Invents Act: Patent Reform Gunnar Leinberg, Nicholas Gallo, and Gerald Gibbs LeClairRyan December and
2 America Invents Act: Patent Reform Our presentation is available at: Patent-Reform 2
3 AIA: Patent Reform From First-to-Invent to First-to-File Pre- and Post-Issuance Proceedings Litigation Issues Additional provisions 3
4 From First-to-Invent to First-to- File 4
5 From First-to-Invent to First-to-File First-Inventor-to-File? Effective Dates Definition of Effective filing date Examples of Which law applies? Examples of Who gets the Patent? Recommendations New definition of Prior Art Category A Category B Examples CREATE Act Recommendations 5
6 What is First-to-File? 6
7 First to File: Effective Dates First to file provisions effective March 16, 2013 Current first to invent laws will continue to apply for roughly another 23 years Applicable law depends on whether or not an application or patent contains only claims having an effective filing date before March 16,
8 First to File: Effective Filing Dates Effective filing date 35 U.S.C. 100(i)(1) The actual filing date of the patent application containing a claim to the invention The filing date of the earliest application for which a patent or application is entitled to a right of priority 8
9 First to File vs. First to Invent: Which Laws Apply? The new first to file laws apply to any application or patent that contains or contained at any time: a claim that has an effective filing date that is on or after March 16, 2013; or a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim 9
10 First to File vs. First to Invent: Example #1 December 9, year March 16, 2013 Current laws apply for life of Formal Provisional application Formal application Cont/Div application Current laws apply for life of Cont/Div Provisional application March 16, year Formal application w/ all claims supported by provisional Cont/Div application Current laws apply for life of Formal Current laws apply for life of Cont/Div 10
11 First to File vs. First to Invent: Example #2 March 16, 2013 New laws apply for life of Formal Provisional application 1 year Formal application w/ at least one claim not supported by provisional Cont/Div application New laws apply for life of Cont/Div 11
12 First to File vs. First to Invent: Example #4 March 16, 2013 Current laws apply for life of Formal Provisional application 1 year Formal application w/ all claims supported by provisional Cont/Div application w/ at least one claim not supported by provisional New laws apply for life of Cont/Div 12
13 Who gets the patent? F.T.I provision Patent UNIVERSITY A: First to invent is entitled to the Patent (interference) 13
14 Who gets the patent? F.T.F provision UNIVERSITY B Patent UNIVERSITY B: Wins race to the patent office (no interference) 14
15 Who gets the patent? F.T.F provision UNIVERSITY A: Files PROVISIONAL based on an enabling disclosure at an academic conference September 2013 UNIVERSITY B 15
16 Recommendations Educate researchers, staff, and students about the rules in the new law regarding disclosure and patentability File provisional patent applications (early and often), which offer advantages including preservation of foreign patent rights Avoid minimal disclosure provisional applications 16
17 Definitions of Prior Art 35 U.S.C. 102 Current laws define seven categories of prior art Several categories are defined relative to date of invention Permits removal of prior art with inventor declaration Provides for interferences New laws define two categories of prior art Both are relevant to effective filing date Narrow exceptions to both categories 17
18 First-to-File Category A Publicly-Available Prior Art Patents, printed publications, public use, on sale, or otherwise available to the public Available before the effective filing date Exceptions 1 Year Grace Period Disclosures made by the inventor Disclosures made by others if the subject matter was publicly disclosed by the inventor first By the inventor includes by one who obtained the subject matter from the inventor (e.g., stolen work) Unclear what activity is encompassed by disclosure (e.g., offer for sale? prior public use?) 18
19 First-to-File Category B Secret Prior Art U.S. Patents and patent application publications are effective as prior art as of their effective filing date (If also published before the filing date, it is Category A prior art) Exceptions Subject matter was obtained from the inventor Subject matter was publicly disclosed by the inventor before the prior art s effective filing date Commonly owned on or before the inventor s effective filing date 19
20 Definitions of Prior Art (cont.) < 1 year B s Publication of invention Applicant A Applicant B Example Removing prior art (application) using prior publication B can remove A s application as prior art by relying on B s earlier publication B s earlier publication is prior art that will prevent A from obtaining a patent (even though A was the first to file) 20
21 CREATE Act maintained Cooperative Research and Technology Enhancement (CREATE) Act signed into law of 2004 to promote cooperative research among universities, the public sector, and private companies. Common ownership presumed under joint research agreement Subject matter disclosed by one party to agreement excluded as prior art against other party if Joint research agreement was in effect on or before the effective filing date of the claimed invention Disclosed subject matter is developed pursuant to agreement Claimed subject matter invented pursuant to agreement Specification amended to identify agreement 21
