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© Kolisch Hartwell 2013 All Rights Reserved, Page 1 America Invents Act (AIA) Implementation in 2012 Peter D. Sabido Intellectual Property Attorney Kolisch Hartwell, P.C. email@example.com February 15, 2013
© Kolisch Hartwell 2013 All Rights Reserved, Page 2 Overview Inventor’s Oath or Declaration Citation of Written Statements in Patent File Inter Partes Review Post-Grant Review Third Party Submission of Prior Art Supplemental Examination Transitional Program for Covered Business Method Patents Priority Examination for Important Technologies
© Kolisch Hartwell 2013 All Rights Reserved, Page 3 Inventor’s Oath or Declaration (§ 4) Assignee can be the applicant Still need inventor’s oath or declaration Assignments can be used Must include required oath or declaration statements Postponement of filing of oath or declaration Until application is otherwise in condition for allowance Substitute statement in lieu of oath or declaration Defective oath or declaration is curable Patent not invalid or unenforceable if cured
© Kolisch Hartwell 2013 All Rights Reserved, Page 4 Citation of Written Statements in Patent File (§ 6) For issued patents Any person may file a written submission with: Prior art consisting of patents or printed publications Statements of patent owner filed by the patent owner in a proceeding regarding claim scope Statements must identify: Forum and proceeding in which patent owner filed statement Specific papers submitted that contain the statements How each statement is a statement regarding claim scope Explanation required Pertinence and manner of applying to at least one claim
© Kolisch Hartwell 2013 All Rights Reserved, Page 5 Post Grant Review (§ 6) May be filed starting September 16, 2012 Only business method patents and patents involved in interferences Can file for any patent as of March 16, 2013 Various statutory ground(s) based on: Patents and printed publications Other factual evidence and expert opinions Must be filed: Before filing a civil action challenging validity of patent Within nine months of the patent grant
© Kolisch Hartwell 2013 All Rights Reserved, Page 6 Post Grant Review (§ 6) [contd.] Granted if: “More likely than not” that at least one of challenged claims is unpatentable Raises a “novel or unsettled legal question” that is important to other patents or patent applications Subsequent civil action challenging validity of patent automatically stayed until: Patent owner moves court to lift stay Patent owner files action or counterclaims for infringement Petitioner moves court to dismiss action No stay of motion for preliminary injunction Infringement action filed within 3 months of patent grant date
© Kolisch Hartwell 2013 All Rights Reserved, Page 7 Post Grant Review (§ 6) [contd.] Estoppel with respect to any ground raised or reasonably could have raised: USPTO proceeding Civil action ITC proceeding No estoppel if settled before decision on merits Patent owner may file motion to amend patent: Can cancel, amend, or substitute claims Cannot enlarge scope or add new matter Petitioner may appeal written final decision to the Federal Circuit
© Kolisch Hartwell 2013 All Rights Reserved, Page 8 Inter Partes Review (§ 6) Replaces existing Inter Partes Reexamination Procedure Available for all patents 35 U.S.C. § 102 or § 103 grounds based on patents and printed publications Must be filed: Before filing a civil action challenging validity of patent Within one year of being served with infringement complaint After later of nine months after grant date or termination of post- grant review Granted with “reasonable likelihood” that the third party will prevail
© Kolisch Hartwell 2013 All Rights Reserved, Page 9 Inter Partes Review (§ 6) [contd.] Same automatic stay as post grant review Same estoppel as post grant review Patent owner may file motion to amend patent Petitioner may appeal written final decision to the Federal Circuit
© Kolisch Hartwell 2013 All Rights Reserved, Page 10 Third Party Submission of Prior Art (§ 8) Filed for pending patent applications Documents: Patents Published patent applications Other printed publications Explanation of relevancy Must be filed prior to earlier of: Notice of allowance Later of six months after publication date or the date of a first Office action on the merits No service requirement
