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 -

Mitigating Risk at the Intersection of Business and Patents

by Lane Powell PC on

Public sales and offers to sell can trigger the on sale bar without a public disclosure of the invention - Since its enactment in 2011, many practitioners (and the U.S. Patent and Trademark Office (USPTO) itself) have...more

Supreme Court to review policy of partial institution of inter partes reviews

by Dentons on

The Supreme Court recently granted certiorari and will review Patent Trial and Appeal Board (PTAB) practice involving instituting review on fewer than all patent claims challenged in an inter partes review (IPR) petition....more

Supreme Court Review in SAS Institute May Impact the Scope of Appealability and Estoppel in AIA Proceedings

Recently, the Supreme Court agreed to hear arguments on the question of whether the PTAB is required to issue a final written decision with respect to every claim challenged in an IPR petition. SAS Institute Inc. v. Lee, No....more

The Supreme Court Will Review the Board’s Partial Institution Practice

by Reed Smith on

On May 22, the U.S. Supreme Court granted SAS Institute’s Petition for Cert seeking review of the Board’s practice of instituting review of some challenged claims but not others. In the Federal Circuit’s decision on appeal,...more

What Rights Will I Lose if I Pitch My Invention to Investors Before I File a Patent Application?

by Ward and Smith, P.A. on

Did you know that the individual often credited with popularizing karaoke did not reap the financial rewards of his invention to the extent possible? It's true—Japanese musician Daisuke Inoue invented karaoke in Kobe, Japan...more

Inter Partes Reexamination May Proceed Even If The Requester Has a Change-of-Heart

In In re AT&T Intellectual Property II, LP, No. 16-1830 (Fed. Cir. May 10, 2017), the Federal Circuit held that the Board did not exceed its statutory authority when instituting an inter partes reexamination because a request...more

Are Inter Partes Review Proceedings Constitutional? The Federal Circuit Is Not Yet Ready To Decide

by Jones Day on

On May 11, 2017, with six of its twelve active judges authoring or joining separate opinions, the Federal Circuit denied a petition for an initial hearing en banc which asked the full Court to address the question “whether a...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Our report includes discussions of six of the precedential cases decided in the past week and will include the other three cases in next week’s report. In Aylus v. Apple, the panel finds prosecution disclaimer in a...more

Statements Made In IPR Preliminary Responses May Trigger Later Prosecution Disclaimer

by Brooks Kushman P.C. on

In a case of first impression, the U.S. Court of Appeals for the Federal Circuit has held that a patent owner’s statements made in a preliminary statement during an AIA inter partes review (IPR) proceeding may create...more

New Fed Circuit decision bolsters on-sale bar

by Thompson Coburn LLP on

Patent litigators will tell you that there are many ways to invalidate a patent. One of their favorites is a self-inflicted ground of invalidity known as the “on-sale bar.” Under patent law, if you sell (or offer to sell)...more

Federal Circuit Clarifies the On-Sale Bar Under the AIA: No Public Disclosure of the Invention Is Required if the Existence of the...

Under 35 U.S.C. § 102, the on-sale bar generally holds that the sale of a patented invention more than one year before the filing date invalidates the patent. Before the America Invents Act (AIA), courts held that...more

Federal Circuit Maintains Pre-AIA Interpretation of the On-Sale Bar for Public Sales

by Brinks Gilson & Lione on

In Helsinn Healthcare S.A., v. Teva Pharm. USA, Inc., the Federal Circuit recently held that, despite changes to the statutory language of § 102 under the Leahy-Smith America Invents Act (“AIA”), the Court’s pre-AIA...more

Federal Circuit PTAB Appeal Statistics – May 2017

by Finnegan – AIA Blog on

Through May 1, 2017, the Federal Circuit decided 200 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 150 (75%) cases, and reversed or vacated the PTAB on every issue in 17 (8.50%)...more

Are Secret Sales Prior Art Under The AIA?

by Foley & Lardner LLP on

In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit found that a publicly-announced “Supply and Purchase” agreement triggered the on-sale bar under pre-AIA 35 USC § 102(b) and under AIA 35 USC §...more

When Is Telling Someone You Have A Secret Revealing Too Much?

by Strasburger & Price, LLP on

Of course, telling someone that you have a secret is not the same as telling them what the secret is. Still, someone now knows that you have a secret. This has turned out to be an important concept for the “on-sale bar rule”...more

Federal Circuit Clarifies the On-Sale Bar under AIA

Last week the Federal Circuit in Helsinn Healthcare v. Teva Pharmaceuticals clarified the scope of the on-sale bar rule under the America Invents Act (AIA). The on-sale bar in general means that a sale or an offer to sale of...more

Federal Circuit Patent Updates - May 2017

by WilmerHale on

Chen, J. The estoppel provision of pre-AIA section 317(b) did not serve as a bar to maintain an inter partes reexamination where district court invalidity claims had been dismissed without prejudice. On the merits, affirming...more

Track One: Still the One for Accelerating Patent Examination in the US?

Speed is everything in the business world. The fastest company to market wins a competitive advantage. However, investors are often reluctant to back new products that do not have patent protection, and backlogs at the US...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In Nichia the Circuit affirms the denial of a permanent injunction because Nichia failed to prove irreparable injury. In RecogniCorp the panel throws out as not being directed to patentable subject matter claims directed to...more

Meet the New Boss, Same as the Old Boss: Federal Circuit Interprets AIA's On-Sale Bar

by Jones Day on

For more than 60 years, Section 102(b) of the Patent Act precluded patentability when the invention was "in public use or on sale in this country [for] more than one year" before the filing of a patent application. That...more

Helsinn v. Teva and the Status Quo: The Federal Circuit Opines on the Scope of the AIA's On-Sale Bar

by Faegre Baker Daniels on

In a case of first impression, the Federal Circuit recently interpreted the scope of the “on sale” bar under 35 U.S.C. § 102(a)(1) of the America Invents Act (AIA). In Helsinn Healthcare v. Teva Pharmaceuticals, the court...more

In Helsinn Healthcare, the Federal Circuit Offers Guidance on the On-Sale Bar under the AIA

The sale of a product prior to filing a patent application, or “on-sale bar,” has long been a potential barrier to obtaining a patent in the United States. Especially in the biotechnology space, which can involve a long...more

Federal Circuit Clarifies Post-AIA On-Sale Bar Doctrine

by Alston & Bird on

Since the enactment of the America Invents Act (AIA), the status and the scope of the on-sale bar under 35 U.S.C. § 102 has been unsettled. The Federal Circuit’s recent decision in Helsinn Healthcare S.A. v. Teva...more

A Sale is Still a Sale under the AIA

At least so far, the meaning of “on sale” under AIA 35 U.S.C. §102(a)(1) has not changed from pre-AIA 35 U.S.C. §102(b) following a decision by the Federal Circuit in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.,...more

Federal Circuit Provides Clarity to “On-Sale Bar” for Patents Under AIA

by Snell & Wilmer on

Under the America Invents Act (AIA), 35 U.S.C. § 102(a) bars the patentability of an “invention [that] was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before...more

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