22 First-to-File Recommendations Before March 16, 2013 Consider developing appropriate filing/claiming strategies early in the pre-filing stage of a proposed invention Consider filing formal (non-provisional) application before March 16, 2013 After March 16, 2013 Closely watch claims in families that straddle the effective date For formal applications do not include claims directed to new subject matter Publish early, if no interest in patenting outside the US 22
23 A well thought out and strategic plan will win!! 23
24 Pre- and Post-Issuance Proceedings 24
25 PPIP After Patent Reform Existing Reissue Ex Parte and Inter Partes Reexamination Interferences Continuation Practice Modified Derivation Proceedings Inter Partes Review Preissuance Submissions New Post-Grant Review Supplemental Examination 25
26 PPIP After Patent Reform 26
27 PPIP Patent Owner Proceedings Continuation Practice Ex Parte Reexamination Reissue Supplemental Examination 27
28 PPIP Patent Owner Strategies Continuation Practice Broaden claims anytime Narrow claims anytime Ex parte Reexamination Narrow claims Obtain PTO evaluation of prior art s relevance Reissue Broaden claims (2 years) cannot recapture disclaimed subject matter Narrow claims Supplemental Examination Cure inequitable conduct Fix incorrect information 28
29 Patentee Broadening Claims 0 years 2 years Application Filed Patent Issues Reissue Filing Continuation Filed Second Continuation Filed Third Continuation Filed, etc. 29
30 Differences - Ex parte Reexamination and Reissue Ex parte Reexamination substantial new question of patentability raised by the prior art presented in the request initiated by the patent owner or a third party Reissue the patent is, through error without a deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent. 35 U.S.C. 251 only initiated by the patent owner 30
31 Supplemental Examination (SE) 31
32 Supplemental Examination (SE) Have PTO consider, reconsider, or correct information Any information Any basis SE Certificate: Substantial new question of patentability? Yes Ex Parte Rexam ordered No done Cure inequitable conduct No unenforceability based on information (re)considered/ corrected during SE unless Unenforceability is asserted before SE request is filed or SE (and any resulting Ex Parte Rexam) is not concluded before patentee brings enforcement action Available Sept 16, 2012 Applies to all patents 32
33 Patentee Overcoming Validity/ Enforceability Issues * Reissue Filing Application Filed Patent Issues A Ex Parte Reexam Filing SE (not curative) B SE (not curative) C SE (curative) * = Potentially Invalidating Reference Unenforceability Asserted Enforcement Action 33
34 PPIP Patent Challenger Proceedings Preissuance Submissions Ex Parte Reexamination Post-Grant Review Inter Partes Review 34
35 Preissuance Submissions 35
36 Preissuance Submissions Submit art in pending applications Patents and printed publications Of potential relevance to examination Provide concise description of the asserted relevance Patent challenger can remain anonymous Submit on or before allowance and by later of first office action or 6 months after publication of the application Effective Sept 16, 2012 Applies to all applications 36
37 Post-Grant Review (PGR) 37
38 Post-Grant Review (PGR) Anticipation, obviousness, 112 issues (enablement, written description, indefiniteness), and reissue irregularities Any information Initiated by the PTO if, "the information presented in the petition, if not rebutted, would demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable Effective Sept 16, 2012 Generally applies to all patents to which new prior art rules apply 38
39 PGR Key Procedural Considerations Petition Identify challenged claims and grounds for challenge Supporting evidence (cited art, expert declarations, etc.) Challenger cannot remain anonymous Deadline: Within 9 months from issuance Validity of the patent evaluated under the preponderance of the evidence standard Discovery available (e.g., witness depositions) Initial review by the Board Final decision within one year (limited exceptions) 39
40 PGR Effect on Other Proceedings PTO proceedings PTO can stay, transfer, consolidate, or terminate proceedings involving the same patent Civil actions challenging validity Actions brought by the same challenger Already filed: Cannot request PGR Later filed: Civil action automatically stayed Counterclaims don t count 40
41 PGR Estoppel 41
42 PGR Estoppel Cannot raise an issue challenger raised or reasonably could have raised in PGR Proceedings PTO: Cannot request or maintain another proceeding Civil Action/ITC Proceeding Cannot assert invalidity Applicability Only if PGR resulted in a final decision Only to challengers not released before the final decision Only to challenged claims 42
43 PGR Business Method Patents 43
44 Post-Grant Review (PGR) Business Method Patents Business method patent claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions (often USPTO Class 705) Effective period for this transitional post-grant review is eight years from enactment 44
45 Inter Partes Review (IPR) 45
46 Inter Partes Review (IPR) Replaces Inter Partes Reexamination Limited to anticipation or obviousness Limited to patents and printed publications Reasonable likelihood that a challenged claim is unpatentable Effective Sept 16, 2012 Generally applies to all patents 46
