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
"Your Guide to the America Invents Act (AIA)," The Ohio State Bar AssociationDinsmore & Shohl LLP
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.
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.
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.
I’m so confused — what is prior art now? Marc Hubbard
How did the America Invents Act (AIA) change the definition of prior art when it switched the U.S. patent system from first-to-invent to first-to-file.
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.
The document discusses changes to patent law brought about by the America Invents Act (AIA) and the transition to a first-inventor-to-file (FITF) system. Key changes include a one year grace period for inventors' own prior disclosures; exceptions for joint inventors and assignees of the same invention; new procedures for challenging patents; and a shift to treating unpublished patent applications as prior art. The document compares the new law to the previous first-to-invent system and discusses open questions around the patentability of secret prior art and prior user rights during challenges to a patent's validity.
America Invents Act 2011 Dec 15 2011 Slidesemanzo7672
The America Invents Act of 2011 introduced major changes to the U.S. patent system, transitioning from a "first to invent" to a "first inventor to file" system. Key provisions include establishing a grace period of one year for public disclosures by the inventor, defining prior art under Section 102 based on the effective filing date, and exceptions for commonly owned or jointly developed inventions. These changes aim to harmonize U.S. patent law with international standards.
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.
"Your Guide to the America Invents Act (AIA)," The Ohio State Bar AssociationDinsmore & Shohl LLP
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.
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.
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.
I’m so confused — what is prior art now? Marc Hubbard
How did the America Invents Act (AIA) change the definition of prior art when it switched the U.S. patent system from first-to-invent to first-to-file.
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.
The document discusses changes to patent law brought about by the America Invents Act (AIA) and the transition to a first-inventor-to-file (FITF) system. Key changes include a one year grace period for inventors' own prior disclosures; exceptions for joint inventors and assignees of the same invention; new procedures for challenging patents; and a shift to treating unpublished patent applications as prior art. The document compares the new law to the previous first-to-invent system and discusses open questions around the patentability of secret prior art and prior user rights during challenges to a patent's validity.
America Invents Act 2011 Dec 15 2011 Slidesemanzo7672
The America Invents Act of 2011 introduced major changes to the U.S. patent system, transitioning from a "first to invent" to a "first inventor to file" system. Key provisions include establishing a grace period of one year for public disclosures by the inventor, defining prior art under Section 102 based on the effective filing date, and exceptions for commonly owned or jointly developed inventions. These changes aim to harmonize U.S. patent law with international standards.
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.
Pitfalls to be Aware of When Working with Inventions Funded Through Governmen...Workman Nydegger
Sometimes a client’s technology is funded by a government grant, e.g., through a federal agency. Complex provisions governing ownership, disclosure, election, patent filing, and other requirements for such technology are governed by the Bayh-Dole act of 1980 (35 U.S.C. §200-212). Some of the “strings” imposed and governed by Bayh-Dole that are particularly relevant to patent practitioners include:
• disclosure of developed inventions;
• election of ownership to the technology by the contractor;
• compulsory government license that attaches to developed technology;
• possibility of U.S. Government exercise of “March-In Rights”;
• requirements for U.S. manufacture;
• issues relative to protecting trade secrets of the contractor.
In addition to the need to comply with the many provisions of Bayh-Dole, where government funded inventions are developed, export provisions under ITAR/EAR may also be applicable. Such ITAR and EAR export control regulations cover not only articles, software, and services that may be listed on either the US Munitions List (for ITAR) or the Commerce Control List (for EAR), but also cover technical data, such as that used by patent practitioners in conducting a patentability search or preparing a patent application for the contractor.
The document summarizes key provisions of 35 USC § 102 regarding patent novelty. Section 102 establishes that an invention is not novel if it was known, used, patented, described in a publication, in public use or on sale over one year before filing, abandoned, patented abroad over one year before US filing, or invented by another earlier. The summary focuses on subsections (a)-(g) and what prior art or inventor activities would bar patentability under each.
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.
The document provides an update on US patent reform and the America Invents Act. Key points include:
- The bills passed the Senate and House with different provisions around fee diversion and USPTO budget authority.
- The Act moves the US to a first-to-file system with a one-year grace period and introduces several new post-issuance proceedings.