© Kolisch Hartwell 2013 All Rights Reserved, Page 11 Supplemental Examination (§ 12) For patent owner after patent has issued Filed at any time during enforceability period of patent Any information in writing “believed to be relevant to the patent” Limit of twelve items per request Ex parte reexamination ordered if “substantial new question of patentability” Proceed under ex parte reexamination procedures Except for patent owner statement
© Kolisch Hartwell 2013 All Rights Reserved, Page 12 Supplemental Examination (§ 12) [contd.] Effect Patent not unenforceable on basis of conduct relating to information if information was considered, reconsidered, or corrected during supplemental examination Exceptions Prior allegations in civil action or FDCA notice Defense in patent enforcement actions o Unless supplemental examination (and any reexamination ordered) concluded before action brought
© Kolisch Hartwell 2013 All Rights Reserved, Page 13 Covered Business Method Patents (§ 18) Specific post-grant reviewing proceeding Covered business method patents: Method or apparatus that performs data processing or other operations used in practice, administration, or management of a financial product or service Does not include patents for “technological inventions” May be requested only if sued for patent infringement Various statutory grounds based on published and non- published evidence Estoppel only in other USPTO proceedings Program expires on September 16, 2020
© Kolisch Hartwell 2013 All Rights Reserved, Page 14 Priority Exam for Important Technologies (§ 25) Prioritization of examination of applications for products, processes, or technologies that are important to the national economy or national competitiveness As of February 5, 2013, the USPTO has not released any information regarding implementation
© Kolisch Hartwell 2013 All Rights Reserved, Page 15 Peter D. Sabido Intellectual Property Attorney Kolisch Hartwell, P.C. 520 SW Yamhill Street, Suite 200 Portland, Oregon 97204 (503) 224–6655 firstname.lastname@example.org
Post-Grant & Inter Partes Review Procedures Presented to AIPPI, Italy February 10, 2012 By Joerg-Uwe Szipl Griffin & Szipl, P.C.
By David W. Hill AIPLA Immediate Past President Partner Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Overview of the America Invents Act.
BIPC.COM STRATEGIC CONSIDERATIONS OF POST ISSUANCE PATENTABILITY REVIEW: THE NEW, OLD, AND NO LONGER Presented By: Todd R. Walters, Esq. B UCHANAN, I NGERSOLL.
© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Post Grant Proceedings Before the USPTO and Litigation Strategies Under the AIA Panelists:David.
Joint Meeting of PIPLA and NJIPLA February 7, 2012 Kenneth N. Nigon RatnerPrestia 1.
© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. The Leahy-Smith America Invents Act: Changes to United States Patent Law and Practice Charles.
Recent Developments in Obtaining and Enforcing Intellectual Property Rights in Nanocomposites Michael P. Dilworth February 28, 2012.
America Invents The Patent Reform Act of 2011 March 29, 2011.
Impact of US AIA: What Really Changed? 1 © AIPLA 2015.
Anthony Venturino MILANO 10 February 2012 SELECTED PROVISIONS OF THE LEAHY Smith AMERICA INVENTS ACT OF 2011 AIPPI - AIPLA 1 © AIPLA
April 24, 2012 Benoît Castel Young & Thompson U.S. Patent Law Reform Summary of H.R. 1249, “Leahy-Smith America Invents Act”
Remy Yucel Director, CRU (571) Central Reexamination Unit and the AIA.
Post-Grant Proceedings Under The America Invents Act Los Angeles Intellectual Property Law Association “Washington in the West” Conference January 29,
Administrative Trials 1. AIA Trial Proceedings Inter Partes Review §§ – Post-Grant Review §§ – Covered Business Method Patent.
USPTO Implementation of the America Invents Act Teresa Stanek Rea Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the.
1 1 AIPLA American Intellectual Property Law Association Updates on the USPTO Chris Fildes AIPLA-JPAA Joint Meeting April 9, 2013.
Derivation Proceedings Gene Quinn Patent Attorney IPWatchdog.com March 27 th, 2012.
Post Grant Challenges: Strategy and Considerations after the America Invents Act of 2011 IP Law & Management Institute November 7, 2011 Justin J. Oliver.
1 1 AIPLA Firm Logo American Intellectual Property Law Association Update on AIA Implementation Especially post grant processes Alan J. Kasper AIPLA/JPO.
