The America Invents Act (AIA) enacted the most significant changes to U.S. patent law in over 60 years. It transitions the U.S. to a first-inventor-to-file system to harmonize with global practices. New post-grant review procedures allow third parties to challenge weak patents before the Patent Trial and Appeal Board. The AIA also aims to improve patent quality by expanding the prior commercial use defense and prior art submissions during prosecution. Major changes under the AIA include limiting false patent marking suits and replacing interference proceedings with the new derivation proceeding.
Patent Law in 2014: Act fast or get left behindsteve_ritchey
A presentation on patent law fundamentals, the changes caused resulting from the America Invents Act, other topical patent law issues such as new developments on patentable subject matter, appellate review of claim constructions, and best practices
This document summarizes the key differences between the three main post-grant review procedures available at the USPTO: Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method (CBM) review. It outlines who can file each type of petition, the applicable validity grounds and standards, estoppel effects, and timelines. The document also provides an overview of the IPR process, including strategies for petitioners and patent owners, and considerations regarding expert testimony, motions to stay litigation, and evaluating claims to challenge.
Inter-Partes Review of Patents: The Case So Far (CLE)rimonlaw
This document discusses inter partes review (IPR) of patents. It begins with an overview of traditional options for challenging patents such as litigation and reexamination. It then provides details on IPR, including that it allows review of patent validity based on prior art under 102 and 103, has a faster timeline than litigation, and has resulted in over 1,000 claims being found unpatentable so far. However, it also notes risks such as claims being amended and estoppel preventing the same invalidity grounds from being raised again.
This document provides an overview of the changes to the U.S. patent system under the America Invents Act (AIA), including the transition to a first-to-file system. Key points include:
1) The U.S. patent system changed from a first-to-invent system to a first-to-file system, meaning the first inventor to file a patent application will receive the patent rather than the first inventor.
2) Derivation proceedings allow an applicant to challenge another applicant who derived an invention from them.
3) Practice pointers are provided to encourage diligence in filing patent applications, maintaining invention records, and considering provisional and defensive publication filings.
4)
John Callahan, partner in the Washington, D.C., law firm Sughrue Mion PLLC, provides a review of key aspects of successful practice before the PTAB – what do the statistics show and what does the PTAB require from a petitioner and patent owner.
The document summarizes key changes to patent law under the America Invents Act, including changing from a first-to-invent system to a first-inventor-to-file system. It discusses provisions around prior art exceptions, derivation proceedings, issues around the scope of prior art and inventor disclosures, and recommendations like filing early and considering pre-filing public disclosures.
America Invents Act: Recent Changes to US Patent Law and PracticeGary M. Myles, Ph.D.
The document summarizes changes brought by the America Invents Act to U.S. patent law and practice. Some key changes include transitioning from a first-to-invent system to a first-inventor-to-file system, expanding the definition of prior art, creating new post-grant review proceedings like post-grant review and inter partes review, expanding prior user rights, and changing treatment of errors in inventorship. The changes aim to harmonize the U.S. system with other countries and improve patent quality and challenge procedures.
A patent is a negative right that allows the patent holder to exclude others from making, using, selling, or importing the claimed invention in the country where the patent is granted. To obtain a patent, an invention must be novel, non-obvious, and adequately described in the patent application. There are various types of patent applications that can be filed, including provisional, utility, design, plant, and PCT applications. Requirements for patentability include novelty, non-obviousness, enablement, and best mode disclosure.
Patent Law in 2014: Act fast or get left behindsteve_ritchey
A presentation on patent law fundamentals, the changes caused resulting from the America Invents Act, other topical patent law issues such as new developments on patentable subject matter, appellate review of claim constructions, and best practices
This document summarizes the key differences between the three main post-grant review procedures available at the USPTO: Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method (CBM) review. It outlines who can file each type of petition, the applicable validity grounds and standards, estoppel effects, and timelines. The document also provides an overview of the IPR process, including strategies for petitioners and patent owners, and considerations regarding expert testimony, motions to stay litigation, and evaluating claims to challenge.
Inter-Partes Review of Patents: The Case So Far (CLE)rimonlaw
This document discusses inter partes review (IPR) of patents. It begins with an overview of traditional options for challenging patents such as litigation and reexamination. It then provides details on IPR, including that it allows review of patent validity based on prior art under 102 and 103, has a faster timeline than litigation, and has resulted in over 1,000 claims being found unpatentable so far. However, it also notes risks such as claims being amended and estoppel preventing the same invalidity grounds from being raised again.
This document provides an overview of the changes to the U.S. patent system under the America Invents Act (AIA), including the transition to a first-to-file system. Key points include:
1) The U.S. patent system changed from a first-to-invent system to a first-to-file system, meaning the first inventor to file a patent application will receive the patent rather than the first inventor.
2) Derivation proceedings allow an applicant to challenge another applicant who derived an invention from them.
3) Practice pointers are provided to encourage diligence in filing patent applications, maintaining invention records, and considering provisional and defensive publication filings.
4)
John Callahan, partner in the Washington, D.C., law firm Sughrue Mion PLLC, provides a review of key aspects of successful practice before the PTAB – what do the statistics show and what does the PTAB require from a petitioner and patent owner.
The document summarizes key changes to patent law under the America Invents Act, including changing from a first-to-invent system to a first-inventor-to-file system. It discusses provisions around prior art exceptions, derivation proceedings, issues around the scope of prior art and inventor disclosures, and recommendations like filing early and considering pre-filing public disclosures.
America Invents Act: Recent Changes to US Patent Law and PracticeGary M. Myles, Ph.D.