- It compares the changes between old and new §102 standards for novelty and prior art. The new §102(a) combines elements of the old §102(a)-(e) and the new §102(b) creates grace period exceptions.
- Best practices for applicants under the first-to-publish system include promptly filing a provision
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.
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.
The document provides information on intellectual property (IP) practice, including:
1) HDP is the 10th largest US IP firm with over 110 attorneys across four offices. In 2018 it obtained the 6th highest number of utility patents.
2) It discusses strategies for freedom to operate (FTO) analyses such as patent searches, monitoring risks of infringement, and obtaining opinions of counsel. Litigation costs and risks are also reviewed.
3) Guidelines are presented for patent preparation and prosecution best practices, including ownership issues, duty of candor, claim drafting, means-plus-function language, and obviousness arguments.
• What has changed?
– New Rules Governing Prior Art
– Post Grant Review
– Microentity Fees
– Priority Examination of “Important” Technologies
– Fee Diversion
• How do the changes affect small business?
• What steps can you take now?
This document discusses traditional economic development funding options in Texas including Type A and B corporations that create or retain primary jobs. It analyzes reinstating a dormant 4B corporation which would dedicate sales tax revenue to economic development but requires a general election and has other cons. Creating a development foundation is also considered but would lack dedicated funding. The staff recommendation is to utilize a City Council subcommittee to develop a 3-5 year economic development plan and explore funding options including potentially reinstating the 4B corporation or establishing an economic development committee or fund.
Public Hearing, presentation, possible action, and discussion regarding an ordinance amending Chapter 12, “Unified Development Ordinance”, Section 12-5.8.B, “Northgate Districts”, of the City of College Station Code of Ordinances regarding the placement of street trees, location of sidewalks,
and the screening requirements for electrical service equipment in Northgate.
The Bryan-College Station Convention & Visitors Bureau enhances economic and social growth in the Brazos Valley by promoting tourism, conventions, sports, and hospitality. The CVB has 10 full-time staff with over 90 years of combined experience and works to attract events, visitors, and tax revenue to the region. In 2013, travel spending in the BCS metro area totaled $457.5 million and supported over 5,800 jobs. The CVB focuses on grants, partnerships, and infrastructure to attract more visitors and events in the future.
The document discusses mobile food vending parks and options for College Station. It provides an overview of College Station's current mobile food vending ordinance, including distance and location regulations. It also summarizes how other cities regulate food truck parks through specific areas, vendor limits based on site size, and development/operational standards. Finally, it outlines options for College Station, such as encouraging planned development districts, drafting unique standards, and allowing food truck parks through conditional use permits with commercial zoning requirements and additional standards.
The City Council meeting agenda for August 11, 2016 included a discussion of abandoning a right-of-way, with accompanying vicinity and location maps as well as a site plan to help explain the proposed changes, and provided an opportunity for questions.
This document discusses a proposed comprehensive plan amendment for the Williams Creek Lake Estates area from Restricted Suburban to a higher density designation. The Planning & Zoning and Council Joint Subcommittee identified this area as having potential for increased density. However, the amendment was not previously considered as part of the Comprehensive Plan 5-Year Evaluation & Appraisal Report. The document relates to a regular agenda item to potentially amend the future land use and character map and thoroughfare plan for this area.
The document discusses proposed amendments to the city's Unified Development Ordinance regarding traffic impact analysis requirements. It would require traffic impact analyses for single family residential developments based on acreage thresholds. It also proposes a preliminary plan requirement and updated trip generation rates table. Public meetings were held in March and April to discuss the changes, with a presentation and vote by the Planning and Zoning Commission and City Council scheduled for August.
The document summarizes the proposed FY 2016-2017 budget for College Station, Texas. It outlines key factors influencing the budget such as growth, infrastructure needs, and economic development. The proposed $340.8 million budget allocates $232.8 million to operations and maintenance and $108 million to capital projects. It also discusses priorities around public safety, streets, and compensation to attract qualified workers. The city council will hold workshops in August to discuss the budget and tax rate before approving the final budget in September.
