News & Analysis as of

First-to-File Inter Partes Review (IPR) Proceeding

[Webinar] Best Patent Practices in a Transforming Environment | Part I: Evolving Strategies for Patent Procurement - Feb. 22nd,...

by Robins Kaplan LLP on

Today’s patent practice is rapidly transforming.  The practice is undergoing sea changes in patent eligibility, enforcement strategies, and damages.  Now more than ever, innovative companies need to adopt best practices to...more

The PTAB Review - June 2016

Post-Grant Review Proceeding Filings Ramp Up In addition to inter partes review (IPR) and covered business method (CBM) review proceedings, the America Invents Act (AIA) provides for post-grant review (PGR) proceedings. PGR...more

Decision on Institution in PGR petition (PGR2015-00019); US Patent 8,876,991

by Fish & Richardson on

To date, activity in the PGR (post-grant review) field is insignificant compared to activity in the IPR (inter partes review) or CBM (covered business method review) fields. For example, while there have been 3,953 petitions...more

Use of Priority Denial to Subject Apparent "Pre-AIA" Patents to PGR: Inguran v. Premium Genetics

by Foley & Lardner LLP on

A recent decision by the PTAB, Inguran v. Premium Genetics, demonstrates that a Petitioner may subject an apparent “pre-AIA” patent, having at least one priority date before and at least one priority date after March 16,...more

Intellectual Property Bulletin - Winter 2014

by Fenwick & West LLP on

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

TC's inside IP - Winter 2013: The AIA: Reviewing the First Year of Inter Partes Review

by Thompson Coburn LLP on

September 16, 2013, marked the one-year anniversary of the implementation of the America Invents Act, and with it, the introduction of an important tool for challenging the validity of an issued patent at the U.S. Patent and...more

The America Invents Act (AIA) Affects Design Patents, Too

by Ballard Spahr LLP on

Over the last few years, companies have increasingly recognized the value of design patents, which are directed to the ornamental (non-functional) appearance of a product....more

Intellectual Property Litigation Alert: Post-Grant Review And Inter-Partes Review Are New Alternatives To Federal Litigation

by Stinson Leonard Street on

In September 2011, the America Invents Act (AIA) reformed the United States patent statutes. One of the most significant reforms is the change from a "first-to-invent" system to a "first-inventor-to-file" system for new...more

AIA Technical Corrections Bill Signed Into Law

President Obama signed into law H.R. 6621 on January 14, 2013, enacting a number of technical corrections to the Leahy-Smith America Invents Act and title 35, United States Code. In addition to correcting a number of...more

Stripped of Controversial Provisions, Lame-Duck Patent Reform Heads to Obama's Desk

by Bracewell LLP on

On January 1, 2013 — immediately after passing the fiscal crisis bill — the House of Representatives agreed by voice vote (at 11:13 PM) to approve the Senate's Amendments to H.R. 6621. A controversial provision that would...more

Kirton McConkie: America Invents Act (AIA) (Presentation)

by Kirton McConkie PC on

Summary: America Invents Act (AIA): - Changes to 35 USC 102 and 103 .. “First to File” System .. Derivation Proceedings - Review & Opposition of Patents. .. Post-Grant Review .. Inter Partes...more

Be Prepared: America Invents Act Will Be Changing in the U.S. from ‘First-to-Invent’ to ‘First-to-File’ System

by Pepper Hamilton LLP on

September 16, 2012 marked the second wave of implementations of the America Invents Act. The first wave of implementations took place a year ago, September 16, 2011, and included changes to false marking, fees,...more

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