The document summarizes changes brought by the America Invents Act to U.S. patent law and practice. Some key changes include transitioning from a first-to-invent system to a first-inventor-to-file system, expanding the definition of prior art, creating new post-grant review proceedings like post-grant review and inter partes review, expanding prior user rights, and changing treatment of errors in inventorship. The changes aim to harmonize the U.S. system with other countries and improve patent quality and challenge procedures.
A patent is a negative right that allows the patent holder to exclude others from making, using, selling, or importing the claimed invention in the country where the patent is granted. To obtain a patent, an invention must be novel, non-obvious, and adequately described in the patent application. There are various types of patent applications that can be filed, including provisional, utility, design, plant, and PCT applications. Requirements for patentability include novelty, non-obviousness, enablement, and best mode disclosure.
The document provides an overview of patents and the patent process in the life sciences. It discusses what constitutes a patent, how to obtain a patent, and key considerations for patents related to biotechnology and pharmaceutical inventions. The summary covers the basic requirements for an invention to be patentable, including being useful, novel, non-obvious, and directed to eligible subject matter. It also outlines the patent application and review process.
The document provides an introduction to patent law, including:
1) A patent is a legal document issued by a government that grants the right to prohibit others from making, using, or selling a claimed invention for a limited time in exchange for publicly disclosing the invention details.
2) The purpose of patent law is to promote science and useful arts by securing exclusive rights to authors and inventors for limited times.
3) Inventors seek patent protection for both offensive and defensive strategies related to investment, revenue, market protection, and preventing competitor patents.
This document provides an overview of patent law and the patent filing process in India. It defines what a patent is, the criteria for patentability, and the key parts of a patent document. It then outlines the steps for filing a patent application in India, including publication, examination, responses to examination reports, and the opposition system. The overall summary is that a patent provides exclusive rights to an invention for a limited time, and the document explains the process and requirements for obtaining a patent in India.
The document provides an overview of the U.S. patent process from conception of an invention to filing a patent application. It discusses key steps and considerations including scientific research and discovery, disclosure to a technology transfer office, evaluation of patentability, drafting the application, and filing as a provisional or non-provisional application. Important dates, prior art, record keeping, evaluation factors, and application types and strategies are covered in detail.
The document summarizes key changes to patent law and procedures introduced by the America Invents Act (AIA). The goals of the AIA were to promote global patent harmonization, improve patent quality, provide more efficient challenges to patents, reduce unwarranted litigation costs, and reduce inconsistent damage awards. Major changes included moving from a first-to-invent to a first-to-file system, introducing new administrative review procedures like Post Grant Review and Inter Partes Review, limiting joinder rules to curb patent litigation abuse, providing prior user rights, and allowing virtual patent marking. The changes aimed to simplify the patent system and reduce litigation costs while improving patent quality.
The America Invents Act made significant changes to US patent law, including changing from a "first to invent" system to a "first inventor to file" system. It increased most patent fees by 15% and created new post-grant review proceedings like inter partes review and post grant review. The act also established provisions such as supplemental examination, micro entity status for reduced fees, and limitations to false marking claims. The changes modernized US patent law to better align with international standards.
Inventorship: Who should be listed as an inventor for a patent?Aurora Consulting
In the US especially, patents are granted to inventors. More often than not, that’s more than one person and the ideas themselves are fluid concepts that often evolve through many handoffs from initial conception through implementation and sometimes even throughout patent prosecution, but how do we determine who all should – and is legally required to be – named as an inventor?
In the constitutionally expressed interest of protecting inventors and the conception of their ideas, failure to include the right people can be a death sentence for a patent and grounds for invalidity.
Daniel Wright, Partnership Manager and Patent Strategist here at Aurora, leads a deep dive into the origins of inventorship, breaks down who is and isn’t eligible for inclusion as an inventor, and explains how improper inventorship could result in revoked patent rights.
Podcast: https://patentlystrategic.buzzsprout.com/1734511/9603758-inventorship-who-should-be-listed-as-an-inventor-for-a-patent
Blog post: https://www.aurorapatents.com/blog/new-podcast-inventorship
The document discusses the foundation of patent law. It covers the different types of patents including utility patents, design patents, and plant patents. It explains that a patent is a legal right granted by the government that allows the owner to prevent others from making, using, or selling the invention. It also outlines the requirements for an invention to be patentable, including that it must be useful, novel, and non-obvious. Finally, it discusses factors considered in determining if an invention is non-obvious like analogous prior art, the level of ordinary skill in the art, and secondary considerations.
This presentation addresses the why, what, and how to protect inventions from the vantage point of the early-stage, pre-financing, start-up company that is interested in patenting its inventions and developing an intellectual property portfolio that maximizes the company's valuation and sets it up for success during the intellectual property due diligence that accompanies financing rounds, corporate partnerships, commercialization, and merger and acquisition.
This document provides a brief overview of US utility patent law and the patenting process. It discusses the different types of patents including design, plant, and utility patents. It describes the basic patenting timeline including filing a provisional or non-provisional patent application and undergoing examination. Key concepts like patentability requirements of utility, novelty, and non-obviousness are introduced. Cost estimates and strategies for obtaining and enforcing a patent are also summarized.
Secret sales- Now a Bar to Obtaining a US Patent.Kevin E. Flynn
For about 8 years, there has been a belief that it was safe for a company to sell an item or offer to sell an item without first filing a patent application as long as the sale or offer for sale was under a non-disclosure agreement so the sale would be secret and not public. This month, the United States Supreme Court in a unanimous decision said NO in Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc.,
An overview of the changes to the patent laws for 49th Annual IP Conference of the Institute of Technology and Law at the Center for American and International Law in Plano, Texas on November 8, 2011
Presentation on the Patent Process in US
Contact Us for Intellectual Property Services
BananaIP Counsels
Regd Office
No.40,3rd Main Road,JC Industrial Estate,
Kanakapura Road,Bangalore – 560 062.