The Lincoln Recreation Center is undergoing an expansion and renovation project. Plans include expanding the facility and updating interior spaces. Renderings and layouts show the proposed changes being made to modernize and increase the size of the recreation center.
The agenda item is about rezoning for Summit Crossing Phase 3. The current comprehensive plan designation for the area is General Suburban. The proposed rezoning would change the designation to General Suburban to allow for the development of Summit Crossing Phase 3.
The document outlines key information for the 85th Texas State Legislative session, including important dates, the Governor's legislative priorities such as convention of states and CPS reform, turnover in key Senate and House leadership positions and committee chairs, and major issues like the budget, local tax reductions, annexation, and transportation funding that are likely to be addressed. It also lists additional issues like border security, mental health, education, water, and business franchising tax that could be priorities.
The A&M Church of Christ is requesting the abandonment of a public utility easement on Lot 1, Block 1 of their subdivision. This request will be presented to the City Council at their meeting on October 13, 2016. A vicinity map and details on the location of the easement are provided for reference regarding the request.
The document discusses a proposed rezoning and concept plan for the Tarrow Townhomes development. It proposes a zero foot rear setback for townhouses adjacent to the floodplain, while preserving landscaping in the floodplain reserve area. It also proposes setbacks from existing homes, right-of-way dedication, and sidewalk improvements. The plan is a modification from a previous concept plan.
The city council meeting on October 13, 2016 included a discussion section. The meeting agenda involved questions but no other details are provided about the topics discussed or any decisions that were made.
Pitfalls to be Aware of When Working with Inventions Funded Through Governmen...Workman Nydegger
Sometimes a client’s technology is funded by a government grant, e.g., through a federal agency. Complex provisions governing ownership, disclosure, election, patent filing, and other requirements for such technology are governed by the Bayh-Dole act of 1980 (35 U.S.C. §200-212). Some of the “strings” imposed and governed by Bayh-Dole that are particularly relevant to patent practitioners include:
• disclosure of developed inventions;
• election of ownership to the technology by the contractor;
• compulsory government license that attaches to developed technology;
• possibility of U.S. Government exercise of “March-In Rights”;
• requirements for U.S. manufacture;
• issues relative to protecting trade secrets of the contractor.
In addition to the need to comply with the many provisions of Bayh-Dole, where government funded inventions are developed, export provisions under ITAR/EAR may also be applicable. Such ITAR and EAR export control regulations cover not only articles, software, and services that may be listed on either the US Munitions List (for ITAR) or the Commerce Control List (for EAR), but also cover technical data, such as that used by patent practitioners in conducting a patentability search or preparing a patent application for the contractor.
The document summarizes key provisions of 35 USC § 102 regarding patent novelty. Section 102 establishes that an invention is not novel if it was known, used, patented, described in a publication, in public use or on sale over one year before filing, abandoned, patented abroad over one year before US filing, or invented by another earlier. The summary focuses on subsections (a)-(g) and what prior art or inventor activities would bar patentability under each.
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.
The document provides an update on US patent reform and the America Invents Act. Key points include:
- The bills passed the Senate and House with different provisions around fee diversion and USPTO budget authority.
- The Act moves the US to a first-to-file system with a one-year grace period and introduces several new post-issuance proceedings.
- It compares the changes between old and new §102 standards for novelty and prior art. The new §102(a) combines elements of the old §102(a)-(e) and the new §102(b) creates grace period exceptions.
- Best practices for applicants under the first-to-publish system include promptly filing a provision
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.
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.
The document provides information on intellectual property (IP) practice, including:
1) HDP is the 10th largest US IP firm with over 110 attorneys across four offices. In 2018 it obtained the 6th highest number of utility patents.
2) It discusses strategies for freedom to operate (FTO) analyses such as patent searches, monitoring risks of infringement, and obtaining opinions of counsel. Litigation costs and risks are also reviewed.
3) Guidelines are presented for patent preparation and prosecution best practices, including ownership issues, duty of candor, claim drafting, means-plus-function language, and obviousness arguments.
• What has changed?
– New Rules Governing Prior Art
– Post Grant Review
– Microentity Fees
– Priority Examination of “Important” Technologies
– Fee Diversion
• How do the changes affect small business?
