News & Analysis as of September 20, 2024

America Invents Act › Proposed Amendments

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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 -

Proposed USPTO Fee Changes Will Make It Much More Expensive to Patent and to Challenge Patents on Therapeutics. You Have an...

Goodwin on 5/17/2023

The United States Patent & Trademark Office (USPTO or PTO) recently announced proposed changes to certain fees it charges with respect to patent applications, design patents, and America Invents Act (AIA) trials. These...more

PTAB Deputy Chief Judge Bonilla Provides Claim Amendment Pilot Insights

Jones Day on 11/29/2018

On November 27th, Acting Deputy Chief Administrative Patent Judge Jacqueline Bonilla presented a webinar on the PTAB’s proposed Motion to Amend pilot program. In October 2018, the Patent Office published a request for...more

USPTO Proposes New Amendment Procedure for America Invents Act

Fish & Richardson on 10/31/2018

Director Iancu proposed a new amendment procedure on Thursday, October 25. The Director indicates that his proposed changes to the existing amendment practice were intended to avail patent owners of a more viable option for...more

USPTO Proposes Changes to Post-Grant Amendment Procedures

Goodwin on 10/29/2018

The USPTO announced a proposal today to change the procedures for amending claims in post-grant proceedings. Even though the AIA specifically provides for claim amendments in IPRs, claim amendments have been rare in actual...more

USPTO Issues Second Round of AIA Rule Changes

Wilson Sonsini Goodrich & Rosati on 4/4/2016

On April 1, 2016, the U.S. Patent and Trademark Office (USPTO) issued another round of amendments to the rules governing Patent Trial and Appeal Board (PTAB) trial proceedings under the Leahy-Smith America Invents Act (AIA)....more

Intellectual Property Newsletter - September/October 2015

King & Spalding on 9/29/2015

PTAB Update on Inter Partes Review - On August 19, 2015, the Director of the USPTO released a blog post reporting on the state of post-grant review proceedings created by the Leahy-Smith America Invents Act of 2011 and...more

New PTAB Trial Rules Proposed

McDermott Will & Emery on 9/3/2015

On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) published a proposal to amend the existing rules of practice for inter partes review (IPR), post-grant review (PGR), the transitional program for covered...more

USPTO Announces Second Round of AIA Rule Changes

Wilson Sonsini Goodrich & Rosati on 8/26/2015

On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) announced another set of proposed changes to the rules governing Patent Trial and Appeal Board (PTAB) trial proceedings under the America Invents Act (AIA)....more

U.S. Patent and Trademark Office Announces Proposed Changes to AIA Proceedings

Morrison & Foerster LLP on 8/21/2015

On August 19, 2015, the United States Patent and Trademark Office (“Office”) presented proposed amendments to the rules governing trial practice for inter partes review, post-grant review, transitional post-grant review for...more

USPTO Issues Second Round of Proposed Changes to the Rules of Practice Before the Patent Trial and Appeal Board

Dorsey & Whitney LLP on 8/21/2015

The America Invents Act (AIA) was enacted into law on September 16, 2011. A major provision of the AIA provided for a number of post grant proceedings to be heard by the rebranded Patent Trial and Appeal Board (PTAB). ...more

Patent Prosecution Updates

Saul Ewing Arnstein & Lehr LLP on 5/11/2015

On April 14, 2015, the House of Representatives introduced a bill to amend the pre-filing grace period provisions of the America Invents Act (AIA). The bill, entitled "Grace Period Restoration Act of 2015" (H.R. 1791),...more

Claims Can Be Amended in IPR – Really! - Riverbed Technology, Inc. v. Silver Peak Systems, Inc.

McDermott Will & Emery on 3/9/2015

In just the second instance since America Invents Act (AIA) / post-grant reviews became available, the Patent Trial and Appeal Board (PTAB or Board) allowed a patent owner to substitute new claims in its patents in the course...more

ITC Section 337 Update – November 2014

King & Spalding on 11/24/2014

ITC Trial Lawyers Association Annual Meeting: November 13, 2014 – ITCTLA held its Annual Meeting on November 13, in Commission Main Hearing Room. Highlights of the meeting, included Chairman Broadbent’s opening remarks...more

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