Email: contact@bananaip.com
Telephone: +91-80-26860414 /24/34
The document discusses patentability requirements in the US, including utility, novelty, and non-obviousness. It provides details on the types of subject matter that can be patented, conditions for novelty like anticipation and statutory bars, and considerations for non-obviousness. It also discusses the European patent regime and takes questions.
The document discusses various aspects of patent damages and infringement cases in India. It provides information on the types of patent disputes, forums for resolving disputes, types of infringement and remedies available. Some key points include:
- There are three types of patent infringement: direct, indirect, and contributory.
- Remedies for infringement include injunctions, accounts of profits, compensatory damages, and in some cases punitive damages.
- Calculating damages can involve determining lost profits or reasonable royalties based on factors like the Georgia-Pacific test.
- Indian courts have not established clear guidelines for calculating damages but look to decisions from other jurisdictions like the US.
Secret sales- Now a Bar to Obtaining a US Patent.Kevin E. Flynn
For about 8 years, there has been a belief that it was safe for a company to sell an item or offer to sell an item without first filing a patent application as long as the sale or offer for sale was under a non-disclosure agreement so the sale would be secret and not public. This month, the United States Supreme Court in a unanimous decision said NO in Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc.,
This document discusses intellectual property and patents in India. It provides information on:
- What intellectual property and patents are. Patents grant exclusive rights over inventions.
- Key aspects of Indian patent law and amendments over time to make it WTO compliant. Patents are now granted for 20 years and cover all fields of technology.
- Application process for patents in India, including filing requirements and examination process.
- Rights conferred on patent holders and ability to surrender or revoke patents on certain grounds.
This document provides an overview of the patent prosecution process. It defines patent prosecution as the interaction between an applicant and a patent office regarding a patent application or issued patent. The process involves pre-grant prosecution to negotiate for a patent grant, and post-grant prosecution on issues like amendments and oppositions. The document outlines the basic steps of pre-grant prosecution including preparing and filing an application, examination, appeals, and abandonment. Post-grant prosecution includes opposition and reissues. It also briefly describes related concepts like prior art, specifications, claims, and rejections/amendments. Finally, it notes that while the prosecution process seems straightforward, the Manual of Patent Examining Procedure contains over 3000 pages of evolving guidelines.
This document provides an overview of patent law and the patent filing procedure in India. It discusses what a patent is, the types of intellectual property, and the various legislations in India for protecting intellectual property rights. It then describes the different parts of a patent document, the criteria for patentability, and how to identify a potential patent. Finally, it outlines the patent filing process in India, including filing an application, publication, examination, and granting of a patent.
Besides formal patent applications, start-ups can also apply for provisional patent applications. Find out what it takes to have a pending patent for your invention.
This document summarizes Bill Freedman's presentation on major features of the Affordable Care Act that concern employers. It discusses provisions related to health insurance exchanges, employer and individual mandates, limits on cost sharing, reporting requirements, and other regulatory changes taking effect in 2014. The summary provides an overview of how the law affects employer-sponsored health plans.
Preparing for the Sunset - Unique Estate Planning Opportunities at the End of...Dinsmore & Shohl LLP
The document summarizes current estate planning techniques in light of changing tax laws and proposed changes. It discusses opportunities for married couples and single clients to make use of the large lifetime gift and estate tax exemptions. It also outlines proposals to limit valuation discounts, require minimum GRAT terms, limit GST exemption duration, and coordinate grantor trust income and transfer tax rules. The document is intended to help estate planning clients navigate the changing tax landscape.
The document provides an overview of patents and the patent process in the life sciences. It discusses what constitutes a patent, how to obtain a patent, and key considerations for patents related to biotechnology and pharmaceutical inventions. The summary covers the basic requirements for an invention to be patentable, including being useful, novel, non-obvious, and directed to eligible subject matter. It also outlines the patent application and review process.
The document provides an introduction to patent law, including:
1) A patent is a legal document issued by a government that grants the right to prohibit others from making, using, or selling a claimed invention for a limited time in exchange for publicly disclosing the invention details.
2) The purpose of patent law is to promote science and useful arts by securing exclusive rights to authors and inventors for limited times.
3) Inventors seek patent protection for both offensive and defensive strategies related to investment, revenue, market protection, and preventing competitor patents.
This document provides an overview of patent law and the patent filing process in India. It defines what a patent is, the criteria for patentability, and the key parts of a patent document. It then outlines the steps for filing a patent application in India, including publication, examination, responses to examination reports, and the opposition system. The overall summary is that a patent provides exclusive rights to an invention for a limited time, and the document explains the process and requirements for obtaining a patent in India.
The document provides an overview of the U.S. patent process from conception of an invention to filing a patent application. It discusses key steps and considerations including scientific research and discovery, disclosure to a technology transfer office, evaluation of patentability, drafting the application, and filing as a provisional or non-provisional application. Important dates, prior art, record keeping, evaluation factors, and application types and strategies are covered in detail.
The document summarizes key changes to patent law and procedures introduced by the America Invents Act (AIA). The goals of the AIA were to promote global patent harmonization, improve patent quality, provide more efficient challenges to patents, reduce unwarranted litigation costs, and reduce inconsistent damage awards. Major changes included moving from a first-to-invent to a first-to-file system, introducing new administrative review procedures like Post Grant Review and Inter Partes Review, limiting joinder rules to curb patent litigation abuse, providing prior user rights, and allowing virtual patent marking. The changes aimed to simplify the patent system and reduce litigation costs while improving patent quality.