47 IPR Key Procedural Considerations Petition Identify challenged claims and grounds for challenge Supporting evidence (cited art, expert declarations, etc.) Challenger cannot remain anonymous Deadline: Anytime 9 months after issuance Discovery available (e.g., witness depositions) Initial review by the Board Final decision within one year (limited exceptions) 47
48 IPR Effect on Other Proceedings PTO proceedings PTO can stay, transfer, consolidate, or terminate involving the same patent Civil actions challenging validity Actions brought by the same challenger Already filed: Cannot request IPR Later filed: Civil action automatically stayed Counterclaims don t count 48
49 IPR Estoppel 49
50 IPR Estoppel Cannot raise an issue challenger raised or reasonably could have raised in IPR Proceedings PTO: Cannot request or maintain another proceeding Civil Action/ITC Proceeding Cannot assert invalidity Applicability Only if IPR resulted in a final decision Only to challengers not released before the final decision Only to challenged claims 50
51 Patent Challengers Validity Challenge pre-september 16, 2012 Formal Application Filed U.S. Patent Issues Allowance Inter partes reexamination Ex parte reexamination 51
52 Patent Challengers Validity Challenge post-september 16, 2012 Formal Application Filed U.S. Patent Issues 9 months Allowance Post-grant review Preissuance submissions by later of first rejection or 6 months after publication Inter partes review Ex parte reexamination 52
53 Patent Challenger Strategies PS EPR PGR IPR Participation Limited Limited Full Full Anonymous? Y Y N N Estoppel? N N Y Y Standard Lowest: of potential relevance Low: substantial new question of patentability Higher: more likely than not Highest: reasonable likelihood Basis Patents and printed publications Patents and printed publications Any information Patents and printed publications Applicability All applications All patents Only patents to which first-to-file rules apply All patents Other Considerations Preemptive No deadline Can raise 112 Must file within 9 months Cannot raise 112 No deadline (on the back end) 53
54 Inventorship Dispute Proceedings 54
55 Inventorship Dispute Proceedings Today Interference Resolve priority contests Can also challenge validity, including inventorship Future Derivation proceedings Resolve inventorship disputes Cannot otherwise challenge validity or priority 55
56 Derivation Proceedings 56
57 Derivation Proceedings Party alleging derivation must prove prior conception and communication to other party Instituted in PTO by applicant or in district court by later patentee File petition within 1 year from publication of application or grant of patent Effective Mar 16, 2013 Generally applies to all applications to which new prior art rules apply 57
58 Interferences Generally 58
59 Interferences Generally Procedures are unchanged Applicability depends on filing date and claiming strategy Some patents/applications will be subject to all current first-to-invent laws Some patents/applications will be subject to all new first-to-file laws Some patents/applications will be subject to a mixture of first-to-invent and first-to-file 59
60 Interferences Applicability New first-to-file laws apply to all patents and applications that ever contain: a claim with an effective filing date on or after March 16, 2013 or a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim Current 35 U.S.C. 102(g), 135, and 291 continue to apply to all patents and applications that ever contain: a claim with an effective filing date before March 16, 2013 or a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim Including patents and applications to which first-to-file laws apply 60
61 Litigation Issues 61
62 Litigation Issues False and virtual marking Joinder of multiple defendants Prior user rights Advice of counsel Best mode requirement Recommendations 62
63 Litigation Issues Marking, 35 U.S.C. 287(a) and 292 False marking Legal standing in false marking cases is now limited to persons who have suffered competitive injury It is not false marking to continue marking after patent expiration, assuming patent once covered the product Virtual marking Products may be marked with a website address that provides the applicable patents May reduce costs particularly benefiting cost-conscious and/or small companies Effective Sept 16, 2011 Applies to all pending and future cases 63
64 Litigation Issues Joinder, 35 U.S.C. 299 Plaintiffs may no longer join multiple accused infringers in one action unless the claims arise out of the same transactions and are based on common questions of fact Same patent at issue is insufficient, alone, to meet the requirements Increases effort required to bring suits against multiple parties Transfer may be easier, number of filings in DE may increase Effective Sept 16, 2011 Applies to all civil actions commenced on/after Sept 16,
65 Litigation Issues Prior User Rights, 35 U.S.C. 273(b)(6) Prior user rights defense extended to all subject matter if: Commercially used continuously at least one year before the earlier of; The asserted patent s effective filing date; or Public disclosure of the invention covered by the asserted patent Defense not available if the subject matter was derived from patent holder Does not invalidate a patent, merely a personal defense Strengthens trade secret protection Clear and convincing evidence is a strong burden Effective Sept 16, 2011 Applies to all patents issued on/after Sept 16,
