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 -
News & Analysis as of

Inter Partes Review – Parties Favor Settlement Over Board Decisions

Now that we have a growing body of statistics on the Inter Partes Review proceedings created by the America Invents Act, it is interesting to see how the proceedings are being resolved. With the significant attention given to...more

The Patent Trial and Appeal Board Second Anniversary: Reflections and Strategies For The Years Ahead

What a difference two years can make. In 2012, the America Invents Act (“AIA”) created new proceedings to challenge the validity of claims in issued patents. These proceedings are administered by the United States...more

What’s Happening with Patents at the USPTO? Chief of Staff Byrnes has Answers!

On September 16, 2014, United States Patent and Trademark Office Chief of Staff Andrew Byrnes presented to the Boston Patent Law Association an update on new quality initiatives and the implementation of White House patent...more

PTAB Update -- A Review of the First Round of Comments (Part 1)

The USPTO has been seeking feedback on the PTAB trial proceedings established by the Leahy-Smith America Invents Act. A Federal Register Notice from June 27, 2014 contained the "Request for Comments on Trial Proceedings...more

PGR Report -- The Attack of 35 U.S.C. § 112

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 Importance of the One-Year AIA Timeline

Rackspace US, Inc. v. Personal Web Techs., LLC - Addressing the one-year time frame for completing inter partes review (IPR) in the context of a stay request, the U.S. Patent and Trademark Office’s (PTO) Patent Trial...more

Federal Circuit Sidesteps Constitutionality of AIA First-to-File Provision

MadStad Eng’g, Inc. v. USPTO - The U.S. Court of Appeals for the Federal Circuit faced an issue of first impression when a named inventor on three patents challenged the first-inventor-to-file provision of the America...more

USPTO to Host America Invents Act Roadshow in Seven Cities Nationwide

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

An Inexpensive Alternative to Patent Litigation

The America Invents Act (AIA), passed in September 2011, provides additional procedures to challenge the validity of patents in the U.S. Patent and Trademark Office (USPTO). These “post grant” procedures are far less...more

Washington Redskins Challenge the Constitutionality of Section 2(a) of the Lanham Act

The Washington Redskins trademark controversy is far from over. Despite the fact that certain news and sports commentators and mainstream newspapers and organizations have announced that they will no longer use the term...more

Federal Circuit Review (August 2014)

Post Grant Review of Patent Favors Stay of Litigation - In VIRTUALAGILITY INC. v. SALESFORCE.COM, INC., Appeal No. 14-1232, the Federal Circuit reversed the district court's denial of a motion to stay pending a post...more

PTO post-grant review: Patent issuance is not end of the line

So, you find yourself a defendant in a patent infringement suit. Some patent holder has filed a lawsuit claiming that your company is infringing on their patented technology. The patent holder threatens to shut your business...more

First Post Grant Review Petition Filed

After nearly a dozen false starts, it appears that the first genuine “Post Grant Review” (PGR) petition may have been filed with the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA)....more

Effect On Settlement Of Post-Grant Patent Review Proceedings

The recent America Invents Act both modified and created procedures for challenging patents in proceedings before the United States Patent and Trademark Office (PTO) after they have been issued, which are called post grant...more

Beware the Death Squad

On August 14, 2014, Law360 quoted PTAB Chief Judge James Smith commenting that the Board’s reputation as a patent “death squad” – a phrase coined by former Federal Circuit Chief Judge Randall Rader. ...more

In Search of Commercial Success

In Schott Gemtron Corporation v. SSW Holdings Company, Inc., IPR2014-00367, Paper 20 (August 13, 2014), the Board denied patent owner’s motion for additional discovery relating to commercial success. The Board noted the...more

How to Fix the Amendment Fallacy

The Patent Trial and Appeal Board has made it hard for patent owners to amend their claims. Patrick Doody outlines the problems this causes and how to fix them. Since being established under 2011’s America Invents Act...more

Estoppel effects of post-grant patent proceedings under the AIA

By now, most patent practitioners are quite familiar with the post-grant patent proceedings (e.g., IPR, PGR, CBM) newly established by the AIA, and their key features, such as the stay and estoppel provisions. Numerous...more

PTAB Issues First Precedential Opinion in an AIA Post-Grant Proceeding

During an AIA Post-Grant Proceeding, the Patent Trial & Appeal Board (“PTAB”) can issue three types of decisions: (1) routine, (2) informative, and (3) precedential. Routine decisions are the most common and have limited...more

Board Allows New Reexamination Filing to Amend Claims at Issue in Concurrent IPR

It is well settled under the AIA that it’s possible to have concurrent proceedings during an IPR. In Game Show Network, LLC and Worldwinner.com, Inc. v. John H. Stephenson (IPR2013-00289), the Board addressed a related issue...more

House Judiciary Subcommittee Continued its Review of Intellectual Property Law with Hearings on Copyright Infringement Remedies,...

The House Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet recently held hearings targeted at further exploring intellectual property laws and policy. On July 24, the Subcommittee held...more

Board Issues First Precedential Opinion

An ongoing and (surprisingly) often-raised issue in Covered Business Method Reviews has led the Board to issue its first Precedential opinion in an AIA post-grant proceeding. ...more

Motion to Stay Pending CBM Review Granted Where Non-Practicing Entity Did Not Seek Preliminary Injunction

Boku, Inc. ("Boku") filed a CBM petition with the PTAB seeking review of the patentability of Plaintiff's U.S. Patent No. 7,273,168 (the "'168 patent"). The petition challenged all claims of the '168 patent on grounds that...more

How the America Invents Act Has Changed the “One-Year Grace Period” for Filing Patent Applications

The United States patent system underwent a major overhaul last March with the implementation of key provisions of the America Invents Act (“AIA”). The AIA is considered the most substantial change in patent law since 1952...more

Derivation Proceedings: What You Need to Know  [Video]

Mark W. Rygiel, director at the intellectual property law firm Sterne, Kessler, Goldstein & Fox, P.L.L.C., discusses derivation proceedings, one of several new administrative proceedings at the USPTO created by the America...more

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