The America Invents Act made significant changes to US patent law, including changing from a "first to invent" system to a "first inventor to file" system. It increased most patent fees by 15% and created new post-grant review proceedings like inter partes review and post grant review. The act also established provisions such as supplemental examination, micro entity status for reduced fees, and limitations to false marking claims. The changes modernized US patent law to better align with international standards.
Inventorship: Who should be listed as an inventor for a patent?Aurora Consulting
In the US especially, patents are granted to inventors. More often than not, that’s more than one person and the ideas themselves are fluid concepts that often evolve through many handoffs from initial conception through implementation and sometimes even throughout patent prosecution, but how do we determine who all should – and is legally required to be – named as an inventor?
In the constitutionally expressed interest of protecting inventors and the conception of their ideas, failure to include the right people can be a death sentence for a patent and grounds for invalidity.
Daniel Wright, Partnership Manager and Patent Strategist here at Aurora, leads a deep dive into the origins of inventorship, breaks down who is and isn’t eligible for inclusion as an inventor, and explains how improper inventorship could result in revoked patent rights.
Podcast: https://patentlystrategic.buzzsprout.com/1734511/9603758-inventorship-who-should-be-listed-as-an-inventor-for-a-patent
Blog post: https://www.aurorapatents.com/blog/new-podcast-inventorship
The document discusses the foundation of patent law. It covers the different types of patents including utility patents, design patents, and plant patents. It explains that a patent is a legal right granted by the government that allows the owner to prevent others from making, using, or selling the invention. It also outlines the requirements for an invention to be patentable, including that it must be useful, novel, and non-obvious. Finally, it discusses factors considered in determining if an invention is non-obvious like analogous prior art, the level of ordinary skill in the art, and secondary considerations.
This presentation addresses the why, what, and how to protect inventions from the vantage point of the early-stage, pre-financing, start-up company that is interested in patenting its inventions and developing an intellectual property portfolio that maximizes the company's valuation and sets it up for success during the intellectual property due diligence that accompanies financing rounds, corporate partnerships, commercialization, and merger and acquisition.
This document provides a brief overview of US utility patent law and the patenting process. It discusses the different types of patents including design, plant, and utility patents. It describes the basic patenting timeline including filing a provisional or non-provisional patent application and undergoing examination. Key concepts like patentability requirements of utility, novelty, and non-obviousness are introduced. Cost estimates and strategies for obtaining and enforcing a patent are also summarized.
Secret sales- Now a Bar to Obtaining a US Patent.Kevin E. Flynn
For about 8 years, there has been a belief that it was safe for a company to sell an item or offer to sell an item without first filing a patent application as long as the sale or offer for sale was under a non-disclosure agreement so the sale would be secret and not public. This month, the United States Supreme Court in a unanimous decision said NO in Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc.,
An overview of the changes to the patent laws for 49th Annual IP Conference of the Institute of Technology and Law at the Center for American and International Law in Plano, Texas on November 8, 2011
Presentation on the Patent Process in US
Contact Us for Intellectual Property Services
BananaIP Counsels
Regd Office
No.40,3rd Main Road,JC Industrial Estate,
Kanakapura Road,Bangalore – 560 062.
Email: contact@bananaip.com
Telephone: +91-80-26860414 /24/34
The document discusses patentability requirements in the US, including utility, novelty, and non-obviousness. It provides details on the types of subject matter that can be patented, conditions for novelty like anticipation and statutory bars, and considerations for non-obviousness. It also discusses the European patent regime and takes questions.
The document discusses various aspects of patent damages and infringement cases in India. It provides information on the types of patent disputes, forums for resolving disputes, types of infringement and remedies available. Some key points include:
- There are three types of patent infringement: direct, indirect, and contributory.
- Remedies for infringement include injunctions, accounts of profits, compensatory damages, and in some cases punitive damages.
- Calculating damages can involve determining lost profits or reasonable royalties based on factors like the Georgia-Pacific test.
- Indian courts have not established clear guidelines for calculating damages but look to decisions from other jurisdictions like the US.
Secret sales- Now a Bar to Obtaining a US Patent.Kevin E. Flynn
For about 8 years, there has been a belief that it was safe for a company to sell an item or offer to sell an item without first filing a patent application as long as the sale or offer for sale was under a non-disclosure agreement so the sale would be secret and not public. This month, the United States Supreme Court in a unanimous decision said NO in Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc.,
This document discusses intellectual property and patents in India. It provides information on:
- What intellectual property and patents are. Patents grant exclusive rights over inventions.
- Key aspects of Indian patent law and amendments over time to make it WTO compliant. Patents are now granted for 20 years and cover all fields of technology.
- Application process for patents in India, including filing requirements and examination process.
- Rights conferred on patent holders and ability to surrender or revoke patents on certain grounds.
This document provides an overview of the patent prosecution process. It defines patent prosecution as the interaction between an applicant and a patent office regarding a patent application or issued patent. The process involves pre-grant prosecution to negotiate for a patent grant, and post-grant prosecution on issues like amendments and oppositions. The document outlines the basic steps of pre-grant prosecution including preparing and filing an application, examination, appeals, and abandonment. Post-grant prosecution includes opposition and reissues. It also briefly describes related concepts like prior art, specifications, claims, and rejections/amendments. Finally, it notes that while the prosecution process seems straightforward, the Manual of Patent Examining Procedure contains over 3000 pages of evolving guidelines.