66 Litigation Issues Prior User Rights, 35 U.S.C. 273(b)(6) University-specific provisions: Use of subject matter by a non-profit research laboratory or university shall be deemed to be a commercial use Defense is not available if a university or a tech transfer office is the patent holder 66
67 Litigation Issues Advice of Counsel, 35 U.S.C. 298 Intent of infringer is a relevant consideration for a finding of willful infringement or inducement of another to infringe Failure to obtain an opinion of counsel or to disclose an opinion of counsel may not be used to prove: Willful infringement (codifying In re Seagate); or Induced infringement (overruling Broadcom v. Qualcomm) There is no affirmative duty to seek advice of counsel regarding potential infringement However, there may be good business reasons to do so in many circumstances Effective Sept 16, 2012 Applies to all patents issued on/after Sept 16,
68 Litigation Issues Best Mode Requirement The failure to disclose the best mode in an application for patent cannot be a basis for invalidating an issued patent Best practice is still to contemplate the best mode of practicing an invention and ensure its inclusion in every patent application PTO rejections can still be made but the PTO is not positioned to reject claims on this basis May still be relevant in post-grant procedure or an unclean hands defense May be related to the enablement requirement in some instances Laws are subject to change Effective Sept 16, 2011 Applies to all proceedings commenced on/after Sept 16,
69 Litigation Issues Recommendations Continue to mark all products, consider leveraging website Consider moving to separate/transfer the action when one of several defendants Less risk of infringement in maintaining process as a trade secret Maintain accurate and thorough records Continue to receive advice of counsel, when appropriate Continue to consider and disclose the best mode of practicing an invention 69
70 Additional Provisions 70
71 USPTO Fee Provisions Fee-setting authority Director of USPTO is authorized to set or adjust fees As of September 26, 2011, a surcharge of 15% for most fees went into effect Accelerated examination is available guaranteeing final disposition within one year for a $4800 fee Fee diversion Reserve Fund was created to provide a sequestered account for excess USPTO revenue Funds will be released to the USPTO only [t]o the extent and in the amounts provided in appropriations Acts 71
72 USPTO Fee Provisions Micro Entity, 35 U.S.C. 123 Qualified entities receive a 75% reduction in fees University-specific provision: A micro entity shall include an applicant who certifies that: (1) the applicant s employer, from which the applicant obtains the majority of the applicant s income, is an institution of higher education; or (2) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular applications to such an institution of higher education. Effective Sept 16, 2011 Applies to all cases 72
73 Filing Formalities Electronic filing incentive $400 additional fee for each application not filed by electronic means Excludes design, plant, and provisional applications Execution of assignment must occur subsequent to execution of other formal papers in order to avoid fee Filing by Other than Inventor Assignees can now apply for a U.S. patent without a petition and associated fee Effective Nov 15, 2011 Applies to all new applications except provisional, design, and plant 73
74 THANK YOU Gunnar Leinberg, Nicholas Gallo, and Gerald Gibbs
75 For any follow-up questions after this presentation please contact: RIT: William Bond at or LeClairRyan: Gunnar Leinberg at or
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 informationAmerica 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 informationThe 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 informationPatent 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 informationTECHNOLOGY & 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 informationPresented 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 informationAmerica 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 informationU.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 informationConsiderations 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 informationAmerica 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 informationNewly 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 informationUSPTO 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 informationAMERICA INVENTS ACT. Changes to Patent Law. Devan Padmanabhan Shareholder, Winthrop & Weinstine
AMERICA INVENTS ACT Changes to Patent Law Devan Padmanabhan Shareholder, Winthrop & Weinstine American Invents Act of 2011 Enacted on September 16, 2011 Effective date for most provisions was September
More informationPolicies 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 informationBCLT Back to School: The New Patent Law Explained (Post-Grant Procedures) Stuart P. Meyer
BCLT Back to School: The New Patent Law Explained (Post-Grant Procedures) Stuart P. Meyer Agenda Overview of AIA Post-Grant Approach More Lenses on Patents After Issuance Section 6 Post-Grant Review Proceedings
More informationStrategic Use of Post-Grant Proceedings In Light of Patent Reform
Strategic Use of Post-Grant Proceedings In Light of Patent Reform October 11, 2011 The Leahy-Smith America Invents Act U.S. House of Representatives passed H.R. 1249 (technical name of the bill) on June
More informationFebruary, 2010 Patent Reform Legislative Update 1
02 14 2011 February, 2010 Patent Reform Legislative Update 1 The Patent Law Reform Act of 2011, based on the Managers Amendment version of S. 515 in the 11 th Congress, was introduced as S. 23 on January