• What steps can you take now?
This document discusses traditional economic development funding options in Texas including Type A and B corporations that create or retain primary jobs. It analyzes reinstating a dormant 4B corporation which would dedicate sales tax revenue to economic development but requires a general election and has other cons. Creating a development foundation is also considered but would lack dedicated funding. The staff recommendation is to utilize a City Council subcommittee to develop a 3-5 year economic development plan and explore funding options including potentially reinstating the 4B corporation or establishing an economic development committee or fund.
Public Hearing, presentation, possible action, and discussion regarding an ordinance amending Chapter 12, “Unified Development Ordinance”, Section 12-5.8.B, “Northgate Districts”, of the City of College Station Code of Ordinances regarding the placement of street trees, location of sidewalks,
and the screening requirements for electrical service equipment in Northgate.
The Bryan-College Station Convention & Visitors Bureau enhances economic and social growth in the Brazos Valley by promoting tourism, conventions, sports, and hospitality. The CVB has 10 full-time staff with over 90 years of combined experience and works to attract events, visitors, and tax revenue to the region. In 2013, travel spending in the BCS metro area totaled $457.5 million and supported over 5,800 jobs. The CVB focuses on grants, partnerships, and infrastructure to attract more visitors and events in the future.
The document discusses mobile food vending parks and options for College Station. It provides an overview of College Station's current mobile food vending ordinance, including distance and location regulations. It also summarizes how other cities regulate food truck parks through specific areas, vendor limits based on site size, and development/operational standards. Finally, it outlines options for College Station, such as encouraging planned development districts, drafting unique standards, and allowing food truck parks through conditional use permits with commercial zoning requirements and additional standards.
The City Council meeting agenda for August 11, 2016 included a discussion of abandoning a right-of-way, with accompanying vicinity and location maps as well as a site plan to help explain the proposed changes, and provided an opportunity for questions.
This document discusses a proposed comprehensive plan amendment for the Williams Creek Lake Estates area from Restricted Suburban to a higher density designation. The Planning & Zoning and Council Joint Subcommittee identified this area as having potential for increased density. However, the amendment was not previously considered as part of the Comprehensive Plan 5-Year Evaluation & Appraisal Report. The document relates to a regular agenda item to potentially amend the future land use and character map and thoroughfare plan for this area.
The document discusses proposed amendments to the city's Unified Development Ordinance regarding traffic impact analysis requirements. It would require traffic impact analyses for single family residential developments based on acreage thresholds. It also proposes a preliminary plan requirement and updated trip generation rates table. Public meetings were held in March and April to discuss the changes, with a presentation and vote by the Planning and Zoning Commission and City Council scheduled for August.
The document summarizes the proposed FY 2016-2017 budget for College Station, Texas. It outlines key factors influencing the budget such as growth, infrastructure needs, and economic development. The proposed $340.8 million budget allocates $232.8 million to operations and maintenance and $108 million to capital projects. It also discusses priorities around public safety, streets, and compensation to attract qualified workers. The city council will hold workshops in August to discuss the budget and tax rate before approving the final budget in September.
The Lincoln Recreation Center is undergoing an expansion and renovation project. Plans include expanding the facility and updating interior spaces. Renderings and layouts show the proposed changes being made to modernize and increase the size of the recreation center.
The agenda item is about rezoning for Summit Crossing Phase 3. The current comprehensive plan designation for the area is General Suburban. The proposed rezoning would change the designation to General Suburban to allow for the development of Summit Crossing Phase 3.
The document outlines key information for the 85th Texas State Legislative session, including important dates, the Governor's legislative priorities such as convention of states and CPS reform, turnover in key Senate and House leadership positions and committee chairs, and major issues like the budget, local tax reductions, annexation, and transportation funding that are likely to be addressed. It also lists additional issues like border security, mental health, education, water, and business franchising tax that could be priorities.
The A&M Church of Christ is requesting the abandonment of a public utility easement on Lot 1, Block 1 of their subdivision. This request will be presented to the City Council at their meeting on October 13, 2016. A vicinity map and details on the location of the easement are provided for reference regarding the request.
