Leahy-Smith American Invents Act of 2011.
First Inventor to File with Grace(FTFG).
Changes Already in Place.
Changes for Next Year (2012).
Putting it into Practice.
What's Next for the AIA?
What It Might Mean for the Average Practitioner.
Patent Reform Updates.
Current Status.
Patent Reform Act.
First Inventor to File.
Rules.
Patent Quality.
Kappos' Visions for the USPTO.
Changes in the New and Improved Version.
Recon 2011: Recapping New Laws from 2010 and The Who When and What to Expect...Allen Matkins
This document summarizes new laws from 2010 and previews what to expect in 2011. It discusses the Dodd-Frank Act, which regulates the financial industry, California's new expedited one-day jury trial process, and new employment laws. It provides an overview of key provisions of these new laws and their potential impact.
Topics covered in this month’s patent group presentation include prioritized examination, discussion of a case regarding the De Novo standard of review, and discussion of recent case law following the Bilski decision.
Georgetown Univ. Law Center Conference: Post-Grant Patent Proceedings: Are th...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Statistics on Post-Grant Proceedings
- Rule Changes for Post-Grant Proceedings
- IPR as Part of a Litigation Strategy
- Patent Owner’s Strategy in an IPR
- IPR Termination
The presentation discusses the different techniques for speeding up examination at the US Patent and Trademark Office (USPTO). Topics covered in this presentation include petitions to make special, accelerated examination, prioritized examination, Patent Prosecution Highway (PPH), and the First Action Interview Pilot Program. In addition, some different filing scenarios using these techniques are discussed.
This document summarizes some key changes to US patent law and litigation under the America Invents Act of 2011. It discusses how the Act transitions the US to a "first to file" system from a "first to invent" system, establishes a nine-month post-grant review period, and limits claims for "false marking" to only allow competitors who suffered injury to bring such claims. The changes will impact patent litigation strategies for both plaintiffs and defendants.
Patent litigation isn’t what it used to be.
Monumental changes to U.S. patent law have changed the rules of the litigation game. Basic assumptions about patent law that existed just a few years ago no longer apply. The changes have raised new questions about venue, costs and validity. The shifts in the patent landscape are forcing companies and their counsel to re-evaluate their intellectual property portfolios. Some in the patent bar are calling it a “brave new world.”
What It Might Mean for the Average Practitioner.
Patent Reform Updates.
Current Status.
Patent Reform Act.
First Inventor to File.
Rules.
Patent Quality.
Kappos' Visions for the USPTO.
Changes in the New and Improved Version.
Recon 2011: Recapping New Laws from 2010 and The Who When and What to Expect...Allen Matkins
This document summarizes new laws from 2010 and previews what to expect in 2011. It discusses the Dodd-Frank Act, which regulates the financial industry, California's new expedited one-day jury trial process, and new employment laws. It provides an overview of key provisions of these new laws and their potential impact.
Topics covered in this month’s patent group presentation include prioritized examination, discussion of a case regarding the De Novo standard of review, and discussion of recent case law following the Bilski decision.
Georgetown Univ. Law Center Conference: Post-Grant Patent Proceedings: Are th...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Statistics on Post-Grant Proceedings
- Rule Changes for Post-Grant Proceedings
- IPR as Part of a Litigation Strategy
- Patent Owner’s Strategy in an IPR
- IPR Termination
The presentation discusses the different techniques for speeding up examination at the US Patent and Trademark Office (USPTO). Topics covered in this presentation include petitions to make special, accelerated examination, prioritized examination, Patent Prosecution Highway (PPH), and the First Action Interview Pilot Program. In addition, some different filing scenarios using these techniques are discussed.
This document summarizes some key changes to US patent law and litigation under the America Invents Act of 2011. It discusses how the Act transitions the US to a "first to file" system from a "first to invent" system, establishes a nine-month post-grant review period, and limits claims for "false marking" to only allow competitors who suffered injury to bring such claims. The changes will impact patent litigation strategies for both plaintiffs and defendants.
Patent litigation isn’t what it used to be.
Monumental changes to U.S. patent law have changed the rules of the litigation game. Basic assumptions about patent law that existed just a few years ago no longer apply. The changes have raised new questions about venue, costs and validity. The shifts in the patent landscape are forcing companies and their counsel to re-evaluate their intellectual property portfolios. Some in the patent bar are calling it a “brave new world.”
Below is a presentation examining whether the AIA will change patent litigation in the Eastern District of Texas. The presentation explores aspects of the AIA, including changes to joinder, Post Grant Review and Inter Partes Review and how each of these changes in the law may impact patent litigation, particular with regard to the Eastern District of Texas.