AIA Strategies. First-To-File Changes take effect March 16, 2013 Apply to any application having a priority claim falling on or after March 16, 2013 Significantly.
The U.S. Patent System is Changing – A Summary of the New Patent Reform Law.
© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. The Leahy-Smith America Invents Act: Changes to United States Patent Law and Practice Steven.
America Invents Act. FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | 2 First-to-File U.S. will switch to a first-inventor-to-file.
Post-Issuance Proceedings Under the AIA Thomas F. Cotter Briggs and Morgan Professor of Law University of Minnesota Law School.
T HE L EAHY -S MITH A MERICA I NVENTS A CT The Toledo Intellectual Property Law Association Presented By: November 16, 2011.
1 Patent Law in the Age of IoT The Landscape Has Shifted. Are You Prepared? 1 Jeffrey A. Miller, Esq.
Patent Reform Becomes Law: Overview of the Leahy-Smith America Invents Act Presented to the MSBA Computer & Technology Law Section September 13, 2011 By:
Christopher J. Fildes Fildes & Outland, P.C. Derivation Proceedings and Prior User Rights.
PATENT REFORM University of Rochester KATHRYN DOYLE, Ph.D., J.D. RIVERSIDE LAW, LLP.
America Invents Act Date of enactment: 9/16/11 First-to-file provisions effective 18 months after enactment – March 16, 2013 Applications filed on.
Director’s Meeting Legislation and Case Law Update by Dave Risley July 29, 2011.
©2011 Foley & Lardner LLP Attorney Advertising Prior results do not guarantee a similar outcome Models used are not clients but may be representative of.
Patent Strategy Under the AIA Washington in the West January 29, 2013.
1 1 AIPLA Firm Logo American Intellectual Property Law Association Interplay between Litigation and the AIA __________ An Overview John B. Pegram Fish.
© 2011 Baker & Hostetler LLP BRAVE NEW WORLD OF PATENTS plus Case Law Updates & IP Trends ASQ Quality Peter J. Gluck, authored by.
Speeding It Up at the USPTO July 2013 July 23, 2013.
America Invents Act (AIA) Changes in Patent Law That Impact Companies May Mowzoon: Mowzoon Law Office, PLLC 1.
1 1 AIPLA Firm Logo American Intellectual Property Law Association EMERGING TRENDS IN INTER PARTES REVIEW PRACTICE TOM ENGELLENNER Pepper Hamilton, LLP.
The America Invents Act (AIA) - Rules and Implications of First to File, Prior Art, and Non-obviousness - 1.
Prosecution Group Luncheon September, America Invents Act Passed House and Senate (HR 1249) Presidential Signature expected Friday Most provisions.
1 1 AIPLA Firm Logo American Intellectual Property Law Association The Presumption of Patent Validity in the U.S. Tom Engellenner AIPLA Presentation to.
Presentation at Biotechnology/ Chemical/Pharmaceutical Customer Partnership Program Partnership Program March 15, 2005 POST-GRANT REVIEW: A COMPARISON.
Peter C. Schechter Vice-Chair, AIPPI-US Div. of AIPLA Partner, Osha Liang LLP Post-Issuance Review Proceedings: Update & Trends in IPR & PGR 1 © AIPLA.
What Do In-House Counsel Need to Know? AIA Proceedings Molly Kocialski, Senior Patent Counsel, Oracle Dion Messer, General Counsel - IP, Limelight Networks.
Disclaimer The following presentation is provided for informational purposes only and should not be construed as legal advice for your particular legal.
Leahy-Smith America Invents Act J. Gibson Lanier, JD, PhD Ballard Spahr LLP.
Update on USPTO Activities November 18, 2014 Drew Hirshfeld Deputy Commissioner for Patent Examination Policy 1.
1 1 AIPLA 1 1 American Intellectual Property Law Association USPTO Post-Grant Procedures and Effective Use of Reissue AIPLA IP Practice in Japan Committee.
“IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY America Invents Act and Its Impact on UniversitiesGokalp.
The Impact of Patent Reform on Independent Inventors and Start-up Companies Mark Nowotarski (Patent Agent)
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