Current Strategies for Patent Development Based on New AIA Patent Law November 21, 2012 J. Scott Southworth1.

Slides:

Advertisements

Similar presentations

Disclaimer: The information provided by the USPTO is meant as an educational resource only and should not be construed as legal advice or written law.

Advertisements

P ROFESSOR R UTH O KEDIJI First to File Patent Systems How the New U.S. System Compares to other Systems Around the World.

Disclaimer: The information provided by the USPTO is meant as an educational resource only and should not be construed as legal advice or written law.

MELISSA ASFAHANI Patent Attorney El Paso, TX

Comparison between JP & US new patent systems - First (inventor) to file, exception to loss of novelty, and grace period - NOBUTAKA YOKOTA KYOWA PATENT.

LEGISLATIVE UPDATE 2012 – Developments in Design Legislation.

AIA Final Rules AIA Transition Applications March 20, 2013.

© Kolisch Hartwell 2013 All Rights Reserved, Page 1 America Invents Act (AIA) Implementation in 2012 Peter D. Sabido Intellectual Property Attorney Kolisch.

INTELLECTUAL PROPERTY PROTECTION OFFICE OF PATENT COUNSEL March 16, 2001.

Patent Strategy Under the AIA Washington in the West January 29, 2013.

Update on USPTO Activities November 18, 2014 Drew Hirshfeld Deputy Commissioner for Patent Examination Policy 1.

Implementing First-Inventor-to-File Provisions of the AIA By: Scott D. Malpede, Seth Boeshore and Chitra Kalyanaraman USPTO Rules Effective March 16, 2013.

INTRODUCTION TO PATENT RIGHTS The Business of Intellectual Property

2011 America Invents Act Patent Reform Susan B. Meyer, J.D.

The America Invents Act (AIA) - Rules and Implications of First to File, Prior Art, and Non-obviousness -

September 14, U.S.C. 103(c) as Amended by the Cooperative Research and Technology Enhancement (CREATE) Act (Public Law ) Enacted December.

Disclaimer: The information provided by the USPTO is meant as an educational resource only and should not be construed as legal advice or written law.

U.S. ARMY ARMAMENT RESEARCH, DEVELOPMENT & ENGINEERING CENTER (ARDEC) Presented to: Federal Laboratory Consortium Northeast Region 25 Feb 2014 Mr. Tim.

America Invents Act (AIA) Changes in Patent Law That Impact Companies May Mowzoon: Mowzoon Law Office, PLLC 1.

Patent Law Under the America Invents Act

Community Patent Robert Clarke – Deputy Director Office of Patent Legal Administration

Preissuance Submissions Under the America Invents Act Janet Gongola Patent Reform Coordinator Direct dial:

Prosecution Group Luncheon Patents August Proposed First-To-File Rules Add definitions in AIA to Rules Declarations for removing references based.

Recent Changes in the US Patent System Affecting Engineers Peter D. Mlynek, MBA, PhD, Esq May 1.

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. The Leahy-Smith America Invents Act: Changes to United States Patent Law and Practice Charles.

China on the way to a high-technology country: The legal policy perspective Stefan Luginbuehl Lawyer, International Legal Affairs.

HOW WILL THE AMERICA INVENTS ACT (AIA) CHANGE THE WAY WE PROTECT AMERICAN IMAGINEERING? Michael A. Guiliana April 24, 2012 Disney’s Grand Californian Hotel.

1 1 AIPLA Firm Logo American Intellectual Property Law Association David Albagli AIPLA Mid-Winter Institute IP Practice in Japan Committee Pre-Meeting.

USPTO Implementation of the America Invents Act Teresa Stanek Rea Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the.

Introduction to Intellectual Property using the Federal Acquisitions Regulations (FAR) To talk about intellectual property in government contracting, we.

Applications for Intellectual Property International IP Protection IP Enforcement Protecting Software JEFFREY L. SNOW, PARTNER NATIONAL SBIR/STTR CONFERENCE.

The U.S. Patent System is Changing – A Summary of the New Patent Reform Law.

Changes in US Patent Law: How it Affects Researchers/Inventors Changes in US Patent Law: How it Affects Researchers/Inventors ATIA Orlando, Florida February.

The America Invents Act: Eighteen Months Post-Enactment Janet Gongola Patent Reform Coordinator March 27, 2013.

Information Disclosure Statements

December 8, Changes to Patent Fees Under the Consolidated Appropriations Act, 2005 (H.R. 4818)(upon enactment) and 35 U.S.C. 103(c) as Amended by.

0 Charles R. Macedo, Esq. Partner. 1 Brief Overview of Priority Under AIA Implications for Public Disclosures and Private Disclosures Role of Provisional.

Anthony Venturino MILANO 10 February 2012 SELECTED PROVISIONS OF THE LEAHY Smith AMERICA INVENTS ACT OF 2011 AIPPI - AIPLA 1 © AIPLA

“IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY America Invents Act and Its Impact on UniversitiesGokalp.

International IP Issues Federal Lab Consortium Meeting International IP Issues Dr Roisin McNally - European Patent Attorney 20 September 2006.

Patent Basics April 9, 2003 Fernandez & Associates LLP Stanford BioDesign Invention Challenge IP Lecture.