The document summarizes the key changes to the Federal Rules of Civil Procedure that took effect on December 1, 2015. The amendments aimed to reduce delays, narrow the scope of discovery, and clearly define consequences for failure to preserve electronically stored information. Specific rules that were amended include Rules 1, 4, 16, 26, 30-34, 37, 55, and 84. The changes included shortening various time frames, emphasizing proportionality in discovery, and revising Rule 37 to provide clearer standards around sanctions for lost ESI.
Session V. Estoppel and Privity in US PTO Post-Grant ProceedingsWilmerHale
This document summarizes a presentation on estoppel and privity in post-grant proceedings at the USPTO. It discusses how estoppel applies to petitioners as well as those in privity, including real parties in interest. Privity is a fact-dependent concept evaluated on a case-by-case basis considering control, financial contribution, and other factors. Issues of privity typically arise when the patent owner seeks to prevent a proceeding or assert estoppel, and presenters provided practice tips for evaluating privity and addressing related arguments.
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.
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.
Georgetown Univ. Law Center Conference: Patent Law Developments in the Suprem...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Patent Eligibility: The Alice Effect
- Attorney’s Fees: The Octane/Highmark Fallout
- Indefiniteness: The Nautilus Voyage
- Patent Damages: Reasonable royalties after VirnetX and D-Link
- Injunctive Relief: eBay, Apple/Samsung, and the ITC
- Inter Partes Reviews: The Gathering Appellate Storm
- The Next Wave: Teva, Commil, Kimble, Google
Topics covered in this month’s presentation included:
• Federal Circuit “computer readable medium” claim eligibility
• Update on patent eligibility of isolated DNA
• USPTO’s Ombudsman Program became permanent
• USPTO just issued Patent No. 8,000,000
Georgetown Univ. Law Center Conference: Strategies for Worldwide Patent Litig...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Trend toward globalization of IP litigation
- The world is becoming increasingly interconnected
* Global supply and distribution chains
* Markets outside the U.S. taking on even greater importance
* Proliferation of standards
- Litigation outside the U.S. may offer important strategic advantages
Overview on Information Disclosure Statement Practice by Justin CassellWorkman Nydegger
This document provides an overview of information disclosure statement (IDS) practice. It defines the duty of disclosure as providing the USPTO with any information known to the applicant that is material to patentability. A breach of this duty can result in a finding of inequitable conduct and render a patent unenforceable. For an IDS, the party asserting inequitable conduct must prove both a material reference was withheld as well as intent to deceive the USPTO. The standard for materiality requires that the PTO would not have allowed the claim had it been aware of the undisclosed prior art. The timing for filing an IDS depends on the prosecution stage.
The document discusses the Patent Prosecution Highway (PPH) program which allows applicants to request expedited examination of corresponding applications filed in multiple patent offices. It provides an overview of how PPH works, its purpose of promoting work sharing and efficiency. The history and implementation of global and IP5 PPH pilot programs are described. Eligibility requirements and required documents for PPH requests to the USPTO are outlined. The processing of requests as granted, dismissed or denied is also summarized.
This document discusses changes to US patent law under the Leahy-Smith America Invents Act of 2011, including transitioning to a first-inventor-to-file system with a first-to-publish grace period, new post-issuance proceedings to challenge patents, and granting the USPTO fee-setting authority. It provides an overview of the timeline for implementing various provisions of the Act and examines the practical impacts, such as more patent filings for less complicated inventions and increased options but also expense for more complicated cases. The effects on different technologies are considered, noting differences between idealized versus realistic patent filing practices.
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.
Claiming Strategies for Medical Device Patent Application PLUS - Bonus Update...Patterson Thuente IP
Good Application Practice.
Good Patent Claiming.
Claims.
Avoiding Contributory/Indirect Infringement.
US Patent Reform 2011.
FTFG.
First-to-Publish.
Introducing a Whole Gaggle of PIPs.
Coming Soon: Lots More Rules!
The so-called "patent reform" has been in the air for many years in the United States but, after nearly a decade of legislative efforts, it is now real. On September 16, 2011, President Barack Obama signed the "America Invents Act" into law (hereinafter "AIA"), an Act
qualified by the White House as "the most significant reform of the Patent Act since 1952".
While some changes are relatively minor and simple, some others constitute dramatic changes to the US patent system. Many changes
came into effect immediately while others will go into effect very soon. This bulletin highlights key aspects of the America Invents Act.
