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America Invents Act › Patent Ownership

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 -
Ward and Smith, P.A.

First-to-File: A Game-Changer in US Patent Law

Ward and Smith, P.A. on

The United States patent system underwent a significant change with the enactment of the First-Inventor-to-File (FITF) provision of the America Invents Act, which became effective on March 16, 2013. The FITF provision...more

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

PTAB Year in Review – Caveat Experimenter: Using Experimental Data in PTAB Proceedings Comes With Risks

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

Parties involved in Patent Trial and Appeal Board (PTAB) proceedings sometimes contemplate submitting experimental data to support their positions. Although such data can be useful, there also are risks. Several recent cases...more

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

2024 PTAB Year in Review: Analysis & Trends

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

The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more

Rothwell, Figg, Ernst & Manbeck, P.C.

The PREVAIL Act Could Change PTAB Trials in a Big Way

Rothwell, Figg, Ernst & Manbeck, P.C. on

Since the America Invents Act (“AIA”) established a new venue for hearing patent disputes, the Patent Trial and Appeal Board (“PTAB”), much ink has been spilled regarding the impacts of this forum on patent litigation and the...more

McDermott Will & Emery

Neck or Nothing? “Quotation” Invalidates On-Sale Bar

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit found the patents at issue invalid based on the patent owner’s “quotation” letter to a third party, concluding it was a commercial offer for sale under pre-America Invents Act...more

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

Historical Development of Substantial New Question contrasted with the new Section 325(d) Criteria

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

Ex parte reexamination proceedings have been available for over 40 years. The reexamination statutes, Public Law 96-517 of July 1, 1981 (also known as the Bayh-Dole Act), included 35 U.S.C. § 303, which codified, in part,...more

Erise IP

Eye on IPRs, October 2024: USPTO Issues Final PTAB Procedure Rules

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: USPTO Issues Final Rules on PTAB Procedure - The U.S. Patent and...more

Sheppard Mullin Richter & Hampton LLP

Celanese v. ITC: How the On-Sale Bar Can Turn Sweet Sales into Spoiled Patents

Sheppard Mullin Richter & Hampton LLP on

Celanese International Corporation, Celanese (Malta) Company 2 Limited, and Celanese Sales U.S. Ltd. (collectively, “Celanese”) filed a petition before the United States International Trade Commission (the “ITC”), alleging...more

A&O Shearman

Federal Circuit Holds That America Invents Act Does Not Affect On-Sale Bar To Patentability

A&O Shearman on

In Celanese Int’l Corp. v. ITC, the Federal Circuit addressed whether the America Invents Act (“AIA”) changed the on-sale bar such that the sale of a product made using a secret process would no longer invalidate later-sought...more

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

What is a Streamlined Reexamination Request (SRR)?

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

One way that reexamination advantageously differs from other administrative post-grant review processes is the absence of word or page counts as a limiting factor in presenting the challenge, here substantial new questions of...more

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

IP Hot Topic: USPTO Publishes Long-awaited Notice of Proposed Rulemaking with Updates to PTAB Practice and Procedure

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

On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...more

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

Fixing Unintentional Duty of Disclosure and Candor Issues Through Supplemental Examination

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

A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to...more

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

What’s in a Name? Why Reexamination Is Not a Re-Examination

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

Long before the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB) patent revocation proceedings, the patentability of one or more claims of any patent could be reviewed via Ex Parte Reexamination...more

Strafford

[Webinar] Patent Inventorship: Best Practices for Determination and Correction - Distinguishing Between Inventor and Contributor;...

Strafford on

This CLE course will guide patent counsel in identifying and determining inventorship and offer best practices for correcting errors regarding inventorship. Our experienced panel will provide perspectives gained from working...more

McDermott Will & Emery

PTO Seeks Permanent Rules Regarding Motion to Amend Practice Before Board

McDermott Will & Emery on

On March 4, 2024, the US Patent & Trademark Office published a Notice of Proposed Rulemaking seeking to revise its Motion to Amend (MTA) pilot program practice in connection with certain America Invents Act (AIA) proceedings....more

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

PTAB Spotlight Series with Jason Eisenberg

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

In our PTAB Spotlight Series, attorneys will share their valuable insights on PTAB practice today, the challenges and opportunities clients face, and the trends practitioners should follow. Jason D. Eisenberg is a director...more

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

2023 PTAB Year in Review: Analysis & Trends: 2023 PTAB Case Highlights

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

Precedential Decisions - Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (designated: November 15, 2023) (regarding prior art status under AIA § 102) The Director designated as precedential...more

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

2023 PTAB Year in Review: Analysis & Trends: Reexamination Statistics and the Federal Circuit’s SNQ Clarification/Expansion

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

The recent resurgence in ex parte reexamination demonstrates the importance of this post-grant review vehicle. It has become particularly important for patent challengers who may be estopped from requesting inter partes...more

Jones Day

Penumbra Illuminates Priority Dates Pre and Post-AIA

Jones Day on

USPTO Director Kathi Vidal recently designated precedential section II.E.3 of Penumbra, Inc. v. RapidPulse, Inc. and clarified that the priority analysis for an AIA reference patent as prior art is different than for a...more

Fenwick & West LLP

USPTO Doubles Down on Inapplicability of Dynamic Drinkware to AIA Cases in Precedential PTAB Decision

Fenwick & West LLP on

What You Need to Know The USPTO has reiterated its position that Dynamic Drinkware, LLC v. National Graphics, Inc. does not apply to patents and patent applications that fall under the America Invents Act (AIA) by designating...more

McDermott Will & Emery

Sins of the Fathers? Grandparent IPR Factors into Current Institution Decision

McDermott Will & Emery on

US Patent & Trademark Office (PTO) Director Kathi Vidal vacated and remanded a Patent Trial & Appeal Board decision denying institution of an inter partes review (IPR) because the Board improperly applied the precedential...more

Farella Braun + Martel LLP

What Patent Bills Would Mean for Infringement Litigation

Farella Braun + Martel LLP on

Two bills recently introduced in Congress could significantly affect the current patent litigation landscape. The bipartisan bills are titled the Patent Eligibility Restoration Act of 2023 and the Promoting and Respecting...more

Weintraub Tobin

PTO Allows Another Bite at the Apple

Weintraub Tobin on

On July 24, 2023, the United States Patent and Trademark Office changed its procedures for the PTO Director’s review of certain decisions by the Patent Trial and Appeal Board. The decisions in question are those decisions of...more

Morrison & Foerster LLP

USPTO Proposed Rulemaking Could Reshape Post-Grant Practice Under the AIA

Morrison & Foerster LLP on

On April 21, the U.S. Patent and Trademark Office (USPTO) published an Advanced Notice of Proposed Rulemaking (ANPRM), based on a Request for Comments (RFC) published in 2020. The ANPRM sets forth a series of proposed rule...more

McDermott Will & Emery

No First Place Trophy Here: Public Demo at Trade Show Found Invalidating

McDermott Will & Emery on

Addressing the public use bar of pre-America-Invents-Act (AIA) 35 U.S.C. § 102(b), the US Court of Appeals for the Federal Circuit affirmed a district court’s decision to invalidate a patent because the patent owner’s...more

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