America Invents Act, Administrative Procedure, Prior Art

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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 -

PTAB Issues FAQs on Interim Process for Workload Management

Fish & Richardson on 4/28/2025

Last week, the Patent Trial and Appeal Board (PTAB) issued a list of FAQs related to the new bifurcated process for discretionary denial established in the March 26 memorandum issued by Acting Director Stewart. The FAQs...more

Recapping a Busy Summer for Director Review

Fish & Richardson on 10/16/2024

United States Patent and Trademark Office (USPTO) Director Kathi Vidal had a busy end to her summer, issuing six decisions as part of the Director Review process between July 10 and August 22. In the six decisions, the...more

USPTO Issues Proposed Rules on Discretionary Denial in PTAB Proceedings

Fish & Richardson on 4/23/2024

One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial...more

Patent Prosecution Tool Kit: Invoking an AIA Exception to Prior Art, 1.130 Declarations

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/22/2020

Arguably, no other provision of the America Invents Act (AIA) is more important than 35 U.S.C. § 102. It defines what activities preclude patentability and what documents are available as prior art. Applications having an...more

PTAB Strategies and Insights - July 2019: Are the DMV Sloths From Zootopia Reflective of the Pace for Reissue Applications from...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/20/2019

The movie Zootopia was hysterically funny because it equated animal stereotypes to what we encounter every day. For example, the best employee at the DMV was named Flash – who was a sloth. Actually, the entire DMV was run by...more

Global Patent Prosecution Newsletter - September 2018: Third Party Submissions in the U.S.: What You Need to Know

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 9/14/2018

The America Invents Act provides an expanded process for a third party to submit prior art to the examiner concerning any U.S. patent application. The new process is aimed to encourage the public to submit relevant art as a...more

Federal Circuit Appeals from the PTAB: Summaries of Key 2017 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/19/2018

In 2016, the US Court of Appeals for the Federal Circuit docketed more appeals from the US Patent and Trademark Office (PTO) than any other venue—a first in its over 30-year history. The post grant proceedings created by the...more

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