On September 16, 2011, President Obama signed the America Invents Act (AIA) into law. Highly controversial among patent practitioners, the AIA mandates sweeping changes to the patent system of the United States – changes that patrons of the Patent and Trademark Office (PTO) should be familiar with. Many provisions of AIA do not take effect for a year or more after this date including those most widely known:
Many provisions of the AIA do not take effect for at least a year after this date including those most far-reaching – (1) procedures for post-grant review proceedings before the U.S. Patent and Trademark Office (after September 16, 2012) and (2) a change to a first inventor to file system (after March 16, 2013). Other provisions, however, take immediate effect as of the day of signature (September 16, 2011) or as of the day of enactment (September 26, 2011). Our summary lists most of the major provisions according to their effective dates. We have only hit the high points – the actual text of the AIA runs well over a hundred pages.
The PTO is phasing out several programs and implementing new fees and rules:
1) The Backlog Reduction Stimulus Plan and Green Technology Pilot Program, which provided expedited patent examination, will end on December 31, 2011 and March 30, 2012 respectively.
2) The Extended Missing Parts Pilot Program deadline for requests was extended to December 31, 2012.
3) A $400 fee will be charged for non-electronic original patent filings to encourage e-filing.
4) Proposed changes aim to improve the assignment database by requiring earlier disclosure and updates of assignee information.
The document summarizes 15 frequently asked questions about the impact of the Leahy-Smith America Invents Act of 2011 (AIA) on patent law. The main impacts are changing from a "first to invent" to a "first to file" system, expanding the definition of prior art, and increasing the urgency to file patent applications early. While the AIA establishes new procedures to challenge patents, it does not make major changes to patentability requirements or affect patent trolls or damages awards. The AIA also aims to improve the operations of the US Patent and Trademark Office but does not fully end fee diversion.
The document provides an overview of recent developments in patent law, including:
1) The America Invents Act transitioned the U.S. to a first-inventor-to-file system and established post-grant review procedures.
2) PCT filings now allow the assignee to be the applicant.
3) Courts and the USPTO are pursuing greater harmonization of global patent systems following changes to U.S. law.
American Invents Act (AIA) Overview.
AIA Transitions.
Changes.
Post Issuance Proceedings.
What You Need For a Patent.
Comparisons.
First Inventor to File with Grace (FTFG).
Prosecution Under FTFG.
This document discusses various patent filing options in the US and globally, including:
- US provisional applications can establish priority for 12 months at a low cost but are not examined and will not mature into a patent.
- US utility applications can issue as a patent if approved after examination but have higher filing and examination costs. Maintenance fees are also required over the lifetime.
- The PCT system allows filing in one language then deciding on national phase filings in other countries within 30 months, providing more time to assess value in foreign markets. However, publication occurs at 18 months.
- National phase prosecution varies by country and standards are not uniform, so examination results can differ significantly.
Below is a presentation examining whether the AIA will change patent litigation in the Eastern District of Texas. The presentation explores aspects of the AIA, including changes to joinder, Post Grant Review and Inter Partes Review and how each of these changes in the law may impact patent litigation, particular with regard to the Eastern District of Texas.
The document summarizes the key changes to the Federal Rules of Civil Procedure that took effect on December 1, 2015. The amendments aimed to reduce delays, narrow the scope of discovery, and clearly define consequences for failure to preserve electronically stored information. Specific rules that were amended include Rules 1, 4, 16, 26, 30-34, 37, 55, and 84. The changes included shortening various time frames, emphasizing proportionality in discovery, and revising Rule 37 to provide clearer standards around sanctions for lost ESI.
Session V. Estoppel and Privity in US PTO Post-Grant ProceedingsWilmerHale
This document summarizes a presentation on estoppel and privity in post-grant proceedings at the USPTO. It discusses how estoppel applies to petitioners as well as those in privity, including real parties in interest. Privity is a fact-dependent concept evaluated on a case-by-case basis considering control, financial contribution, and other factors. Issues of privity typically arise when the patent owner seeks to prevent a proceeding or assert estoppel, and presenters provided practice tips for evaluating privity and addressing related arguments.
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.
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.
Georgetown Univ. Law Center Conference: Patent Law Developments in the Suprem...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Patent Eligibility: The Alice Effect
- Attorney’s Fees: The Octane/Highmark Fallout
- Indefiniteness: The Nautilus Voyage
- Patent Damages: Reasonable royalties after VirnetX and D-Link
- Injunctive Relief: eBay, Apple/Samsung, and the ITC
- Inter Partes Reviews: The Gathering Appellate Storm
- The Next Wave: Teva, Commil, Kimble, Google
Topics covered in this month’s presentation included:
• Federal Circuit “computer readable medium” claim eligibility
• Update on patent eligibility of isolated DNA
• USPTO’s Ombudsman Program became permanent
• USPTO just issued Patent No. 8,000,000
Georgetown Univ. Law Center Conference: Strategies for Worldwide Patent Litig...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Trend toward globalization of IP litigation
- The world is becoming increasingly interconnected
* Global supply and distribution chains
* Markets outside the U.S. taking on even greater importance
* Proliferation of standards
- Litigation outside the U.S. may offer important strategic advantages
Overview on Information Disclosure Statement Practice by Justin CassellWorkman Nydegger
This document provides an overview of information disclosure statement (IDS) practice. It defines the duty of disclosure as providing the USPTO with any information known to the applicant that is material to patentability. A breach of this duty can result in a finding of inequitable conduct and render a patent unenforceable. For an IDS, the party asserting inequitable conduct must prove both a material reference was withheld as well as intent to deceive the USPTO. The standard for materiality requires that the PTO would not have allowed the claim had it been aware of the undisclosed prior art. The timing for filing an IDS depends on the prosecution stage.