More informationAmerica 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 informationCORRECTION 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 informationCongress Passes Historic Patent Reform Legislation
Congress Passes Historic Patent Reform Legislation America Invents Act Transitions U.S. Patent System from a First-to-Invent to First-Inventor-to-File System, Overhauls Post-Issue Review Proceedings and
More informationSTATUS 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 informationThe America Invents Act: Key Provisions Affecting Inventors, Patent Owners, Accused Infringers and Attorneys
The America Invents Act: Key Provisions Affecting Inventors, Patent Owners, Accused Infringers and Attorneys James Morando, Jeff Fisher and Alex Reese Farella Braun + Martel LLP After many years of debate,
More informationJuly 12, NPE Patent Litigation. The AIA s Impact on. Chris Marchese. Mike Amon
The AIA s Impact on NPE Patent Litigation Chris Marchese Mike Amon July 12, 2012 What is an NPE? Non Practicing Entity (aka patent troll ) Entity that does not make products Thus does not practice its
More information2011 Foley & Lardner LLP Attorney Advertising Prior results do not guarantee a similar outcome Models used are not clients but may be representative
2011 Foley & Lardner LLP Attorney Advertising Prior results do not guarantee a similar outcome Models used are not clients but may be representative of clients 321 N. Clark Street, Suite 2800, Chicago,
More information10 THINGS YOU NEED TO KNOW ABOUT PATENT REFORM. W. Edward Ramage Chair, IP Group Baker Donelson
10 THINGS YOU NEED TO KNOW ABOUT PATENT REFORM W. Edward Ramage Chair, IP Group Baker Donelson eramage@bakerdonelson.com Patent Reform Signed by President Obama on Sept. 16 th Melange of changes (major
More informationAmerica Invents Act September 19, Matt Rainey Vice President/Chief IP Policy Counsel
America Invents Act September 19, 2011 Matt Rainey Vice President/Chief IP Policy Counsel Leahy-Smith America Invents Act (AIA) Text is available at: http://www.gpo.gov/fdsys/pkg/bills-112hr1249enr/pdf/bills-112hr1249enr.pdf
More informationAmerica Invents Act: The Practical Effects of the New USPTO Post-Grant Proceedings
PRESENTATION TITLE America Invents Act: The Practical Effects of the New USPTO Post-Grant Proceedings Wab Kadaba February 8, 2012 1 America Invents Act of 2011 Signed by President Obama on Sept. 16, 2011
More informationPre-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 information2012 Winston & Strawn LLP
2012 Winston & Strawn LLP How the America Invents Act s Post-Issuance Proceedings Influence Litigation Strategy Brought to you by Winston & Strawn s Intellectual Property practice group 2012 Winston &
More informationChanges 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 informationPOST-GRANT REVIEW UNDER THE AMERICA INVENTS ACT GERARD F. DIEBNER TANNENBAUM, HELPERN, SYRACUSE & HIRSCHTRITT LLP
POST-GRANT REVIEW UNDER THE AMERICA INVENTS ACT GERARD F. DIEBNER TANNENBAUM, HELPERN, SYRACUSE & HIRSCHTRITT LLP TABLE OF CONTENTS Page I. Introduction... 1 II. Post-Grant Review Proceedings... 1 A. Inter-Partes
More informationPatent 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 informationCorrection 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 informationPROCEDURES 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 informationPATENT 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 informationK&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 informationPart V: Derivation & Post Grant Review
Strategic Considerations in View of the USPTO s Proposed Rules Part V: Derivation & Post Grant Review Presented By: Karl Renner, Sam Woodley & Irene Hudson Fish & Richardson AIA Webinar Series Date March
More informationIntroduction. 1 These materials are public information and have been prepared solely for educational and entertainment purposes to contribute
Introduction Patent Prosecution Under The AIA William R. Childs, Ph.D., J.D. Drinker Biddle & Reath LLP 1500 K Street, N.W. Washington, DC 20005-1209 (202) 230-5140 phone (202) 842-8465 fax William.Childs@dbr.com
More informationAmerica Invents Act (AIA) Post-Grant Proceedings. Jeffrey S. Bergman Kevin Kuelbs Laura Witbeck
America Invents Act (AIA) Post-Grant Proceedings Jeffrey S. Bergman Kevin Kuelbs Laura Witbeck What is included in Post-Grant Reform in the U.S.? Some current procedures are modified and some new ones
More informationImpact of the Patent Reform Bill
G. Hopkins Guy, III of Orrick Herrington & Sutcliffe LLP Speaker 3: 1 Impact of the Patent Reform Bill G. Hopkins Guy, Esq. Patent Reform Bill: Current Status Passed House 9/7/07 Passed Senate Judiciary
More informationPOST GRANT REVIEW PROCEEDINGS IN THE PTO STEPHEN G. KUNIN PARTNER
POST GRANT REVIEW PROCEEDINGS IN THE PTO STEPHEN G. KUNIN PARTNER PATENT TRIAL AND APPEAL BOARD (PTAB) COMPOSITION DIRECTOR DEPUTY DIRECTOR COMMISSIONER FOR PATENTS COMMISSIONER FOR TRADEMARKS APJ 2 PATENT
More informationThe 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 informationPost-Grant Patent Proceedings
Post-Grant Patent Proceedings The Leahy-Smith America Invents Act (AIA), enacted in 2011, established new post-grant proceedings available on or after September 16, 2012, for challenging the validity of
More informationPATENT REFORM. Did Patent Reform Level the Playing Field for Foreign Entities? 1 Leahy-Smith America Invents Act, Pub. L. No.
