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Tag Archives: Derivation

The Limited Scope Of The New Derivation Proceedings

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

Under the first-to-file provisions of the Leahy-Smith America Invents Act (AIA), the USPTO no longer will institute interference proceedings in order to determine who was the first person to invent a claimed invention. While an applicant will be able to petition the USPTO to institute a derivation proceeding, the statute and implementing regulations provide for such proceedings under only very limited circumstances.Continue reading this entry

USPTO Publishes Final Derivation Rules

Posted by Courtenay Brinckerhoff on Posted in Patent Office Practice; Patent Reform; USPTO Proposed Rule Changes

Although derivation proceedings only will be available for U.S. patent applications with an effective filing date on or after March 16, 2013, the USPTO already has published its final rules implementing the derivation provisions of the Leahy-Smith America Invents Act (AIA). The final rules embody several changes and clarifications as compared to the proposed rules.Continue reading this entry

First To File Practice: Mandatory Derivation Proceedings?

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

This is the fourth article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013.

The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012. In previous articles I have provided overviews of the proposed rules, the proposed examination guidelines, the proposed requirements for invoking the “grace period inventor disclosure” exception to prior art, the proposed requirements for invoking the “grace period non-inventor disclosure” exception to prior art, the proposed requirements for invoking the “grace period shielding disclosure” exception to prior art, and the expanded prior art exception for commonly owned patent applications. Here, I look at the proposed rule that could require an applicant to initiate a derivation proceeding.Continue reading this entry

Be Aware Of The Ides Of March

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

The “first-to-file” provisions of the America Invents Act (AIA) take effect on March 16, 2013. Here, I highlight a few reasons why many applicants will not want their patent applications to be subject to the new version of 35 USC § 102, and why all applicants—and their patent counsel—should be aware of the significance of March 15, 2013—the Ides of March.

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A First Look At The Proposed Rules For The New USPTO Patent Trial Proceedings

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

As I wrote previously, the USPTO has released its proposed rules for the new patent trial proceedings that will be conducted by the Patent Trial and Appeal Board in accordance with the America Invents Act (AIA). The proposed rules will be published in seven separate Federal Register Notices that are due out later this week:

  • Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions—public comments due April 9, 2012
  • Practice Guide for Proposed Trial Rules—public comments due April 9,
  • Changes to Implement Inter Partes Review Proceedings—public comments due April 10, 2012
  • Changes to Implement Post-Grant Review Proceedings—public comments due April 10, 2012
  • Changes to Implement Transitional Program for Covered Business Method Patents—public comments due April 10, 2012
  • Transitional Program for Covered Business Method Patents—Definition of Technological Invention—public comments due April 10, 2012
  • Changes to Implement Derivation Proceedings—public comments due April 10, 2012

Several of my colleagues at Foley & Lardner LLP and I spent the day reviewing the proposed rules and preparing a Legal News Alert that outlines some of the key provisions in these rules packages. Here, I note a few of my first impressions.

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The First-To-File Poison Pill

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

Now that we’ve been studying the Leahy-Smith America Invents Act for a few weeks, some of its subtle intricacies are coming to light. One of the more complex provisions relates to the effective date and applicability of the first-to-file provisions of new 35 USC § 102.

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The New Derivation Proceedings Deadlines–More Traps For The Unwary?

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

The new derivation proceedings enacted by the Leahy-Smith America Invents Act include one-year deadlines for instituting derivation proceedings, based on the publication or issue date of a relevant patent claim. To the extent that these deadlines were intended to mirror 35 USC § 135(b), they may include an unintended trap for the unwary based on the USPTO’s interpretation of similar language in the deadline for filing an application for Patent Term Extension under 35 USC § 156.

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