News & Analysis as of September 20, 2024

America Invents Act › Patent Applications › Inventors

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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... 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 -

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

Strafford on 4/15/2024

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

PTAB/USPTO Update - March 2024

WilmerHale on 3/5/2024

On February 13, the USPTO issued inventorship guidance for AI-assisted innovations. The guidance, effective as of February 13, 2024, emphasizes that AI-assisted inventions are not categorically unpatentable and the...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/8/2023

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

2021 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/7/2022

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

The America Invents Act, Ten Years After Enactment - Part 1: “First Inventor to File”

Maynard Nexsen on 10/6/2021

Ten years ago, on September 16, 2011, the America Invents Act (“AIA”) became law. This article is the second in a multi-part series of articles on the significant changes introduced by the AIA and the results of those...more

CVC Files Substantive Motion No. 3 (for Improper Inventorship) and Broad Opposes

McDonnell Boehnen Hulbert & Berghoff LLP on 12/31/2020

Last fall the Patent Trial and Appeal Board, in Interference no. 106,115, granted leave to Junior Party The University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, "CVC") to file...more

Monthly Minute | Commercialization of an Invention

Kilpatrick on 11/30/2020

Once a month, we cover an interesting topic. This month, senior associates Richard Goldstucker and Megan Bussey discuss the commercialization of an invention and provide an overview of the "on-sale bar" provision....more

A Window into PTAB Derivation Proceedings

McDermott Will & Emery on 5/7/2019

In the first-ever final written decision in a post-American Invents Act (AIA) derivation proceeding, the Patent Trial and Appeal Board (PTAB) found that the petitioner had not shown that an inventor named in the respondent’s...more

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

Ward and Smith, P.A. on 5/24/2017

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

It’s Never Too Late to File an Inventorship Dispute

Nutter McClennen & Fish LLP on 4/26/2016

Earlier this month, the Federal Circuit revisited the issue of inventorship disputes and iterated in a nonprecedential opinion that proving nonjoinder of inventors in an issued patent is a difficult threshold for a challenger...more

A Cautionary Tale for Patent Applicants

Foley & Lardner LLP on 4/5/2013

When should a patent application be filed? Should it be filed prior to submission of a manuscript or abstract for peer-review or just prior to publication? In highly competitive technologies, it is prudent to file as soon as...more

“America Invents Act” Patent Law Overhaul: The Benefits and the Drawbacks

Davis Wright Tremaine LLP on 11/22/2011

“A good idea is never lost. Even though its originator or possessor may die without publicizing it, it will someday be reborn in the mind of another.” ~ Thomas Edison As any inventor or innovator will tell you, an...more

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