This document provides an overview of patent law and the patent filing procedure in India. It discusses what a patent is, the types of intellectual property, and the various legislations in India for protecting intellectual property rights. It then describes the different parts of a patent document, the criteria for patentability, and how to identify a potential patent. Finally, it outlines the patent filing process in India, including filing an application, publication, examination, and granting of a patent.
Besides formal patent applications, start-ups can also apply for provisional patent applications. Find out what it takes to have a pending patent for your invention.
This document summarizes Bill Freedman's presentation on major features of the Affordable Care Act that concern employers. It discusses provisions related to health insurance exchanges, employer and individual mandates, limits on cost sharing, reporting requirements, and other regulatory changes taking effect in 2014. The summary provides an overview of how the law affects employer-sponsored health plans.
Preparing for the Sunset - Unique Estate Planning Opportunities at the End of...Dinsmore & Shohl LLP
The document summarizes current estate planning techniques in light of changing tax laws and proposed changes. It discusses opportunities for married couples and single clients to make use of the large lifetime gift and estate tax exemptions. It also outlines proposals to limit valuation discounts, require minimum GRAT terms, limit GST exemption duration, and coordinate grantor trust income and transfer tax rules. The document is intended to help estate planning clients navigate the changing tax landscape.
The document outlines 8 questions employers should ask before taking adverse employment actions against employees to help ensure fairness and avoid potential legal issues. The questions address an employee's tenure, past warnings, reviewing all documentation of the incident, whether others were treated differently, identifying witnesses, whether the employee is a member of a protected class, how coworkers will perceive fairness, and what will be communicated to the employee. Asking these questions helps employers make informed decisions, reduce legal risks, improve employee morale, and lower exposure to damages in potential lawsuits.
"2012/2013 Income, Estate and Gift Tax Changes a Result of the 'Fiscal Cliff'...Dinsmore & Shohl LLP
"2012/2013 Income, Estate and Gift Tax Changes a Result of the 'Fiscal Cliff'," Financial Planning Association of Southwestern Ohio, Election Preview Virtual Conference
"GPS Tracking of Employees: Balancing Employees’ Right to Privacy with Empl...Dinsmore & Shohl LLP
This document discusses the legal issues surrounding employers' use of GPS tracking of employees. It outlines the potential benefits to employers, as well as some laws in states like California, Connecticut, Delaware and Texas that regulate electronic tracking. Case law suggests employees do not have an expectation of privacy over employer-owned property. The document concludes with best practices for employers implementing GPS tracking, such as notifying employees and limiting tracking to work hours and job-related purposes.
"Contracts, Leases, & Property: A Refresher on Polices 8200 and 1224.1," WV S...Dinsmore & Shohl LLP
This document provides a summary of policies 8200 and 1224.1 related to contracts, leases, and property for schools. It discusses bidding thresholds and requirements for purchases based on cost, tips for entering contracts and leases, and exemptions from competitive bidding. Construction project requirements are also outlined, including using prevailing wage rates and competitively bidding projects over $25,000. The document provides tips for issues like contract terms, determining the lowest qualified bidder, waiving bid informalities, and holding pre-bid meetings.
This document provides an overview and comparison of post-grant review procedures for patents in the US, Europe, China, and Japan. It summarizes the key aspects of each system, including grounds for review, timing, fees, parties involved, estoppel provisions, and appeal processes. The document also analyzes some criticisms of different systems and compares features of the US Post-Grant Review (PGR) process to those of other countries. In particular, it suggests the PGR process addresses some issues seen in Japanese oppositions and avoids overlap problems of Chinese procedures.
Five major differences between IPRs and invalidation proceedingsAlexandraPuYang
Alexandra Yang of Fangda Partners examines the differences and similarities between IPRs in the U.S. and invalidation proceedings before the CNIPA to give U.S. practitioners and clients a clear picture of the patent invalidation proceedings in China.
The document summarizes key aspects of the US Manual of Patent Examining Procedure (MPEP). The MPEP describes US patent laws and regulations for prosecuting patent applications. It has 28 chapters covering topics like application filing procedures, patentability requirements, examination process, and post-grant procedures like appeals, corrections, and maintenance fees. The document provides an overview of several MPEP chapters, outlining procedures and guidelines for inventors and patent practitioners.
The document discusses various third-party challenges to patents and patent applications that can be filed with the USPTO, including inter partes review (IPR), post grant review (PGR), covered business method patent review (CBM), preissuance submissions, and derivation proceedings. It provides details on the standards for instituting each proceeding, who can file, applicable grounds, timing requirements, procedures, and differences between the proceedings. USPTO fees for IPR are around $25k with typical total costs to completion of $350k-$700k. The overall success rate of IPRs is very high for petitioners, with around 85% of petitions granted and 60% of all claims found unpatent
This document provides an overview of intellectual property rights (IPR) in India. It discusses the main types of IPR which include patents, designs, trademarks, and copyrights. Patents protect inventions and last for 20 years. Design protection lasts for 5 years and can be renewed twice. Trademarks protect brands indefinitely if renewed. Copyright protects artistic and literary works for the life of the creator plus 70 years. The document outlines the patent filing process in India and enforcement actions that can be taken against intellectual property infringement.
The document provides guidelines for filing a patent application in Pakistan. It discusses that a patent grants exclusive rights to make, use and sell an invention for 20 years. It outlines the criteria for a patentable invention, including novelty, inventive step and industrial applicability. The registration process involves filing an application at the Patent Office of Pakistan, paying fees, and submitting a specification describing the invention. The application then undergoes examination and search to determine whether the claimed invention is patentable.
