News & Analysis as of

America Invents Act

The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant... more +
The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition.  less -
McDermott Will & Schulte

Derivation proceedings highlight race to file under AIA

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In one of the first decisions regarding derivation proceedings under the America Invents Act (AIA), the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that an application...more

Knobbe Martens

Federal Circuit Review | August 2025

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In FMC Corp. v. Sharda USA, LLC, Appeal No. 24-2335, the Federal Circuit held that the district court erred by construing a claim term based on disclosures made in a provisional application and an unasserted patent in the...more

BakerHostetler

Federal Circuit Decides Its First-Ever Derivation Proceeding

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In Glob. Health Sols. LLC v. Selner, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) addressed its first-ever derivation proceeding under the Leahy-Smith America Invents Act of 2011 (AIA). Prior to passage...more

Knobbe Martens

Derivation ≠ Interference: First to File Keeps Rights if Conception Was Independent

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GLOBAL HEALTH SOLUTIONS LLC v. SELNER - Before Stoll, Stark, and Goldberg (sitting by designation). Appeal from the Patent Trial and Appeal Board. The Federal Circuit affirmed the Board’s rejection of a derivation challenge,...more

Foster Swift Collins & Smith

IP Monday: Provisional vs. Non-Provisional Patents — When to File What

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In the U.S., patent rights generally go to the first inventor to file — not the first to invent. Filing early secures your place in line. But the type of application you choose (provisional vs. non-provisional) can...more

Alston & Bird

Patent Case Summaries | Week Ending August 29, 2025

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Global Health Solutions LLC, v. Marc Selner, No. 2023-2009 (Fed. Cir. (PTAB) Aug. 26, 2025). Opinion by Stark, joined by Stoll and Goldberg. “This case marks [the Federal Circuit’s] first review of an AIA derivation...more

Miller Canfield

Patent Derivation Proceedings Offer a First-to-File Exception - Don’t Take the Bait

Miller Canfield on

The Federal Circuit’s recent decision in Global Health Solutions LLC v. Selner is its first review of a rare patent dispute resolution process under the America Invents Act (AIA). The decision serves as a warning that proving...more

White & Case LLP

The Federal Circuit clarifies AIA derivation standards: Independent conception is key

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In its first precedential review of an AIA derivation proceeding, the Federal Circuit held that to prove derivation, a petitioner has the burden of showing that the petitioner conceived the claimed subject matter and...more

Wolf, Greenfield & Sacks, P.C.

Is Your IP Pacing Your Innovation?

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As your company grows, expands, and develops new technology, it is critical to evaluate your intellectual property strategy. What may have worked during the early stages or for your initial technology may need to change. For...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Global Health Solutions LLC v. Selner

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Global Health Solutions LLC v. Selner, Appeal No. 2023-2009 (Fed. Cir. Aug. 26, 2025) - In our Case of the Week, the Federal Circuit conducted its first review of a derivation proceeding under the America Invents Act that...more

McCarter & English, LLP

Navigating the Landscape of Patent Challenges at the USPTO

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Challengers striving to beat higher-ranked opponents at the US Open tennis tournament happening now in New York are not the only challengers facing tricky new situations. Parties wishing to challenge the validity of US...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Issues First Decision on Litigated AIA Derivation Proceeding

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In Global Health Solutions LLC v. Selner, the Federal Circuit addressed for the first time an appeal from a derivation proceeding litigated before the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA)....more

BakerHostetler

Patent Law Meets Ad Law: Legal Risks of Using ‘Patented,’ ‘Proprietary’ or ‘Exclusive’ in Marketing Claims

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As a reformed patent attorney, I’m always excited to explore issues that bridge patent law and advertising law. Patent issues occasionally arise in the ad tech space, especially around innovations in programmatic advertising,...more

Ropes & Gray LLP

Best Practices for Diligencing Chain-of-Title for Post-AIA Patent Applications with Assignee-Applicants

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Patent diligence in the context of M&A and other types of commercial transactions typically involves confirmation of a patent’s chain-of-title ownership, from initial inventors through to the current assignee-owner. The...more

McCarter & English, LLP

New Patent Office Guidance Raises Bar for IPR Petitioners

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The Patent Office recently announced that it will begin enforcing a rule that requires that inter partes review (IPR) petitions “specify where each element of the claim is found in the prior art patents or printed...more

A&O Shearman

Federal Circuit Issues Key Ruling On Collateral Estoppel And Patent Invalidity

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The Federal Circuit recently issued a decision in the ongoing dispute in Kroy IP Holdings, LLC v. Groupon, Inc., addressing the collateral estoppel effect of Patent Trial and Appeal Board (PTAB) decisions on subsequent...more

Kilpatrick

The PTAB’s Discretionary Denial Crackdown: Strategy, Stats, and Survival Tips

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Back in March, I wrote about Acting Director Coke Morgan Stewart’s overhaul of the pre-institution discretionary denial process. Since then, much has been written on the topic and, for better or worse, the dust has started to...more

Baker Botts L.L.P.

Ex Parte Reexaminations Poised to Make a Quiet Comeback: Discretionary Denial Guidance for Inter Partes Reexamination May Increase...

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Imagine this. You were just served with a Complaint for patent infringement and learn that, some years ago, your competitor was granted a patent giving them a legal monopoly to exclude others, including you, from making,...more

A&O Shearman

Non-Application Of Interference Estoppel By PTAB In An IPR Institution Decision Found To Be Unreviewable

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On July 22, 2025, the Court of Appeals for the Federal Circuit concluded that the Patent Trial and Appeal Board’s (the “PTAB”) decision not to apply interference estoppel and, therefore, to institute an inter partes review...more

Womble Bond Dickinson

Design Patent Obviousness: One Year Later

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One year has passed since the Court of Appeals for the Federal Circuit made its landmark decision in LKQ Corp. v. GM Global Tech. Operations LLC, which overruled the longstanding Rosen-Durling test for determining design...more

McCarter & English, LLP

USPTO Discontinues Accelerated Examination for Utility Patent Applications, but Track 1 Remains a Good Option

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The USPTO recently announced that the Accelerated Examination program will be discontinued as of July 10, 2025. Given that the program has had limited use over the past decade, with fewer than 100 Accelerated Examination...more

McDermott Will & Schulte

Speculation of Harm Isn’t Standing: Not Every Adverse Board Decision Is Ticket to Appeal

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After assessing whether a patent owner had standing to appeal the Patent Trial & Appeal Board’s final written decision, the US Court of Appeals for the Federal Circuit found no injury in fact to support Article III...more

Fish & Richardson

The PREVAIL Act Is Back. Will It Prevail This Time?

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On May 1, 2025, Senators Chris Coons (D-DE), Thom Tillis (R-NC), Dick Durbin (D-IL), and Mazie Hirono (D-HI) reintroduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. The...more

McDermott Will & Schulte

Take That Conception Out of the Oven – It’s CRISPR Even If the Cook Doesn’t Know

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Addressing the distinction between conception and reduction to practice and the requirement for written description in the unpredictable arts, the US Court of Appeals for the Federal Circuit explained that proof of conception...more

Morrison & Foerster LLP

Discretionary Denials—Act II

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On March 26, 2025, the Acting Director of the United States Patent and Trademark Office fundamentally changed how the Patent Trial and Appeal Board (“PTAB”) initially considers petitions in post grant proceedings under the...more

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