Reproduced with permission from BNA s Patent, Trademark & Copyright Journal, 82 PTCJ 789, 10/07/2011. Copyright 2011 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com PATENT REFORM
More informationAmerica Invents Act Implementing Rules. September 2012
America Invents Act Implementing Rules September 2012 AIA Rules (Part 2) Post Grant Review Inter Partes Review Section 18 Proceedings Derivation Proceedings Practice before the PTAB 2 Post Grant Review
More informationU.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 informationLatham & Watkins Litigation Department
Number 1241 September 28, 2011 Client Alert Latham & Watkins Litigation Department Practical Implications of the America Invents Act on United States Patent Litigation This Client Alert addresses the key
More informationT he landscape for patent disputes is changing rapidly.
BNA s Patent, Trademark & Copyright Journal Reproduced with permission from BNA s Patent, Trademark & Copyright Journal, 84 PTCJ 828, 09/14/2012. Copyright 2012 by The Bureau of National Affairs, Inc.
More informationAIA Post-Grant Implementation Begins - Is Your Business Strategy Aligned? August 27, A Web conference hosted by Foley & Lardner LLP
AIA Post-Grant Implementation Begins - Is Your Business Strategy Aligned? August 27, 2012 A Web conference hosted by Foley & Lardner LLP Attorney Advertising Prior results do not guarantee a similar outcome
More informationPost-Grant Proceedings at the Patent Office After Passage of the America Invents Act
Post-Grant Proceedings at the Patent Office After Passage of the America Invents Act Patrick A. Doody, Partner Northern Virginia Office America Invents Act (AIA) S 23 Senate Verison Passed the Senate in
More informationPatent 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 informationIP CONCLAVE 2010, MUMBAI STRATEGIES WITH US PATENT PRACTICE NAREN THAPPETA US PATENT ATTORNEY & INDIA PATENT AGENT BANGALORE, INDIA
IP CONCLAVE 2010, MUMBAI STRATEGIES WITH US PATENT PRACTICE NAREN THAPPETA US PATENT ATTORNEY & INDIA PATENT AGENT BANGALORE, INDIA www.iphorizons.com Not legal Advise! Broad Organization A. Pre filing
More informationIl 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 informationUSPTO Post Grant Proceedings
Post-Grant Proceedings Are You Ready to Practice Before the New PTAB? Bryan K. Wheelock January 30, 2013 USPTO Post Grant Proceedings The AIA created three post grant proceedings for challenging the validity
More informationPatent Reform Act of 2007
July 2007 Patent Reform Act of 2007 By Cynthia Lopez Beverage Intellectual Property Bulletin, July 27, 2007 On July 18, 2007 and July 20, 2007, the House Judiciary Committee and the Senate Judiciary Committee,
More informationSENATE PASSES PATENT REFORM BILL
SENATE PASSES PATENT REFORM BILL CLIENT MEMORANDUM On Tuesday, March 8, the United States Senate voted 95-to-5 to adopt legislation aimed at reforming the country s patent laws. The America Invents Act
More informationIPRs and CBMs : The Good, the Bad, and the Unknown. Seattle Intellectual Property Inn of Court A Presentation by Group 6 April 17, 2014
IPRs and CBMs : The Good, the Bad, and the Unknown Seattle Intellectual Property Inn of Court A Presentation by Group 6 April 17, 2014 The Governing Statutes 35 U.S.C. 311(a) In General. Subject to the
More informationSEC. 6. AIA: POST-GRANT REVIEW PROCEEDINGS
SEC. 6. AIA: POST-GRANT REVIEW PROCEEDINGS (a) INTER PARTES REVIEW. Chapter 31 of title 35, United States Code, is amended to read as follows: Sec. 3 1 1. I n t e r p a r t e s r e v i e w. 3 1 2. P e
More informationNew 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 informationThe New Post-AIA World
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP The New Post-AIA World New Ways to Challenge a US Patent or Patent Application Erika Arner FICPI ABC 2013 Conference New Orleans, LA 0 Third Party Patent
More informationGlobal IP Management Hot-Topic Round-Up
Global IP Management Hot-Topic Round-Up 1 Panelist Dr. Rouget F. (Ric) Henschel, Partner, Chemical, Biotechnology & Pharmaceutical Practice, and Co-Chair, Life Sciences Industry Team, Foley & Lardner Sven
More informationTHE 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 informationUnited States Patent and Trademark Office. Patent Trial and Appeal Board