Patent prosecution, process and pitfalls by Benjamin Kuo (Wed, August 22, 2018)L15A
On Wed, August 22, 2018 Benjamin Kuo presented Intellectual Property "Patent Prosecution, Process and Pitfalls" CRASH Space.
https://blog.crashspace.org/events/intellectual-property-topics/
__________________________________________
Patent Prosecution, Process and Pitfalls
Eventually, every inventor is confronted with the decision to protect his technology by ways of a utility patent. Understanding the magnitude of the undertaking as well as the process and pitfalls involved can greatly reduce costs and (worse) avoid obtaining a useless patent.
In this talk, given by a patent attorney and former USPTO Examiner, the informed inventor will learn to distinguish patents from other forms of intellectual property, how to read a patent disclosure, the patent prosecution process and timeline, decide when and what to file, inner workings of the PTO black box, and how to find and work with a patent attorney.
__________________________________________
About the Presenter
Benjamin Kuo is a patent attorney and former computer engineer with a solo IP practice based in Los Angeles, specializing in helping smaller entities obtain IP protection. In addition to patent filings, he also supports litigation and consults with practitioners on Patent and Trademark Office issues. Before forming his own practice, he was a patent examiner for the USPTO, examining hundreds of computer networking applications and conducting numerous interviews with outside attorneys. Before working at the USPTO, he practiced at various law firms in the fields of patent prosecution, IP litigation, antitrust litigation, and federal corrupt practices act investigations. He is fluent in Mandarin Chinese and is licensed in California and before the USPTO. See more at benasaur.com/law.
In this month's episode, we’re talking about the use of government grants and the strings that can come attached to your IP! We’re exploring the various types of small business research grants, how the Bayh-Dole Act regulates inventions generated under government grants, licensing and ownership implications for your patent when using federal dollars, and the sticky webs that you may find yourself in if you are not carefully tracking IP and adhering to the numerous provisions and timelines.
Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads the discussion along with our all-star patent panel, exploring:
⦿ How the Bye-Dole Act of 1980 regulates inventions under government grants
⦿ As a small business, what types of grants are available to you and whether or not they can cover IP-related costs
⦿ The rights of the federal government to your Invention when you use grant money
⦿ Implications for using subcontractors to perform the work under the grant
⦿ And of course, some of the biggest gotcha’s and practical tips for avoiding them
Ashley is also joined today by our always exceptional group of IP experts including:
⦿ Kristen Hansen, Patent Strategy Specialist at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ Ty Davis, Patent Strategy Associate at Aurora
** Mossoff Minute **
This month's Mossoff Minute, featuring Professor Adam Mossoff, looks at the introduction of a very important piece of patent reform legislation called the PREVAIL Act.
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The presentation discusses different techniques for using US Patent and Trademark Office (USPTO) invalidity proceedings to invalidate issued patents. The presentation specifically discusses the new procedures available under the America Invents Act (AIA). Topics include Post-Grant Review (PGR) and Inter Partes Review (IPR) and cover business method review (CBM) programs. Deadlines as well as specific scheduling orders for these programs are discussed as well as how best to use the new programs at the USPTO.
This document provides an overview of the Indian patent system. It defines what a patent is, describes the different types of patents, and outlines the patent application and examination process. Key points include that patents in India are governed by the Patents Act of 1970 and provide 20 years of exclusivity, and that applications undergo formality examination, publication, request for examination, issuance of an examination report, opportunities for opposition, and potential grant of a patent. The rights of patent holders and processes for infringement, licensing, and renewal are also summarized.
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...MaRS Discovery District
Discover why intellectual property is a critical asset to your company. Within the context of current economic uncertainty, this series covers cost-effective strategies for securing IP and patent rights to enhance the market value and competitive position of your life sciences or ICE company.
Patent Law Review - IP Year in Review CLE v2Bryan Beel
This document provides a summary of a presentation on recent developments in patent law given to the Oregon State Bar Intellectual Property Section. It discusses several topics, including proposed patent legislation, practice before the International Trade Commission and Patent and Trademark Office, as well as recent decisions from the Federal Circuit and Supreme Court that have impacted patent law. The presentation was delivered by Bryan Beel of Perkins Coie LLP on February 14, 2014.
The document discusses the Indian patent system and amendments to the Indian Patent Act. It provides information on intellectual property rights in India, the types of patents, requirements for patentability, the patent application process, and key amendments to the Indian Patent Act in 2002 and 2005. The summary is as follows:
The document discusses the Indian patent system, including the types of patents, requirements for patentability, and stages of the patent application process from filing to grant of a patent. It also outlines key amendments made to the Indian Patent Act in 2002 and 2005, including hastening the patent grant process, provisions related to pre-grant and post-grant opposition, and inclusion of product patents in all fields.
Unlocking the Power of Patents: A Guide to Types and ProceduresMuhammed Ameer P
The document provides information on different types of patent applications including provisional, PCT, and non-provisional applications. It describes the typical stages in an ordinary patent application process including invention disclosure, prior art search, application drafting, filing, publication, examination, office actions/responses, and grant/rejection. Timelines for PCT and Indian patent office applications are also outlined. Key intellectual property organizations and their websites related to patents are listed.
The document summarizes India's patent system. It outlines that intellectual property rights allow creators of intellectual property to prevent others from commercially exploiting it for a given period. India's patent system is governed by acts like the Patent Act of 1970. To be patentable, an invention must be novel, involve an inventive step, and be capable of industrial application. The stages of obtaining a patent in India include filing, formality check, publication, examination, response from applicant, and potential pre-grant opposition. If objections are overcome, a patent certificate is granted. Renewal fees must be paid to keep the patent in force for its full term.
variety of industries and private practitioners attend this event for worthwhile benchmarking and networking with the “who’s who” of the 337 bar, including senior decision-makers from the ITC, companies and practitioners involved in some of the most high profile cases to date.