The document discusses the Patent Prosecution Highway (PPH) program which allows applicants to request expedited examination of corresponding applications filed in multiple patent offices. It provides an overview of how PPH works, its purpose of promoting work sharing and efficiency. The history and implementation of global and IP5 PPH pilot programs are described. Eligibility requirements and required documents for PPH requests to the USPTO are outlined. The processing of requests as granted, dismissed or denied is also summarized.
This document discusses changes to US patent law under the Leahy-Smith America Invents Act of 2011, including transitioning to a first-inventor-to-file system with a first-to-publish grace period, new post-issuance proceedings to challenge patents, and granting the USPTO fee-setting authority. It provides an overview of the timeline for implementing various provisions of the Act and examines the practical impacts, such as more patent filings for less complicated inventions and increased options but also expense for more complicated cases. The effects on different technologies are considered, noting differences between idealized versus realistic patent filing practices.
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.
Claiming Strategies for Medical Device Patent Application PLUS - Bonus Update...Patterson Thuente IP
Good Application Practice.
Good Patent Claiming.
Claims.
Avoiding Contributory/Indirect Infringement.
US Patent Reform 2011.
FTFG.
First-to-Publish.
Introducing a Whole Gaggle of PIPs.
Coming Soon: Lots More Rules!
The so-called "patent reform" has been in the air for many years in the United States but, after nearly a decade of legislative efforts, it is now real. On September 16, 2011, President Barack Obama signed the "America Invents Act" into law (hereinafter "AIA"), an Act
qualified by the White House as "the most significant reform of the Patent Act since 1952".
While some changes are relatively minor and simple, some others constitute dramatic changes to the US patent system. Many changes
came into effect immediately while others will go into effect very soon. This bulletin highlights key aspects of the America Invents Act.
On September 16, 2011, President Obama signed the America Invents Act (AIA) into law. Highly controversial among patent practitioners, the AIA mandates sweeping changes to the patent system of the United States – changes that patrons of the Patent and Trademark Office (PTO) should be familiar with. Many provisions of AIA do not take effect for a year or more after this date including those most widely known:
Many provisions of the AIA do not take effect for at least a year after this date including those most far-reaching – (1) procedures for post-grant review proceedings before the U.S. Patent and Trademark Office (after September 16, 2012) and (2) a change to a first inventor to file system (after March 16, 2013). Other provisions, however, take immediate effect as of the day of signature (September 16, 2011) or as of the day of enactment (September 26, 2011). Our summary lists most of the major provisions according to their effective dates. We have only hit the high points – the actual text of the AIA runs well over a hundred pages.
The PTO is phasing out several programs and implementing new fees and rules:
1) The Backlog Reduction Stimulus Plan and Green Technology Pilot Program, which provided expedited patent examination, will end on December 31, 2011 and March 30, 2012 respectively.
2) The Extended Missing Parts Pilot Program deadline for requests was extended to December 31, 2012.
3) A $400 fee will be charged for non-electronic original patent filings to encourage e-filing.
4) Proposed changes aim to improve the assignment database by requiring earlier disclosure and updates of assignee information.
The document summarizes 15 frequently asked questions about the impact of the Leahy-Smith America Invents Act of 2011 (AIA) on patent law. The main impacts are changing from a "first to invent" to a "first to file" system, expanding the definition of prior art, and increasing the urgency to file patent applications early. While the AIA establishes new procedures to challenge patents, it does not make major changes to patentability requirements or affect patent trolls or damages awards. The AIA also aims to improve the operations of the US Patent and Trademark Office but does not fully end fee diversion.
The document provides an overview of recent developments in patent law, including:
1) The America Invents Act transitioned the U.S. to a first-inventor-to-file system and established post-grant review procedures.
2) PCT filings now allow the assignee to be the applicant.
3) Courts and the USPTO are pursuing greater harmonization of global patent systems following changes to U.S. law.
American Invents Act (AIA) Overview.
AIA Transitions.
Changes.
Post Issuance Proceedings.
What You Need For a Patent.
Comparisons.
First Inventor to File with Grace (FTFG).