The document discusses a proposed rezoning and concept plan for the Tarrow Townhomes development. It proposes a zero foot rear setback for townhouses adjacent to the floodplain, while preserving landscaping in the floodplain reserve area. It also proposes setbacks from existing homes, right-of-way dedication, and sidewalk improvements. The plan is a modification from a previous concept plan.
The city council meeting on October 13, 2016 included a discussion section. The meeting agenda involved questions but no other details are provided about the topics discussed or any decisions that were made.
Chief McCollum discusses the dangers of distracted driving and recommends restricting wireless device use while driving. Distracted driving causes thousands of deaths annually. An ordinance banning handheld use but allowing hands-free use is recommended, along with public education and enforcement. Staff estimates a $15,000 cost to install signs within 60-90 days to notify drivers of the new restrictions.
The City Council meeting on October 13, 2016 discussed abandoning easements on two school sites, Willow Branch and Oakwood, located at Lot 1A, Block 1 and 105 Holik Street for College Station ISD. Maps were presented showing the vicinity, location, and a survey plat of the proposed easement abandonment and new easement dedication.
The agenda item discusses a property located at 3998 Greens Prairie Road West that is requesting to be annexed into the Wellborn Special Utility District. The property is currently designated as rural land use but is seeking a change to suburban commercial designation to allow for future commercial development. If approved, the annexation would extend water and sewer services to the property and change its land use in the city's master plan.
This document discusses the abandonment of a public utility easement on Lot 17, Block 4 of Redmond Terrace that was to be addressed at a City Council meeting on October 13, 2016. It includes a vicinity map showing the general area and an indication of the location of the easement on the property in question. Contact information is provided for any questions.
This document discusses alternatives for improving transportation in an area with a current population of 107,425 projected to grow to 156,436 by 2030. It analyzes 6 alternatives for offsetting intersections along two roads to improve safety and mobility while considering factors like right of way impacts, public comments, construction costs, and maintenance costs. It provides a scoring matrix assigning weightings to 7 criteria to evaluate each alternative.
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
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 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.
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.
New Strategies for Third Parties The Role of New Third Party Preissuance Sub...Marc Hubbard
The document discusses new strategies for third parties to challenge patents under the America Invents Act (AIA). It summarizes the limited options available prior to the AIA such as Rule 99 submissions and public protests. The AIA introduces new third party preissuance submissions that allow explanations of relevance and can be filed after publication. It also introduces new post-grant review proceedings that make the PTO a more attractive venue for resolving validity than previous inter partes reexaminations. However, preissuance submissions still have downsides like uncertainty if the examiner will consider the art and potential to tip off the applicant.
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.
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.
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.
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.
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.
Brush up on your Florida Construction Defect Law to better serve your clients. Presentation by Thomas Oglesby, Esq. from Resnick & Louis, P.C. Attorneys at Law
The New Patent Act & Major Changes in the LawMichael Annis
The document summarizes major changes to US patent law under the America Invents Act, including changing from a first-to-invent system to a first-to-file system where the first inventor to file an application is granted the patent. It describes new rules around prior art, prior use rights, administrative review processes like inter partes review, litigation changes, and effective dates of the changes. Key changes include a one-year grace period, derivation proceedings to determine inventorship, lower fees for micro-entities, and new post-grant review procedures available to challenge patents.
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.
The America Invents Act was passed by Congress and is expected to be signed by the President on Friday. Most provisions will take effect either 12 or 18 months after enactment. Key changes include moving from a first to invent to a first to file system, new post-grant review procedures such as inter partes review, allowing supplemental examination to address possible inequitable conduct, and expanding the prior user defense.
Demystifying the concept of Common Ownership and how it can be leveraged to disqualify prior art that might otherwise cause a rejection during prosecution.
Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora leads this discussion, digging into Common Ownership exceptions, joint research exceptions, and terminal disclaimer practice.
Podcast: https://patentlystrategic.buzzsprout.com/1734511/10647883-common-ownership-whose-prior-art-is-it-anyway
Blog post: https://www.aurorapatents.com/blog/new-podcast-common-ownership
Filing a Patent application is the first step towards protecting an invention. This presentation details in brief on how and where to file a patent application along with the other documentary and statutory requirements.