Important Provisions of The America Invents Act Take Effect in SeptemberPatton Boggs LLP
The America Invents Act takes effect in September 2012, bringing significant changes to US patent law. Key provisions include:
1. Supplemental examination allows patent owners to address issues to strengthen patents against certain challenges.
2. Third parties can submit prior art for pending patent applications.
3. Inter partes review replaces inter partes reexamination, allowing more challenges based on anticipation and obviousness.
4. Requirements for inventor oaths become more flexible.
5. Transitional post-grant review covers some business method patents.
6. Failure to obtain or present advice of counsel can no longer be used as evidence of willful infringement.
The document discusses the Indian Patent Act of 1970, which governs the granting of patents in India and provides intellectual property protections for inventions. Key aspects covered include the requirements for an invention to be patentable, the types of patents granted, procedures for obtaining and renewing a patent, rights of a patentee, and exclusions from patentability. The patent system aims to reward inventors while ensuring availability of inventions for public use.
Online Patent Registration | Patent Application Process in Indiaregistrationwala
Get complete detail about patent registration in India with Registrationwala. Here patent professional and experts are available for your guidance. So, if you are looking for consultation to patent registration, Registrationwala is here for your help.
What is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a What is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem What is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem What is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a What is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an in
Similar to "Your Guide to the America Invents Act (AIA)," The Ohio State Bar Association (20)
The 2022 annual report from Dinsmore & Shohl summarizes the firm's diversity, equity, and inclusion initiatives and accomplishments over the past year. It provides statistics on the diversity of the firm's leadership, new hires, summer associates, and promotions. It also highlights the firm's continued commitment to the Mansfield Rule for increasing diversity in law firm leadership. Specific programs described include the Pre-Law Minority Program, Diversity Scholarships in partnership with clients, involvement with the Leadership Council on Legal Diversity, and celebrations held during diversity months. The report conveys that Dinsmore is focused on fostering an inclusive culture and pipeline for diverse legal talent.
In the past year, we have taken a deep dive into our most pressing challenges in creating a fully diverse and inclusive workplace and actions we can take right now to ignite change in our communities. In our 2020 Annual Report on Diversity & Inclusion, we outline our year that was, and our strategy for 2021.
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We're grateful to everyone who took time to help and who were able to attend.
#IamDinsmore
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"Your Guide to the America Invents Act (AIA)," The Ohio State Bar Association
1. Your Guide to the America Invents Act (AIA)
Presented to The Ohio State Bar Association
May 23, 2012
2. Overview
A. Most comprehensive change to U.S. patent law in over 60
years; signed into law Sept. 16, 2011
B. Reasons for the AIA
1. Improve and modernize the U.S. system – perception
that too many “bad” or “weak” patents were being issued
bad weak
(but, ironically, AIA does little to address initial USPTO
examination of applications
2.
2 New post-grant procedures allow patent owners to
strengthen patents – supplemental examination
3. New post grant procedures make it easier to challenge
weak/bad patents
4. Simplifies/streamlines enforcements in district courts
5. Harmonizes, to a large extent, U.S. system with rest of
the world
3. Transition, stages,
Transition in stages to the New Act
• Some changes were immediate when the AIA
was signed
• Prior Commercial User Defense to
Infringement Expanded
• Prioritized “Fast Track Examination
Fast Track”
• Penalties for false patent marking
essentially eliminated; virtual patent
marking permitted
• Best mode defense to patent invalidity
eliminated
li i t d
4. Transition, stages,
Transition in stages to the New Act
• Some changes are effective September 16, 2012
• Inter partes review (IPR) of patent invalidity (New Patent Trial
and Appeal Board (PTAB) created to conduct)
• Inter partes reexamination being phased out and replaced
• Limited to 281 proceedings/year until 2016
• Ex parte reexamination still in effect and remains in effect
• Post grant review (PGR) of patent invalidity (must be filed
within 9 months of patent issuance) (
p ) (PTAB conducts))
• To be eligible, patent must have issued on application
filed after March 16, 2013
• Procedure will slowly ramp up over the next several years
• Supplemental examination
• Third party citation of prior art in pending applications
• Assignee filing of patent applications
5. Transition, in stages, to the New Act
• Final Round of changes effective March 16, 2013
• First Inventor to File
• U.S. has been a “first-to-invent” country for over 200 years; recently,
we have been the only country
• In 2013 – move to First Inventor to File - race to the Patent Office –
patent awarded to 1st filer, not 1st inventor (exception – derivation)
• Prior Art Redefined
• Currently – 7 different kinds of prior art
• AIA simplifies to 2 categories
• Preserves one year grace period for:
• Public disclosures from inventor, or by a third party who obtained
from inventor directly or indirectly
• Patents/applications by inventor and subject to common ownership or
joint research agreement
• Grace period eff. only for U.S.; any public disclosure bars foreign
patent rights
6. Prior Art (Redefined in New §102(a))
Currently:
• Patents or Printed Publications Worldwide as of
publication date
• Oral Public Disclosures, Sales and Public Use in the
Disclosures Sales,
US only
• Prior invention
Post AIA (2013; global harmonization)
• Patents or Printed Publications Worldwide as of filing
date f t t
d t of patents
• Oral Public Disclosures, Sales, and Public Use
Worldwide
7. Major Changes under th AIA
M j Ch d the
• False Marking (either marking non-patented item or where p
g( g p patent
expired)
• Qui Tam action – third parties split fines with the government
• In 2009, Federal Circuit interpreted statute to provide for
damages f each product f l l marked , not j t each
d for h d t falsely k d t just h
occurrence; greatly increased potential recoveries and cause
hundreds of suits (“marking trolls”) to be filed, clogging the
district courts
• AIA essentially eliminated false marking suits
• Only government can bring suit to recover the statutory
fine
• Only competitors who have been damaged can bring suit
to recover damages adequate to compensate for injury
• All pending suits were dismissed; retroactive effect
8. Major h
M j changes under th AIA
d the
• Prior Commercial User Defense expanded
p
• Previously could only be used to defend against business
method patents; now – any patent issuing after Sept. 16,
2011
9. Post-Grant Review (2012)
( )
• New in AIA – applies to applications filed after 3/16/2013;
practically, nothing happens until 2014-15 when these
applications start to issue
• Opposition must be filed within 9 months of
issuance/reissue of competitor’s patent
• Can i
C raise all grounds f i
ll d for invalidity ( t j t prior art)
lidit (not just i t)
• Standard: More likely than not that at least one challenged
claim is unpatentable, OR novel question of law
• Discovery allowable - deposing inventors, practitioners?