Prosecution Under FTFG.
This document discusses various patent filing options in the US and globally, including:
- US provisional applications can establish priority for 12 months at a low cost but are not examined and will not mature into a patent.
- US utility applications can issue as a patent if approved after examination but have higher filing and examination costs. Maintenance fees are also required over the lifetime.
- The PCT system allows filing in one language then deciding on national phase filings in other countries within 30 months, providing more time to assess value in foreign markets. However, publication occurs at 18 months.
- National phase prosecution varies by country and standards are not uniform, so examination results can differ significantly.
The Leahy-Smith American Invents Act: More Complicated than 3D Chess?Patterson Thuente IP
American Invents Act (AIA).
Changes.
Proceedings.
Art.
How Long Will it Take to Cut Over to AIA?
How Much Will it Take to Get Up to Speed on the AIA?
First-to-File with Grace (FTFG).
Tips & Pointers for Transition.
What's Next?
The document summarizes recent developments regarding patent reform legislation. It discusses the key provisions of two bills: H.R. 1260 and S. 515. Both bills would transition the U.S. to a first-inventor-to-file system and establish new derivation proceedings to replace interferences. They also address provisions around enhanced damages, inequitable conduct, interlocutory review of claim construction, and post-issue proceedings. The status and expected timeline of the bills are also summarized.
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 document discusses the USPTO's Track One Prioritized Examination process, which allows patent applications to be expedited for an additional fee. It notes that the average time to obtain a patent through this process is less than six months. The author provides an example where they obtained notices of allowance for two clients' applications in under seven months. The process requires electronic filing and limits the number of claims and independent claims. It guarantees the application will be examined within four months if all requirements are met. The program allows applicants to secure patent protection faster and gain a competitive advantage.
The document discusses the USPTO's Green Technology Petition Pilot program. It provides an overview of the program goals and requirements, common filing errors, and statistics. Key points include that the pilot allows petitions to advance green technology patent applications out of turn for expedited examination, over 3,000 petitions have been granted to date, and the program may be extended in the future.
Learn more about the United States Patent and Trademark Office (USPTO) Clean Technology Partnership and Green Technology Pilot Programs.
Clean technology includes products and services that improve operational performance, productivity or efficiency while reducing costs, inputs, energy consumption, waste or pollution. Alternative energy sources, water and gas purification and soil remediation, as well as other technologies centered on increasing energy efficiency and non-toxic production incorporate clean technology.
This slideshow was presented during the USPTO's first Clean Technology Partnership Meeting (April 27, 2011).
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.
Negotiating and Closing Patent Purchase Transactions in the post-Alice/PTAB R...Patexia Inc.
Attendees will learn what the buzz words “patent monetization” actually mean and what entities in fact monetize patents (operating companies/NPEs).
Attendees will further hear different reasons for the buying and selling of patents.
The webinar will then present a few of the changes that have occurred in the market over the last couple of years (including, the Alice decision, PTAB/IPR proceedings, fee shifting) and the effects these changes have had on the market.
In particular, we will discuss how such changes have affected the way patent purchase transactions are sourced, negotiated and drafted.
Lastly, we will offer up some tips for how to successfully buy/sell patents in today’s market.
Similar to Protecting Innovation Under the American Invents Act (20)
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The United States Constitution grants Congress the power to enact laws to protect inventions and creative works. Congress has used this power to establish the patent and copyright systems, which provide limited-time monopolies for inventors and creators in exchange for publicly disclosing their work. These systems aim to promote innovation and creativity by rewarding inventors and artists with exclusive rights for a limited period before their works enter the public domain, allowing others to build upon their ideas.
IP Attorney - Paul Onderick - We get to see new, fresh ideas before anyone elsePatterson Thuente IP
Paul Onderick said that working at an early-stage startup allows him to see new ideas before others. He enjoys being exposed to fresh concepts at a company before products and services are released to the public. Working at an early startup provides the opportunity to help shape new products and technologies from the beginning.
Jim Patterson argues that excellence stems from empathy. He believes that understanding others and their perspectives is key to achieving high quality work. By putting oneself in another's shoes, one can gain insights that lead to improved performance and outcomes.
Jim Patterson's message is short and concise, focusing on just one key point - that employees should focus their efforts on clients. Keeping clients as the top priority will help drive business success.
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Innovation is key to economic growth. Eric Chadwick notes that innovation drives the economy forward. New ideas and technologies are what fuel economic activity and progress.
Dan Bruzzone believes strongly in the power of ideas. He values ideas above all else, as evidenced by his quote "Ideas are worth everything." This short quote encapsulates Bruzzone's view that ideas have immense worth and should be highly valued.
