Tag Archives: First To Invent

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

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

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

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

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

The Washington Post Muddies The Waters On Patent Reform

Now that the Senate is set to vote on the Patent Reform Act of 2011 this week, the mainstream media is weighing in on the issues. This Saturday, The Washington Post published an editorial in support of patent reform, (“Why The patent process should be overhauled,” Feb. 26, 2011) but it butchered the background facts … Continue reading this entry

Prior Invention In The U.S. Requires A Prior U.S. Inventor

In Solvay S.A. v. Honeywell International, Inc., the Federal Circuit discussed the contours of 35 USC § 102(g)(2). The court found that Honeywell’s prior (secret) use of the process claimed in Solvay’s patent did not qualify as an invalidating prior invention because Honeywell was not an original inventor of the subject matter at issue. This case underscores … Continue reading this entry