United States Patent and Trademark Office Patent Trial and Appeal Board PTAB Organization Statutory Members of the Board The Board is created by statute (35 U.S.C. 6). 35 U.S.C. 6(a) provides: There shall
More informationPATENT 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 informationIntersection of Automotive, Aerospace, & Transportation: Practical Strategies for Resolving IP Conflicts in Multi-Supplier Sourcing
Intersection of Automotive, Aerospace, & Transportation: Practical Strategies for Resolving IP Conflicts in Multi-Supplier Sourcing May 28, 2014 R. David Donoghue Holland & Knight LLP 131 South Dearborn
More informationThese 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 informationThe use of prosecution history in post-grant patent proceedings
Question Q229 National Group: United States Title: The use of prosecution history in post-grant patent proceedings Contributors: ADAMO, Kenneth R. ARROYO, Blas ASHER, Robert BAIN, Joseph MEUNIER, Andrew
More informationFriend 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 informationUSPTO Post Grant Trial Practice
Bill Meunier, Member Michael Newman, Member Peter Cuomo, Of Counsel July 18, 2016 Basics: Nomenclature "IPRs" = Inter partes review proceedings "PGRs" = Post-grant review proceedings "CBMs" = Post-grant
More informationChapter 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 informationSughrue Mion, PLLC Washington, Tokyo, San Diego, Silicon Valley 7/2/2012
Sughrue Mion, PLLC Washington, Tokyo, San Diego, Silicon Valley www.sughrue.com This presentation is for educational purposes only, and it does not provide legal advice or comment on the application of
More informationInter Partes and Covered Business Method Reviews A Reality Check
Inter Partes and Covered Business Method Reviews A Reality Check Wab Kadaba Chris Durkee January 8, 2014 2013 Kilpatrick Townsend Agenda I. IPR / CBM Overview II. Current IPR / CBM Filings III. Lessons
More informationPatents 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 informationAccelerated 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 informationChanges 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 informationReexamination, Reissue, Certificate of Correction and New America Invents Act Proceedings: Substantive and Strategic Overview
Reexamination, Reissue, Certificate of Correction and New America Invents Act Proceedings: Substantive and Strategic Overview Eugene T. Perez, Esq. Birch, Stewart, Kolasch & Birch, LLP February 3, 2012
More informationPost-Grant Proceedings in the USPTO
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Post-Grant Proceedings in the USPTO Erika Arner Advanced Patent Law Institute, Palo Alto, CA December 12, 2013 0 Post-Grant Proceedings New AIA proceedings
More informationPatent 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 informationChemical Patent Practice. Course Syllabus
Chemical Patent Practice Course Syllabus I. INTRODUCTION TO CHEMICAL PATENT PRACTICE: SETTING THE STAGE FOR DISCUSSING STRATEGIES FOR REDUCING RISK OF UNENFORCEABILITY AND ENHANCING CHANCES OF INFRINGEMENT,
More informationPatent Resources Group. Chemical Patent Practice. Course Syllabus
Patent Resources Group Chemical Patent Practice Course Syllabus I. INTRODUCTION II. USER GUIDE: Overview of America Invents Act Changes with Respect to Prior Art III. DRAFTING CHEMICAL CLAIMS AND SPECIFICATION
More informationA New World (Patent) Order. How the US Patent Reform Act (AIA) Compares with European Patent Regulations
A New World (Patent) Order How the US Patent Reform Act (AIA) Compares with European Patent Regulations Peter Thurlow & Andreas Holzwarth-Rochford VPP-Bezirksgruppe Mitte October 10, 2012 AIA Compared
More informationPatent Resources Group Federal Circuit Law Course Syllabus
I. Novelty and Loss of Right to a Patent II. III. IV. A. Anticipation 1. Court Review of PTO Decisions 2. Claim Construction 3. Anticipation Shown Through Inherency 4. Single Reference Rule Incorporation
More informationUSPTO 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 informationAIA Post-Grant Proceedings: Lessons Learned from PTAB and Federal Circuit Decisions