IP Attorney - Chris Hansen - It's possible to cut corners, but we absolutely ...Patterson Thuente IP
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X conceives Invention A+B first but files an application after Y independently publishes disclosure of A+B. Y's publication is less than one year before X's filing. Under the assumptions, A+B is patentable over other prior art and each inventor independently conceived the invention. The analysis examines whether X is entitled to a patent under post-AIA first-inventor-to-file law and how it compares to pre-AIA first-to-invent law.
America Invents Act (AIA) Patent Scenarios.
AIA First Inventor to File with Grace (FTFG).
Suggested Post-AIA Filing Strategies.
Future of IP.
A Patent Troll Problem.
U.S. Patents and Lawsuits.
Drones.
Flying Saucers.
Early Drones.
Gaming Drones.
Drone Market.
US Regulatory Landscape.
What is IP?
Offensive IP Tools.
Good Patenting.
Freedom to Operate (FTO).
IP Insurance.
UP Patents and Lawsuits.
America Invents Act (AIA).
First-Inventor-to-File (FITF).
"PTAB" Patent Death Squad.
The Future of IP.
For Effective Filing Dates and Other AIA Best Practices.
Big Changes.
Comparisons.
First-Inventor-to-File (FITF).
Mind the Gap.
Effective Filing Date (EFD).
AIA Team Exemption.
Suggested FITF Strategies.
Double Patenting.
Suggested AIA Strategies.
Advanced Practice Under the American Invents Act (AIA).
Post Issuance Proceedings.
Kill Rates.
IPX.
Review Proceedings.
Insights and Lessons.
Trial Timeline.
What's Next?
What's Your Strategy?
Prior Art.
Art Exceptions.
FITF "Scenarios".
Comparisons.
Transition Gap.
FITF Rules.
Scope of Patent Filing.
Prosecution Under First Inventor to File with Grace (FTFG).
Suggested FITF Strategies.
More Complicates than 3D Chess?
America Invents Act (AIA).
Timetable for AIA Transitions.
Changes.
Proceedings.
Review.
Art.
First Inventor to File with Grace (FTFG).
Tips/Pointers for Transitions.
What's Next?
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
Finding Infringers and Then What?
The Academy View of Competitive Landscapes.
The Academy View of Developing Technologies.
Strategy Attribute Matrix.
Finding Infringers.
How Will You Pay For This?
Changing the Game.
First-to-File w/ Grace (FTFG).
Capital Punishment by Saif Javed (LLM)ppt.pptxOmGod1
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Protecting Innovation Under the American Invents Act
1. June 26, 20181
Protecting Innovation the American Invents Act
Bradley Thorson
October 13, 2011
Leahy-Smith American Invents Act of 2011
First Inventor to File with Grace (FTFG)
Changes Already in Place
Changes for Next Year (2012)
Putting it into Practice
What’s Next for the AIA
3. Leahy-Smith America Invents Act of 2011
Signed into law September 16, 2011
The most significant change to US patent law since 1836
Three significant changes:
Shift from first-to-invent to first-inventor-to-file with first-to-publish grace
period
Fee-setting authority for the USPTO
Revamp of post-issuance proceedings
Contentious litigation issues not included (e.g. damages, inequitable
conduct)
Stated goal is to encourage investment in innovation and stimulate job
growth
October 13, 20113
5. I. First-Inventor-to-File
Global harmonization? Not completely
Patent awarded to first person to file a patent application, unless
2nd filer can show that the 1st filer derived the invention from 2nd filer
2nd filer made a public disclosure of the invention before the 1st filer’s filing
date
Goes into effect March 16, 2013
Eliminates “Hilmer” doctrine
Accords foreign national applications prior art status as of their foreign
filing date if subsequently filed directly in U.S. or as PCT, regardless of
filing language
October 13, 20115
6. Scenario 1: and both file, but neither publishes
Scenario 2: publishes and files, but only publishes
Scenario 3: and both publish and file
Party Party
First Inventor to File w/ Grace (FTFG) –
A Few Basic Examples of How New § 102
works under the AIA
6
6 October 13, 2011
7. Scenario 1.1: invents first and files first before
Party
Party
AIA RESULT: No change from current
First To Invent (FTI)
wins
7 October 13, 2011
8. Scenario 1.2: invents first, but files first
Party
Party
AIA RESULT: Change from FTI – Old 102(a)/(g)
loses can no longer swear behind or win by
interference – now must “publish ahead” to
establish a First-To-Publish (FTP) Grace Period
8 October 13, 2011
9. Scenario 1.3: invents first, files first, but establishes FTP
Grace period by publishing before files
Party
Party
A’s FTP
Grace
AIA RESULT: No effective change – New 102(b)(2)(B)
wins FTP Grace period exempts filing even though it is
before filing
9
9 October 13, 2011