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.
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.
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 intellectual property rights (IPR) in India, focusing on patent laws. It discusses that IPR includes patents, trademarks, copyrights and more. For patents, it outlines the Patent Act of 1970, including that patents protect inventions for 20 years and can be granted to individuals or assignees. The stages of filing a patent application and granting are described, including opposition and revocation processes. Rights of patentees to prevent use of patented inventions are explained. Infringement and related legal reliefs are also summarized.
1. LEAHY SMITH AMERICA INVENTS ACT
Center for American and International Law
49th Annual Intellectual Property Conference
Plano, Texas
November 8, 2011
Marc A. Hubbard
Gardere Wynne Sewell, LLP
mhubbard@gardere.com
2. Facilitators
• Larry Bassuk Texas Instruments
• Brad Williams Baker Botts
• Brian McCormack Baker McKenzie
• Chris Rourk Jackson Walker
• Marc Delflache Fulbright Jaworski
• Steven Geiszler SNR Denton
3. What s New
• Absolute novelty with grace period for • Supplemental examination
inventor disclosures
• Limits on joinder of parties in patent
• Derivation proceedings infringement action
• Additional inter partes proceedings • Pre-issuance submissions by third
parties §122(e)
• Post grant review (9 months after;
any grounds under §§101, 102, 103, • Tax strategies deemed within prior art
112, but not best mode)
• Virtual marking
• Inter partes review (any time after
• No adverse inference from failure to
opposition period; all patents; only seek advice of counsel, or to produce
§§102/103; publications only) such advice, in willfulness / inducement
• Financial business methods review cases
(called the Transitional Program for
Covered Business Methods )
4. What s Changed
• Some liberalization of requirements for inventor declarations
• False-marking actions — competitive injury requirement (no qui tam)
• Expansion of prior commercial user defense
5. What s Gone
• Section 102 as we know it, including 102(c)(abandonment), 102(e)
(applications filed before invention), 102(g)(prior invention as determined
by interference)
• Interference proceedings under §§135, 291 (retained for claims with
effective filing dates before March 16, 2013)
• Inter partes reexamination (cannot be filed after Sept. 16, 2012)
• Ex parte reexamination is unchanged
• Best mode defense (but best mode retained in Section 112)
6. Effective Now or Very Soon
• September 16, 2011 • 15% surcharge goes into effect;
PTO keeps all fees
• Best mode defense elimination
• November 15, 2011
• Joinder of parties
• Paper filing surcharge
• Marking changes
• Prior commercial use defense
• Fee setting authority
• Micro-entity fees (but not until
fee setting authority exercised)
• September 26, 2011
7. Future Effective Dates
• September 16, 2012
• New inter partes proceedings
• Pre-issuance 3rd party submissions
• Inventor declaration changes
• Transitional business method patent review
• March 16, 2013
• First to file provisions
• New §102
• Derivation proceedings; elimination of interference
8. Recommended Topics for Discussion
• Preparing clients for transition to first inventor to file regime
• Role of new prior commercial user defense in advising a client on a
patenting strategy
• Contending with new requirements for joinder of multiple defendants
• strategies being used by plaintiffs
• Strategies for 3rd party participation in patenting
• Post grant review
• Pre-issuance third party submissions
• Interplay of new inter partes review and litigation
9. First inventor to file — absolute novelty
(§102(a))
• Current §102 completely replaced
• New §102(a) defines what is prior art
• Claimed invention cannot have been —
• (1) patented, described in printed publication, in public use, or on
sale, or otherwise available to public prior to effective filing date of
claim
• (2) described in granted patent or an application
• which has published or deemed published,
• names another inventor, and
• has an earlier effective filing date
10. Exceptions to Absolute Novelty (§102(b))
• Disclosures within 1 year of effective filing date are not prior art under §102(a)(1) if —
• by inventor or others who obtained subject matter from inventor, or
• subject matter disclosed had been previously disclosed publicly by inventor or
someone who obtained it from the inventor
• Covers 3rd parties who did not derive it from inventor
• Subject matter in a prior filed application is not prior art under §102(a))(2) as to a claim
with later effective filing date if —
• it was obtained from inventor (directly or indirectly)
• publicly disclosed by inventor (or someone who obtained it from the inventor)
before the effective filing date of the subject matter
• both the prior filed subject matter and the claimed invention are commonly owned,
or subject to obligation to assign, as of claim s effective filing date
11. First to File — As Compared to Other Countries
• A poor man s priority document
• removal from prior art of all disclosures after publication by inventor for
up to a year
• Secret prior art
• Prior filed applications can be used to determine obviousness as of the
filing date rather than as of their publication date
• Grace periods for inventor disclosures
• Exclusion from prior art commonly owned inventions, and inventions
arising from joint research agreements
12. First to Invent Issues
• Are public use and on sale activities prior art if they do not disclose the
invention?
