What the First-to-File Patent Change Means (And What IP Strategists Should Do About It)
The Corporate Law Report: First-to-File Patents, Hiring for Cultural Fit, Roth Conversions Post-Fiscal Cliff, and Global Corporate Insights
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
This case addresses certain implications of the Laehy-Smith America Invests Act (AIA), namely whether patents with a filing date after March 16, 2013 (pure AIA patents) may be part of an interference proceeding under pre-AIA,...more
Today, technology companies are conceptualizing new ideas and improving upon those ideas at a blistering pace. Previously, under the United States’ first-to-invent patent system, such companies could afford to wait until new...more
Patent services provider RWS inovia recently released its eighth annual report on global patent and IP trends. In compiling "The 2017 U.S. Global Patent & IP Trends Indicator," RWS inovia, which produces products for PCT...more
On Wednesday, February 15, 2017, the Patent Trial and Appeal Board (“PTAB”) ruled in favor of the Broad Institute of MIT and Harvard in a closely watched patent fight with UC Berkeley over the breakthrough CRISPR...more
CRISPR (an acronym for Clustered Regularly lnterspaced Short Palindromic Repeats), which is part of a system for altering chromosomal sequences in situ in a cell in combination with a bacterially derived protein called Cas9,...more
Earlier this week, the Patent Trial and Appeal Board (PTAB) set the stage for what is expected to be an epic battle over who owns the intellectual property rights to “the biggest biotech discovery of the century.” On January...more
The U.S. Patent and Trademark Office announced earlier today that U.S. Secretary of Commerce Penny Pritzker has appointed Deputy Commissioner for Patent Examination Policy Drew Hirshfeld to be the new Commissioner for Patents...more
Previously we’ve discussed Hooli’s reverse engineering of Pied Piper’s technology and the threatened lawsuit for ownership of the technology. In Episode 14, Pied Piper faces a new threat: Endframe, a Pied Piper competitor,...more
The Federal Circuit affirmed a decision by the U.S. District Court for the District of Massachusetts that it lacked subject matter jurisdiction under 35 U.S.C. § 146 pursuant to changes in the statute provided by the...more
Oracle Corp. v. Click-to-Call Technologies LP - Addressing the evidentiary threshold to show diligence in constructive or actual reduction to practice between the date of a prior art reference and the date the...more
It has been over three years since the Leahy-Smith America Invents Act was signed into law by President Obama, and just over eighteen months since the effective date of the first-inventor-to-file changes to 35 USC § 102....more
Last week, on September 2, 2014, Accord Healthcare, Inc. ("Accord") filed what appears to be the second-ever Post-Grant Review ("PGR") (see Petition). This PGR was for U.S. Patent No. 8,598,219 ("the '219 Patent"), which is...more
The U.S. Patent and Trademark Office announced that it will host seven roadshow events across the country to increase public understanding of the First Inventor to File (FITF) provisions of the America Invents Act. The...more
On November 26, 2013, Silver Line Building Products LLC (“Silver Line”) filed a declaratory judgment complaint in the Eastern District of New York against J-Channel Industries Corporation (“J-Channel”), seeking a declaration...more
The America Invents Act (AIA) came into law back in September 2011, but it was not until last March that its provisions were completely phased in. The changes last year included not only the switch from a “first-to-invent” to...more
Reflecting upon the events of the past twelve months, Patent Docs presents its seventh annual list of top biotech/pharma patent stories. For 2013, we identified fourteen stories that were covered on Patent Docs last year...more
One of the provisions of the Innovation Act introduced by Congressman Goodlatte (R-VA) on October 23, 2014, purports to codify the doctrine of obviousness-type double patenting for applications and patents examined under the...more
Last week, a coalition of more than 100 companies and organizations including the Biotechnology Industry Organization (BIO), the California Healthcare Institute (CHI), and Eli Lilly & Company, sent a letter to Congressional...more
On September 16, 2013–the second anniversary of the America Invents Act (AIA)–the USPTO will host a forum on the AIA at its Alexandria, Virginia campus. The USPTO AIA forum will provide an overview of AIA implementation to...more
Two Op-Eds appearing in The Scientist over the summer present competing views on the impact of the Leahy-Smith America Invents Act. In an article published in July, Dr. George Lewis, the Chief Scientific Officer and...more
On March 16, the most significant provisions of the America Invents Act (AIA) came into force. The AIA was seen as the most extensive alteration to patent law in half a century, and was hotly debated over nearly a decade. The...more
The first-to-file provisions of the Leahy-Smith America Invents Act (AIA) took effect on March 16, 2013. The predominant view among patent practitioners is that applicants should in general keep their pre-AIA patent...more
On March 16, 2013, the final (and most significant) portion of the Leahy-Smith America Invents Act (AIA) took effect, and the United States broke from a first-to-invent regime to a first-inventor-to-file (FITF) regime. Of...more
Sure, First-to-File is new here, but the rest of the world has been dealing with it forever and the sky has not fallen on technological innovation elsewhere. And it won’t fall on it here either under a First-to-File system....more