10. Scenario 2.1: invents first and files first before is
publicly available
Party
Party
AIA RESULT: No change from FTI
wins
10
10 October 13, 2011
11. Party
Scenario 2.2a: invents first, but files after has itself
been publicly available for more than 1 year
A’s Full Year Grace
AIA RESULT: No effective change – New 102(b)(1)(A)
loses public actions are outside Full Year Grace
period for actions by/for or derived from inventor
11
11 October 13, 2011
12. Party
Scenario 2.2b: invents first, but files after has itself
been publicly available for less than 1 year
A’s Full Year Grace
AIA RESULT: No effective change – New 102(b)(1)(A)
wins public actions are inside Full Year Grace period
for actions by/for or derived from inventor
12
12 October 13, 2011
13. Scenario 2.3: invents first, but files after has been
publicly available for more than 1 year
Party
Party 1 year
AIA RESULT: No change from FTI
loses
13
13 October 13, 2011
14. Scenario 2.4a: invents first, but files after has been
publicly available for less than 1 year
Party
Party
1 year
AIA RESULT: Change from FTI - New 102(b)(1)(B)
loses 3rd party First To Publish (FTP) Grace period
only if makes invention publicly available
14 October 13, 2011
15. Scenario 2.4b: invents first and publishes first, but files after
has been publicly available for less than 1 year
Party
Party
A’s FTP
Grace
1 year
AIA RESULT: Change from FTI - New 102(b)(1)(B)
wins If is publicly available for less than 1 year and
before is publicly available – inside FTP Grace period
15 October 13, 2011
16. Scenario 2.4c: invents first, but publishes and files after has
been publicly available for less than 1 year
Party
Party
1 year
A’s FTP
AIA RESULT: Change from FTI - New 102(b)(1)(B)
loses If is publicly available for less than 1 year but
after was publicly available – outside FTP grace period
16 October 13, 2011
17. A’s FTP
Grace
B’s FTP
Scenario 3: invents first, publishes first and files before
files or is publicly available for less than 1 year
Party
Party
1 year
AIA RESULT: No effective change – New 102(b)(1)(B)
wins FTP Grace period (exempting public activity) is
before FTP Grace period
17 October 13, 2011
18. II. USPTO Fee-Setting Authority
USPTO can set its own fees
Fees in excess of annual appropriation will be placed in a trust account with
Congressional authorization required to access trust account
Intended to provide stable and increased funding for USPTO staffing and
systems to address patent application backlog
About 18 months before USPTO proposed new fees begin to take effect
Immediate 15% transition surcharge on Patent Office fees
Extra $400 fee for not filing electronically—except design, plant and
provisional applications—as of November 15, 2011
October 13, 201118
19. III. Revamping Post-Issuance Proceedings
Phases out interferences and inter partes reexamination
Several new post-issuance proceedings designed to improve methods for
determining patent validity at the Patent Office, rather than in court
Post-Grant Review
Inter-Partes Review
Transitional Program for Financial Business Method Patents
Supplemental Examination
Take effect in 1 year, after implementation of rules packages
Proceedings run by Administrative Patent Judge
Initiated only if petition shows “reasonable likelihood of prevailing on at least
one claim”
October 13, 201119
20. End of multiple defendant
lawsuits?
Addresses biggest actual change
in patent litigation over last 3
decades – increasing # of
defendants/case
Will likely mean numerically more
patent lawsuits
But, there will likely be fewer total
defendants than today
Potential “loopholes” are already
being tested
20
Changes Already in Place
October 13, 2011
21. Changes Already in Place
Expanded prior user rights
“Personal” defense to infringement allegations for prior “commercial”
use of a claimed invention, even if the use was secret.
Must be proven by clear and convincing evidence
Does not establish invalidity of the patent
Abandonment of the commercial use at any time eliminates the
defense
University exemption with an exception to the exception
• Defense cannot be asserted if the claimed invention was, at the time the invention was made, owned
or subject to an obligation of assignment to either an institution of higher education or a technology
transfer organization whose primary purpose is to facilitate the commercialization of technologies
developed by an institution of higher education.
• BUT – the exception does not apply if any of the activities required to reduce to practice the subject
matter of the claimed invention could not have been undertaken using funds provided by the Federal
Government. (e.g. embryonic stem cell research, etc.)