AIA Post-Grant Proceedings: Lessons Learned from PTAB and Federal Circuit Decisions Christopher Persaud, J.D., M.B.A. Patent Agent/Consultant Patent Possibilities Tyler McAllister, J.D. Attorney at Law
More informationVenue 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 informationPATENTING: A Guidebook For Patenting in a Post-America Invents Act World. by Beth E. Arnold. Foley Hoag ebook
PATENTING: A GUIDEBOOK FOR PATENTING IN A POST-AMERICA INVENTS ACT WORLD PATENTING: A Guidebook For Patenting in a Post-America Invents Act World by Beth E. Arnold Foley Hoag ebook 1 Contents Preface...1
More informationPost-Grant Patent Practice: Review & Reexamination Course Syllabus
Post-Grant Patent Practice: Review & Reexamination Course Syllabus I. CHALLENGING PATENT VALIDITY AT THE PTO VIA POST-GRANT REVIEW, INTER PARTES REVIEW, BUSINESS METHOD PATENT REVIEW, AND REEXAMINATION
More informationPost Grant Review. Strategy. Nathan Frederick Director, IP Services
Post Grant Review Strategy Nathan Frederick Director, IP Services Cardinal Intellectual Property 1603 Orrington Avenue, 20th Floor Evanston, IL 60201 Phone: 847.905.7122 Fax: 847.905.7123 Email: mail@cardinal-ip.com
More informationChapter 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 informationPATENTING: A Guidebook For Patenting in a Post-America Invents Act World. by Beth E. Arnold. Foley Hoag ebook
PATENTING: A GUIDEBOOK FOR PATENTING IN A POST-AMERICA INVENTS ACT WORLD PATENTING: A Guidebook For Patenting in a Post-America Invents Act World by Beth E. Arnold Foley Hoag ebook 1 Contents Preface...1
More informationPart 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 informationPTAB Trial Proceedings and Parallel Litigation: Impact, Strategy & Consequences
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP PTAB Trial Proceedings and Parallel Litigation: Impact, Strategy & Consequences 2015 National CLE Conference Friday, January 9, 2015 Presented by Denise
More informationPATENT, TRADEMARK & COPYRIGHT!
A BNA s PATENT, TRADEMARK & COPYRIGHT! JOURNAL Reproduced with permission from BNA s Patent, Trademark & Copyright Journal, 81 PTCJ 36, 11/05/2010. Copyright 2010 by The Bureau of National Affairs, Inc.
More informationPATENT QUALITY: WHAT WOULD A ZERO- BASED PATENTING PARADIGM LOOK LIKE?
PATENT QUALITY: WHAT WOULD A ZERO- BASED PATENTING PARADIGM LOOK LIKE? File, Examine and Issue Patents in One Year Leverage Applicant Disclosures Optimize Quality/Productivity Robert A. Armitage Consultant,
More informationInnovation Act (H.R. 9) and PATENT Act (S. 1137): A Comparison of Key Provisions
Innovation Act (H.R. 9) and PATENT Act (S. 1137): A Comparison of Key Provisions TOPIC Innovation Act H.R. 9 PATENT Act S. 1137 Post Grant Review ( PGR ) Proceedings Claim Construction: Each patent claim
More informationChapter 1. Introduction
Chapter 1 Introduction 1:1 Evolution of the Leahy-Smith America Invents Act 1:1.1 Recommendations for Patent System Reform [A] The FTC Report and NRC Report [B] Patent Reform Bills 1:1.2 The Patent Reform
More informationSPECIAL REPORT May 2018 SURPREME COURT FINDS USPTO S ADMINISTRATIVE PATENT TRIALS CONSTITUTIONAL AND SETS GROUND RULES FOR THEIR CONDUCT BY THE PTAB
SPECIAL REPORT May 2018 Spring 2017 SURPREME COURT FINDS USPTO S ADMINISTRATIVE PATENT TRIALS CONSTITUTIONAL AND SETS GROUND RULES FOR THEIR CONDUCT BY THE PTAB On April 24, 2018, the United State Supreme
More informationDynamic Drinkware, a Technical Trap for the Unwary
Yesterday in Dynamic Drinkware, LLC v. National Graphics, Inc., F.3d (Fed. Cir. 2015)(Lourie, J.)(and as reported in a note that day, attached), the court denied a patent-defeating effect to a United States
More information18-MONTHS POST-AIA: HOW HAS PATENT LITIGATION. Rebecca Hanovice, Akarsh Belagodu, Lauren Bruzzone and Clay Holloway
CHEAT SHEET Increased petitioner participation and evidence gathering throughout the AIA post-grant proceeding provides more incentive for petitioners to pursue patent office litigation. Decreased opportunities
More informationWhat is Post Grant Review?
An Overview of the New Post Grant Review Proceedings at the USPTO Michael Griggs, Boyle Fredrickson May 15, 2015 What is Post Grant Review? Trial proceedings at the USPTO created by the America Invents
More information