Now that the first-inventor-to-file provisions of the America Invents Act (AIA) have taken effect, stakeholders should understand how to preserve the first-to-invent status of patent applications that were filed before March 16, 2013.Continue reading this entry
Tag Archives: First To File
A First Look At The Final First Inventor To File Rules
Posted in Patent ReformThe 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
Posted in Patent ReformAs 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 will come into play after an application is filed. For the time being, inventors and applicants should be considering whether patent applications that may be ready for filing should be filed before or after the effective date of the first-to-file laws. This article provides a non-comprehensive, big picture review of the changes that take effect on March 16, 2013. Continue reading this entry
The Limited Scope Of The New Derivation Proceedings
Posted in Patent Reform; USPTO Proposed Rule ChangesUnder 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 Extends First-To-File Comment Period To November 5, 2012
Posted in Patent Reform; USPTO Proposed Rule ChangesThe 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 of the proposed rules for the provisions that took effect on September 16, 2012 in view of public comments. Indeed, the decision to reopen the comment period was made in response to “several requests,” and underscores the agency’s interest in receiving thoughtful input from applicants, practitioners and other stakeholders. 
Continue reading this entry
First-To-File Comments Due October 5, 2012
Posted in Patent Reform; USPTO Proposed Rule ChangesAlthough 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 effect on September 16, 2012 in view of public comments. Applicants, practitioners and other stakeholders should not miss this opportunity to shape how the USPTO implements these significant changes to U.S. patent law. Continue reading this entry
USPTO Publishes Final Derivation Rules
Posted in Patent Office Practice; Patent Reform; USPTO Proposed Rule ChangesAlthough 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
Posted in Federal Circuit DecisionsIn 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 § 120).
First To File Practice: An Alternative Interpretation Of The Grace Period Shielding Disclosure Exception
Posted in Patent Reform; USPTO Proposed Rule ChangesI 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 USPTO’s controversial interpretation set forth in the USPTO’s proposed examination guidelines. Here, I offer an alternative interpretation of 35 USC § 102(b)(1)(B). Continue reading this entry
First To File Practice: Mandatory Derivation Proceedings?
Posted in Patent ReformThis 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
First To File Practice: Commonly Owned Applications
Posted in Patent Reform; USPTO Proposed Rule ChangesThis 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, and the proposed requirements for invoking the “grace period shielding disclosure” exception to prior art. Here, I look at the expanded prior art exception for commonly owned patent applications.Continue reading this entry
First To File Practice: Grace Period Shielding Disclosures
Posted in Patent Reform; USPTO Proposed Rule ChangesThis 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.
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, and the proposed requirements for invoking the “grace period non-inventor disclosure” exception to prior art. Here, I look at the proposed requirements for invoking what I refer to as the “grace period shielding disclosure” exception to prior art.Continue reading this entry
First To File Practice: Grace Period Non-Inventor Disclosures
Posted in Patent Reform; USPTO Proposed Rule ChangesThis 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.
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, and the proposed requirements for invoking the “grace period inventor disclosure” exception to prior art. Here, I look at the proposed requirements for invoking what the USPTO refers to as the “grace period non-inventor disclosure” exception to prior art. Continue reading this entry
First To File Practice: Grace Period Inventor Disclosures
Posted in Patent Reform; USPTO Proposed Rule ChangesThis 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.
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 and the proposed examination guidelines. Here, I turn my attention to the specific requirements (as proposed) for invoking the “grace period inventor disclosure” exception to prior art. Continue reading this entry
A Sneak Peek At The USPTO’s Proposed First-To-File Rules
Posted in Patent Reform; USPTO Proposed Rule ChangesFor 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 publish the first-inventor-to-file rulemaking at the same time as the first-inventor-to-file guidance document” that the USPTO plans to issue. Because this explanation suggests that the USPTO does not intend to change the substance of the proposed rules, I will proceed with my review and analysis of the proposed rules as pre-published.Continue reading this entry
Patent Reform Q & A
Posted in Patent ReformA 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 legislative history of some of the key provisions of the new law. Audience members submitted some good questions during the webinar, and since we were not able to answer all of them during our Q & A time, I thought I would address some of them here. Continue reading this entry
Adopting To First-to-File: The Significance Of Segregating Subject Matter
Posted in Patent ReformOne 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 will be possible to pursue subject matter with an earlier effective filing date under the current first-to-invent system as long as it is segregated from subject matter with a later effective filing date. (For a more detailed explanation, see my previous article on The First-To-File Poison Pill.) While my previous article on the Ides of March outlined several reasons why it could be important to obtain an effective filing date of March 15, 2013 or earlier, Max Colice, a patent agent and member of the Electronics practice at Foley & Lardner LLP, has pointed out yet another reason to segregate subject matter before and after the first-to-file effective date.
Be Aware Of The Ides Of March
Posted in Patent ReformThe “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.
What Happens When Interfering Applications Straddle The First-To-File Effective Date?
Posted in Patent ReformIt 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
Posted in Patent ReformNow 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.
When Being First-To-File Is Not Enough
Posted in Patent ReformThe 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 exceptions are more complicated. Here, I look at when the first person to file may not prevail under the new system.
Patent Reform Clears Final Hurdle–President Obama Expected To Sign America Invents Act Soon
Posted in Patent ReformPatent 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 into law very soon.
The Leahy-Smith America Invents Act makes the most sweeping changes to U.S. patent law in many decades, including moving the U.S. towards a first-to-file system, expanding prior user rights as a defense to infringement, eliminating interference proceedings, and creating new USPTO proceedings for post-grant review.
How Will Patent Reform Solve The USPTO Backlog?
Posted in Patent ReformLast 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, I found these shows to be very good, even if I didn’t agree with everything that was said. One issue I would like to press Director Kappos about is his assertion that the pending patent reform legislation will help the USPTO solve the problem of the examination backlog.
Patent Reform Moves One Step Forward
Posted in Patent ReformI’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 coincidence.)
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