October 13, 201121
22. Changes Already in Place
Patent marking
Effective end of false marking suits
Start of “virtual” marking
End of best mode
For litigation – failure to disclose “best mode” is no longer a basis for
invalidity of a patent
Doesn’t really change prosecution practice
October 13, 201122
23. Changes Already in Place
No patents on human organisms
Intended to codify current law
Micro-entities
75% fee reduction
<5 patents by inventor
End of tax strategy patents
Exempts strategies for reducing or avoiding taxes
Willful infringement
Codifies Seagate
October 13, 201123
24. Changes Already in Place
Expedited prosecution option
$4800/$2400 fee (~$7K total) – no requirement for ESD as with
Accelerated Examination
Guaranteed final rejection or allowance in 1 year
4 independent and 30 total claims
No extensions or RCEs
Only bypass PCT, not national stage
Limit of 10,000 filings per FY – (856 filed in FY 2011, 3 so far in FY 2012)
15% fee surcharge
October 13, 201124
25. Changes Already in Place
Electronic filing incentive
Extra $400 for not filing electronically
• Except for design, plant and provisional applications
Start of PTO revolving fund
Gives PTO its own savings account
October 13, 201125
26. Changes For Next Year
Filing by assignee
Institutions and companies can file for patents in the name of the
institution or company
Easier proof of obligation to assign
• NOTE: SDSU and other South Dakota state educational institutions
have a detailed policy on the obligation to assign inventions made in
the course of work or using university funds. See Board of Regents
Policy Manual § 4.34.
Inventor’s oath can be combined in an assignment by the inventor
October 13, 201126
27. Changes For Next Year
Easier patent correction
Removal of “without deceptive intent” requirement for reissues,
inventorship correction, etc.
Change from BPAI to PTAB
Name change to reflect law changes from interference to derivation
Will run new review proceedings
October 13, 201127
28. Changes For Next Year
3rd party submission of prior art
Any time up to notice of allowance (instead of 60 days from
publication)
3rd party must now point out relevance of submitted references
Supplemental examination
New route into ex parte reexam
Will allow owner to cleanse patent
Attorney not necessarily cleared of breach of duty of candor
PTO to submit any evidence discovered of actual fraud in
prosecution of a patent to the U.S. Attorney General
October 13, 201128
30. Idealized
Patent
Filing
Fully Complete
Disclosure with
no Additional
Development
Always Filed
Before Any Public
Availability
First-to-Publish
(FTP) Grace
Period Not Used
Reality for
Most
Corps.
Initial Invention
Disclosure with
Subsequent
Development
Filed After
Approval By
Patent Review
Committee
Limited Use of
Provisional/FTP
Grace Based on
Product Release
Reality for
Startups
Initial Concepts
with Subsequent
Development
Patent Filings
Efforts
Competing with
Fund Raising
Typical Use of
Provisional
Filings to
Minimize Cost
Reality for
Universities
Research
Concepts Instead
of Product
Concepts
Patent Filings
Contend with
Demands of
Publish or Perish
Will Make Most
Use of
Provisional/FTP
Grace
30
The New 102: Theory vs. Practice
30 October 13, 2011
31. First-to-Publish Grace Period
Potentially start taking advantage of first-to-publish grace period on March
16, 2012
BUT – must file concurrent with or before publication in order to retain rights
for ROW countries having first-to-file
Uncertainty under new statute what happens if the scope of publication is not
co-extensive with scope of disclosure in filing
October 13, 201131
32. Initial Thoughts on Practical Filing Strategy Under AIA
File provisional application as early as possible even if development of
invention is not complete
Follow up initial filing with further provisional filings as necessary to
provide written description and enablement, or to cover later developed
features
File non-provisional US, PCT, and/or foreign national applications within
one year from 1st provisional
Consider publishing concurrent with provisional filings to prevent
patentability by others if provisional applications may not be perfected
October 13, 201132
33. What’s Next for the AIA?
Rule making (and lots of it)
Numerous provisions expressly require rulemaking
• Derivation proceedings
• Inter-partes review
• Post-grant review
• Supplemental review
• Fees
PTO can use notice and comment rulemaking and establish
“interpretive rules” that can be afforded Chevron deference
October 13, 201133
34. What’s Next for the AIA?
Statutory construction
Most of § 102 is new language and contains many undefined new
terms
• “Disclosure”
• “Public disclosure”
• “Subject matter”
The U.S. Court of Appeals for the Federal Circuit will have to establish
through cases the scope and meaning of the new provisions
And that means:
Litigation (and lots of it) to define this whole new set of patent statute
terminology
October 13, 201134
35. How Long Will It Take to Cut Over to the AIA?
Sept 2011
AIA Enacted
Sept 2012
New Post
Issuance
Proceedings
March 2013
FTFG Starts
March 2014
1st FTFG
patents start
issuing
Sept 2015
Earliest
Possible
PTAB ruling
on a PGR
case
Sept 2016
1st District
Court Cases
Completed*
and
1st Federal
Circuit
Appeal on
PTAB-PGR
Sept 2017
1st Federal
Circuit
Rulings on
Litigated
Cases
Answer: About a Decade
35 October 13, 2011