• Patentee may respond/amend claims within 2 months
• PTO issues response within 3 months of p
p patentee
statement, or lapse of patentee’s window
• Estoppel – for all issues raised or which could have been
raised
10. Inter Partes Review
• Replaces Inter Partes Reexamination in 2012
• Can be filed after the 9 month Post-Grant Review
Period
• Validity h ll
V lidit challenges must b b
t be based on patents or
d t t
printed publications only
• S a da d easo ab e e ood of prevailing o
Standard: reasonable likelihood o p e a g for
at least one of the challenged claims
• Patentee may respond and amend
• Estoppel – for issues raised or which could have
been raised
11. Third Party Submissions of Prior Art (2012)
During prosecution, any third party may submit:
• Any patent application, patent or printed
application patent,
publication
• May include statements of the patent owner
made d i liti ti or prosecution
d during litigation ti
• Statement of relevance and fee required
• For example, refuting an applicant s assertion
example applicant’s
of unexpected results
• Filing Timeline – the latter of 6 months after
publication, or prior t th i
bli ti i to the issuance of a Fi l
f Final
Rejection or Notice of Allowance
12. Defense for Accused Infringer’s Prior Commercial
g
Use (now)
• For the defense, the prior commercial use of the
subject matter of a claimed invention must be:
• In the United States
• At least one year before the earlier of: the effective
filing date of the claimed invention, or the date on
which the claimed invention was disclosed to the
public.
bli
• Defense effective even if the prior use is
insufficient to invalidate the patent.
• Trade secret materials or other proprietary
materials can be a valuable litigation defense
tool; good practice to document prior uses
13. Supplemental Examination (
pp (2012)
)
Cure for Inequitable Conduct?
• Patentee submits information after patent
issuance
• If substantial new question of patentability, PTO
reexamines patent
• A patent is not held to be unenforceable based
on information considered in supplemental
examination
i i
• Needs to be conducted before litigation,
specifically before assertion of inequitable
conduct
14. Derivation Proceedings 2013 ( p
g (Replaces Interferences)
)
• Section 135 - USPTO Derivation Proceedings
• Determines whether earlier inventor derived
the claimed invention from the inventor
named in a later-filed application without
authorization.
th i ti
• Petition must be filed within 1 year from first
publication of a claim to an invention that is
the same or substantially the same as earlier
application’s claim.
• Requires proof that a claim was derived from
other inventor - derived claims are invalidated
15. Derivation Proceedings (Continued)
• Section 291 – District Court Derivation
Proceedings
• Must be filed within 1 year after the issuance
of the 1st patent containing a claim to the
derived invention
• Derivation Practice Tip: Monitor Your
Competitors
16. False Patent Marking Essentially Eliminated
• Numerous false marking law suits were filed under the old
statute by “marking trolls;” now all di i
t t t b “ ki t ll ” ll dismissed.
d
• Plaintiff must have suffered competitive injury.
• Not for marking violations with an expired patent number
which previously covered the product
• Virtual marking (via online database) is now permitted –
can identify on product/packaging that item is patented; no
need for number; maintain list of patented products and
patent numbers on a website. Easier to update/make
changes.
17. Oaths and Declarations (2012)
• Assignee filings available
• When inventor has assigned or is under an
obligation to assign, the assignee may file
• Oath or declaration still required before patent
grant
• Substitute Statement
• Replaces petition for unavailability, death,
incapacity or h tilit
i it hostility
18. Priority Examination Track (now, for applications filed
y ( , pp
after 9-16-2011)
• Must be requested within 12 months of filing application;
guarantees final disposition (allowance or final rejection)
within 12 months
• Fee of $4,800 (reduced to $2,400 for small entities).
• Eligible:
Eli ibl continuing applications (e.g., continuations and
ti i li ti ( ti ti d
divisionals), bypass applications filed as continuations or
continuations-in-part of a PCT eligible.
• Limitation
Li it ti on number of claims (4 i d
b f l i indep.; 30 t t l)
total).
• Extensions of time not permitted.
• No search or examination support document required.
• Limited to first 10,000 per fiscal year.
19. Other
• Fees
F
• 15% fee surcharge on substantially all patent
and trademark fees –already effective
• Best Mode (now)
• The best mode defense for patent invalidity or
unenforceability is eliminated, but best mode
still required for patentability.
• Joinder patent trolls cannot join multiple
alleged infringers simply for infringing the same
patent.
patent
20. Questions?
Thank You!
Tim Hagan
(937) 449-6430
tim.hagan@dinsmore.com
g @
Susan Luna
(937) 449-6429
Susan.luna@dinsmore.com