Tag Archives: First To File

A First Look At The Final First Inventor To File Rules

The USPTO’s final First Inventor To File rules and Examination Guidelines were published in the February 14, 2013 edition of the Federal Register. While many of the final rules are identical to the proposed rules, there are some important changes to note.… Continue reading this entry

Countdown To The Ides Of March

As of today, we are two months from March 15, 2013–the last day to secure an effective filing date under the current “first to invent” patent system. While we still are waiting for the USPTO to publish its final rules implementing the first-to-file provisions of the Leahy-Smith America Invents Act (AIA), most of those rules … Continue reading this entry

The Limited Scope Of The New Derivation Proceedings

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 … Continue reading this entry

USPTO Extends First-To-File Comment Period To November 5, 2012

The USPTO has announced that it has “reopened” the comment period for the proposed implementing regulations for the first-to-file provisions of the America Invents Act (“AIA”) which take effect March 16, 2013.  Public comments now will be accepted until November 5, 2012. The USPTO has demonstrated that it takes public comments seriously, and modified some … Continue reading this entry

First-To-File Comments Due October 5, 2012

Although the first-to-file provisions of the America Invents Act (“AIA”) do not take effect until March 16, 2013, public comments on the USPTO’s proposed implementing regulations are due by Friday, October 5, 2012. The USPTO has demonstrated that it takes public comments seriously, and modified some of the proposed rules for the provisions that took … Continue reading this entry

USPTO Publishes Final Derivation Rules

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

Federal Circuit Confirms That U.S. Priority Claim Must Be Considered When Assessing Interference Timeliness

In Loughlin v. Ling, the Federal Circuit affirmed a decision of the USPTO Board of Patent Appeals and Interferences that had canceled the sole claim of Loughlin’s patent in an interference proceeding. The decision turned on the interplay between the interference statute of limitations (35 USC § 135(b)(2)) and the domestic priority statute (35 USC … Continue reading this entry

First To File Practice: An Alternative Interpretation Of The Grace Period Shielding Disclosure Exception

I was honored to participate in the USPTO’s First-Inventor-To-File Roundtable yesterday (September 6, 2012). One issue raised by several speakers was the USPTO’s proposed requirements for invoking what I refer to as the “grace period shielding disclosure” exception to prior art under the first-to-file provisions of the America Invents Act (“AIA”). In a previous article I highlighted the … Continue reading this entry

First To File Practice: Mandatory Derivation Proceedings?

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. … Continue reading this entry

First To File Practice: Commonly Owned Applications

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. … Continue reading this entry

First To File Practice: Grace Period Shielding Disclosures

This is the third 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. … Continue reading this entry

First To File Practice: Grace Period Non-Inventor Disclosures

This is the second 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. … Continue reading this entry

First To File Practice: Grace Period Inventor Disclosures

This is the first article in my First-To-File Friday series. On each Friday in August, I will publish 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. … Continue reading this entry

A Sneak Peek At The USPTO’s Proposed First-To-File Rules

For a short time on Friday, July 20, 2012, the USPTO’s proposed rules to implement the first-to-file provisions of the America Invents Act (“AIA”) were available in the Federal Register’s “electronic Reading Room.” According to the USPTO’s AIA Implementation website, the USPTO temporarily withdrew the proposed rules in order “to enable the Federal Register to … Continue reading this entry

Patent Reform Q & A

A few weeks ago I was a presenter for the AIPLA webinar on “Patent Prosecution Under The AIA.” I discussed some strategies for preparing for the transition to the “first to file” system of the American Invents Act (AIA), and my co-presenter, Joe Matal, Judiciary Committee Counsel to Senator Jon Kyl, provided insight on the … Continue reading this entry

Adopting To First-to-File: The Significance Of Segregating Subject Matter

One important strategy for adopting to the first-to-file system of the America Invents Act will be to segregate subject matter that has an effective filing date of March 15, 2013 or earlier from subject matter that has an effective filing date of March 16, 2013 or later. This is because even after March 16, 2013, it … Continue reading this entry

Be Aware Of The Ides Of March

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 … Continue reading this entry

What Happens When Interfering Applications Straddle The First-To-File Effective Date?

It has been a while since I’ve taken an in-depth look at the first-to-file provisions of the America Invents Act. This interesting fact pattern comes from Andrea Levesque, IP Counsel at ARC Energy, and relates to the interference provisions that survive the general March 16, 2013 effective date of the first-to-file provisions.… Continue reading this entry

The First-To-File Poison Pill

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.… Continue reading this entry

When Being First-To-File Is Not Enough

The Leahy-Smith America Invents Act will bring the United States patent system closer to a “first-to-file” system, but it is important to understand that the changes to 35 USC § 102 have several exceptions to the first-to-file rule. While the one year “grace period” after an inventor’s own disclosure is easy to understand, the other … Continue reading this entry

Patent Reform Clears Final Hurdle--President Obama Expected To Sign America Invents Act Soon

Patent Reform cleared its final hurdle on September 8, 2011, when the Senate approved the House version of the Leahy-Smith America Invents Act by a vote of 89-9, leaving only President Obama’s signature as the final step to make patent reform a reality. The President has expressed support for this legislation, and is expected to sign it … Continue reading this entry

How Will Patent Reform Solve The USPTO Backlog?

Last week, The Kojo Nnamdi Show on Washington, D.C. public radio station WAMU had two programs about patent reform. On Tuesday, there was a panel discussion on “Innovation and Patent Reform.” On Wednesday, Kojo talked with USPTO Director David Kappos about “Updating the U.S. Patent Office.” While I usually cringe when mainstream media discusses patent issues, … Continue reading this entry

Patent Reform Moves One Step Forward

I’m still not writing about patent reform—really, I’m not! But on March 8, 2011, the Senate passed its patent reform bill, the America Invents Act (S.23), and on March 9, 2011, Foley & Lardner LLP issued a Legal News Alert highlighting key provisions. (If you notice my name as an author on the Alert, it’s just a … Continue reading this entry