• A person shall be entitled to a patent unless—(1) the claimed invention
was patented, described in a printed publication, or in public use, on sale,
or otherwise available to the public before the effective filing date of the
claimed invention;
• Legislative history
• If secret public use and sales would qualify as prior art, would these be
disclosures within the meaning of the 102(b)?
13. Prior Commercial User Defense (§273)
• Expansion of prior inventor defense under §273 that had been limited to
methods for conducting business to all subject matter.
• Subject matter of commercial use limited to either (1) processes or (2)
machines, etc., used in manufacturing or commercial processes (and certain
nonprofit lab uses)
• Commercial use of subject matter must have first occurred at least one year
prior to effective filing date of patent or inventor s public disclosure; cannot
have been derived from inventor
• Personal; cannot be transferred except with business; not a license
• Right is lost when commercial use establishing right is abandoned
14. Joinder of Parties (new §299)
• Effective immediately
• No joinder of defendants in single action, or consolidation of actions for
trial, unless —
• any relief
• is asserted against the parties jointly, severally or in the alternative
• arises out of the same transaction or occurrence, or out of the same
series of transactions or occurrences
• relating to infringement by the same product or process
• and, questions of fact common to all defendants will arise in action
• Mere allegations that each defendant has infringed is insufficient
15. Pre-issuance Submissions
• New §122(e)
• Any third party may submit for consideration any printed publication of
potential relevance to examination of an application
• Submission must be made before —
• Notice of allowance mailed, or
• date of first rejection (but may submit after rejection if within 6
months from publication)
• Must also include concise explanation of relevance
• Fee required
16. Post Grant Review
• Must be filed within 9 months of grant of patent
• May be opposed on the following grounds:
• Invalidity on any ground specified in part II of Title 35 as a condition for
patentability or for failure to comply with any requirement of §112 (best
mode excluded)
• Failure to comply with §251 (reissue)
• Threshold: information presented in the petition, if such information is
not rebutted, would demonstrate that it is more likely than not that at least
1 of the claims challenged in the petition is unpatentable
• Petition must identify real parties in interest
17. Inter Partes Review
• Grounds limited to §§102 and 103
• Prior art limited to printed publications and patents
• Threshold: reasonable likelihood of petitioner prevailing on cancellation of
at least one claim challenged in the petition
• Must be concluded within 1 year (or 18 months if extended by Director)
• Must be brought within 1 year of claim of infringement by patent owners,
or before DJ action is filed by accused infringer (counter claims do not
count)
18. Estoppel for Post Grant Review and Inter
Partes Review
• Estoppel effect is expanded to all PTO proceedings
• Standard: raised or could have raised
• PTO proceeding:
• Petitioner, or his real party in interest or privy, may not request any proceeding
before PTO with respect to a claim on any ground that that the petitioner raised
or reasonably could have raised during review that resulted in final written
decision.
• Civil action or other proceeding:
• Petitioner, or his real party in interest or privy, may not assert either in a civil
action arising in whole or in part under section 1338 of title 28 or in a proceeding
before the International Trade Commission that a claim in a patent is invalid on
any ground that the petitioner raised or reasonably could have raised during a
review of the claim that resulted in a final written decision.
19. Marc Hubbard | Partner
Gardere Wynne Sewell LLP
1601 Elm Street, Suite 3000 | Dallas, TX 75201
214.999.4880 direct
214.208.2601 cell
214.999.3880 fax
mhubbard@gardere.com
www.gardere.com