News & Analysis as of

First-to-File Patent Applications

Ten Tips on Preparing and Prosecuting Patent Applications

by Snell & Wilmer on

1. Keep Your Eyes on the Prize. A patent defines a piece of intellectual property. As with a parcel of land, the patent’s owner can legally prevent any trespass (called an infringement) on the patent. Analogous to the...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

Under the First-to-File Rule, District Court Stays Case Filed Hours After a Declaratory Judgment Action

Under the first-to-file rule (not to be confused with the provision from the America Invents Act), when two actions involving overlapping issues and parties are pending in two federal venues, the first-filed case is generally...more

[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

Can Disclaimer Be Used To Avoid PGR Institution?

by Reed Smith on

The PTAB recently instituted post-grant review in Core Survival, Inc. v. S & S Precision, LLC (PGR2015-00022, paper 8). While the patent owner did not argue that that the patent was eligible for post-grant review, the facts...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

Did The PTAB Dose The AIA Poison Pill Incorrectly Against Premium Genetics?

by Foley & Lardner LLP on

In Inguran, LLC v. Premium Genetics (UK) Ltd., the USPTO Patent Trial and Appeal Board (PTAB) instituted Post Grant Review (PGR) proceedings in a patent granted from an AIA transition application based on its finding that at...more

Did Recent Changes in the Patent Laws Turn the Page on the Need for Accurate Laboratory Notebooks?

by BakerHostetler on

With the enactment of the Leahy-Smith America Invents Act (AIA), the U.S. patent system moved to a “first inventor to file” approach for examining all applications having an effective filing date on or after March 16, 2013....more

Faster Is Not Always Better: Dangers of Quickly Filed Patent Applications

by Hodgson Russ LLP on

The United States switched to a “first-inventor-to-file” patent system in 2013. Ever since, articles and client alerts have stressed the importance of filing your patent applications as quickly as possible. Otherwise, the...more

Does the AIA Have a Prior Art Exception You Can Use?

U.S. patent applications filed after March 16, 2013, when the “First-Inventor-to-File” portion of the America Invents Act (AIA) took effect, have started to be published. Thus, it is a good time for applicants to consider...more

Beginning the Patent Process

by Knobbe Martens on

The second step in bringing your medical device to market is to understand whether you can protect your invention. This article is part two of a series that presents the three big issues in intellectual property: Do...more

EDNY – First-Filed Action Forum Should Determine Whether an Exception to the First-to-File Rule Applies

On November 26, 2013, Silver Line Building Products LLC (“Silver Line”) filed a declaratory judgment complaint in the Eastern District of New York against J-Channel Industries Corporation (“J-Channel”), seeking a declaration...more

Five Patenting Lessons Exemplified by Google’s Glucose-Sensing Contact Lenses

by Knobbe Martens on

Google recently announced on its blog that its “Google-X” laboratory is testing a prototype “smart” contact lens that includes a miniaturized electronic sensor designed to measure glucose level in the wearer’stears. I...more

Class 6: How to Avoid Losing Patent Rights

by Knobbe Martens on

In This Presentation: •Today’s Main Topic: – How to Avoid Losing Patent Rights •May Cover: – What is Intellectual Property (Class 1 Redux)? – Making Use of Trade Secrets (Catch-up from...more

Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part III

by Foley & Lardner LLP on

In this final post of our trilogy, we present a third scenario where the first-to-file regime under AIA offers previously unavailable opportunities for disqualifying certain prior art references....more

Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part II

by Foley & Lardner LLP on

Our previous post discussed the need for invoking the first-to-file regime in order to maximize the value of certain pre-AIA applications that claim foreign priorities. Here, we present another scenario where the different...more

Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part I

by Foley & Lardner LLP on

The first-to-file provisions of the Leahy-Smith America Invents Act (AIA) took effect on March 16, 2013. The predominant view among patent practitioners is that applicants should in general keep their pre-AIA patent...more

MBHB Snippets: Review of Developments in Intellectual Property Law - Spring 2013 - Volume 11, Issue 2: Comments on New AIA Rules

On March 16, 2013, the final (and most significant) portion of the Leahy-Smith America Invents Act (AIA) took effect, and the United States broke from a first-to-invent regime to a first-inventor-to-file (FITF) regime. Of...more

Intellectual Property and Your Startup (Presentation)

by Knobbe Martens on

Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar hosted a seminar series on intellectual property basics for Temecula’s business community. This presentation is from the first class giving a basic overview of...more

A Cautionary Tale for Patent Applicants

by Foley & Lardner LLP on

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

Intellectual Property LEGAL NEWS - March 22, 2013 • Volume 1, Number 2

by Dickinson Wright on

In This Issue: - AMERICA INVENTS ACT FINAL IMPLEMENTATION: FROM FIRST-TO-INVENT TO FIRST-TO-FILE: The America Invents Act (“AIA”), which went into effect September 16, 2011, introduces some of the most...more

Preserving First-to-Invent Status Under the America Invents Act

by Foley & Lardner LLP on

Now that the first-inventor-to-file provisions of the America Invents Act (AIA) have taken effect, stakeholders should understand how to preserve the first-to-invent status of patent applications that were filed before March...more

Consider Taking These Actions Before March 16, 2013, The Effective Date of New U.S. Patent Laws

Eighteen months after enactment of patent reform via the Leahy-Smith America Invents Act, important new provisions of U.S. patent law will become effective on March 16, 2013. Inventors, their employers, and other owners of...more

Maximizing the Effect of Patent Applications as Prior Art Under the AIA

by Foley & Lardner LLP on

Now that we are less than one month away from implementation of the First-Inventor-To-File provisions of the America Invents Act (AIA), stakeholders are considering whether to file new patent applications now, to secure...more

Take a Proactive Approach to Patents in View of Patent Reform

by Davis Brown Law Firm on

The U.S. Patent Act defines the circumstances in which the federal government may issue patents. Until recently, our patent laws had not been significantly updated since 1952, the year that patents were issued for the PEZ...more

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