1 Patent Law in the Age of IoT The Landscape Has Shifted. Are You Prepared? 1 Jeffrey A. Miller, Esq.

Investing in research, making a difference. Patent Basics for UW Researchers Leah Haman Intellectual Property Associate WARF 1.

2011 US Patent Law Reform & A Global Prosecution Strategy by Lowe Hauptman Ham & Berner LLP Suite Diagonal St Alexandria VA Tel. (703)

Leahy-Smith America Invents Act J. Gibson Lanier, JD, PhD Ballard Spahr LLP.

Christopher J. Fildes Fildes & Outland, P.C. Derivation Proceedings and Prior User Rights.

July 18, U.S.C. 103(c) as Amended by the Cooperative Research and Technology Enhancement (CREATE) Act (Public Law ) Enacted December 10,

Post-Grant & Inter Partes Review Procedures Presented to AIPPI, Italy February 10, 2012 By Joerg-Uwe Szipl Griffin & Szipl, P.C.

Yoshiki KITANO JPAA International Activities Center AIPLA Annual Meeting, 2014 IP Practice in Japan Committee Pre-Meeting Seminar Post-Grant Opposition.

1 1 AIPLA Firm Logo American Intellectual Property Law Association Update on AIA Implementation Especially post grant processes Alan J. Kasper AIPLA/JPO.

Revisions to Japanese Patent Law Before the law was revised, a Divisional Applications could not be filed after a Notice of Allowance 2.

© COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Post Grant Proceedings Before the USPTO and Litigation Strategies Under the AIA Panelists:David.

Lawrence T. Welch April, 2003 Company Confidential Copyright © 2003 Eli Lilly and Company FICPI/AIPLA Colloquium Reform of the Patent Cooperation Treaty.

1 1 AIPLA Firm Logo American Intellectual Property Law Association Imminent Changes to the US Patent Law Pre-Grant Patent Practice Under the AIA Alan J.

1 New Patent Law Changes UTEP’s Plans to Implement February 5, 2013 Susan Avena Jeni Clark Gary Williams.

Derivation Proceedings Gene Quinn Patent Attorney IPWatchdog.com March 27 th, 2012.

Prosecution Group Luncheon September, America Invents Act Passed House and Senate (HR 1249) Presidential Signature expected Friday Most provisions.

2007 Revisions to Japanese Patent Law. 2 #1 Period for Filing Divisional Applications (A) BeforeBefore AfterAfter Notice of Allowance Divisional Application.

Prosecution Group Luncheon March, S.23: Patent Reform Act of 2011 Senate passed 95-5 (3/8); no House action as yet First to File Virtual (Internet)

Using the Patent Review Processing System (PRPS) for Post Grant Pilot Applications How to identify relevant information in AIA proceedings at the Patent.

Recent Developments in Obtaining and Enforcing Intellectual Property Rights in Nanocomposites Michael P. Dilworth February 28, 2012.

Overview of presentation

PCT-FILING SYSTEM.

PTAB Litigation 2016 Part 1 – PTAB Basics and Procedure

Intellectual Property Owner’s Manual

Of Counsel Polsinelli, LLP

Status Report Austin Intellectual Property Law Assoc. August 16, 2011

Speeding It Up at the USPTO

SMITH-LEAHY AMERICA INVENTS ACT

Presentation transcript:

Current Strategies for Patent Development Based on New AIA Patent Law November 21, 2012 J. Scott Southworth1

Introduction Leahy-Smith America Invents Act (AIA) has gone through several revisions. Effective dates are very important. Enacts a version of first-to-file, but has many other provisions. Provides a step toward harmonization with international patent law. The statute is subject to interpretation & implementation; consult your attorney. November 21, 2012 J. Scott Southworth2

Be Careful About Publicizing Your Invention New rules still allow one year to file after any public divulgation. Making a public disclosure can be a problem: ◦ Is it complete? ◦ Is there enough detail? ◦ Is there problematic language? ◦ Not if planning to file internationally Consider a provisional patent application. November 21, 2012 J. Scott Southworth3

Make Prior Art Searches A third party can submit prior art (preissuance submissions). Follow good searching practices. Submit prior art versus a competitor. ◦ Set up patent “watch” versus a competitor (e.g., monthly). November 21, 2012 J. Scott Southworth4

Maintain Records Keep records of inventive work. ◦ Could be an issue if there is a patent derived from your invention. Keep records of public disclosure, including conferences. November 21, 2012 J. Scott Southworth5

File Patent Applications Appropriately File before March 16, ◦ Provisional patent applications ◦ Utility patent applications ◦ CIPs of existing applications ◦ Continuation applications Be aware of changes to declarations and USPTO forms. Consider Priority Exam (Track 1). November 21, 2012 J. Scott Southworth6

Business Method Post Grant Review Transitional program targets business method patents. ◦ Business methods only ◦ Particular post grant review rules Applies in a particular situation where an infringement action has already been raised. November 21, 2012 J. Scott Southworth7

Contact Information J. Scott Southworth Attorney at Law Framingham, Massachusetts Copyright © 2012 J. Scott Southworth November 21, 2012 J. Scott Southworth8