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Patent Reform Patents First-to-File

Bennett Jones LLP

Stay Here or There? Recent Direction from the Québec Court of Appeal on Stays in Proposed Parallel Class

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The Québec Court of Appeal recently released a decision in Micron Technology Inc. c Hazan, 2020 QCCA 1104, that could have important implications for defendants seeking to have proposed class proceedings in Québec courts...more

Womble Bond Dickinson

Quick Protection or Flexible Prosecution? Have it Both Ways with Track-One and Deferred Examination

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Today, technology companies are conceptualizing new ideas and improving upon those ideas at a blistering pace. Previously, under the United States’ first-to-invent patent system, such companies could afford to wait until new...more

Foley & Lardner LLP

Finally Facing First Inventor to File Issues

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It has been over three years since the Leahy-Smith America Invents Act was signed into law by President Obama, and just over eighteen months since the effective date of the first-inventor-to-file changes to 35 USC § 102....more

Winstead PC

USPTO to Host America Invents Act Roadshow in Seven Cities Nationwide

Winstead PC on

The U.S. Patent and Trademark Office announced that it will host seven roadshow events across the country to increase public understanding of the First Inventor to File (FITF) provisions of the America Invents Act. The...more

McDonnell Boehnen Hulbert & Berghoff LLP

Top Three Stories of 2013

Reflecting upon the events of the past twelve months, Patent Docs presents its seventh annual list of top biotech/pharma patent stories. For 2013, we identified fourteen stories that were covered on Patent Docs last year...more

Foley & Lardner LLP

Patent Reform: The Leahy Patent Transparency and Improvements Act

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Now that the Goodlatte Innovation Act has passed the House, its provisions likely will be reconciled with the Patent Transparency and Improvements Act (S. 1720) that was introduced in the Senate by Senator Leahy (D-Vt.) on...more

King & Spalding

The Five Ps of Patent Reform: What You Need to Know About the Patent Litigation Reform Legislation Moving Through Congress

King & Spalding on

The Leahy–Smith America Invents Act (AIA) was passed by Congress and enacted into law on September 16, 2011. Named for its lead sponsors, Sen. Patrick Leahy (D-VT) and Rep. Lamar Smith (R-TX), the Act changed the U.S. patent...more

Foley & Lardner LLP

Goodlatte Proposes an Obviousness Type Double Patenting Statute

Foley & Lardner LLP on

One of the provisions of the Innovation Act introduced by Congressman Goodlatte (R-VA) on October 23, 2014, purports to codify the doctrine of obviousness-type double patenting for applications and patents examined under the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Coalition Opposes Expansion of AIA § 18

Last week, a coalition of more than 100 companies and organizations including the Biotechnology Industry Organization (BIO), the California Healthcare Institute (CHI), and Eli Lilly & Company, sent a letter to Congressional...more

Foley & Lardner LLP

USPTO AIA Forum to Be Held on Second Anniversary of the America Invents Act

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On September 16, 2013–the second anniversary of the America Invents Act (AIA)–the USPTO will host a forum on the AIA at its Alexandria, Virginia campus. The USPTO AIA forum will provide an overview of AIA implementation to...more

McDermott Will & Emery

Focus on Private Equity - Issue 2, June 2013

McDermott Will & Emery on

In This Issue: - Avoiding Repricing Pitfalls - America Invents Act: Practical Considerations for Portfolio Companies. - Excerpt from Avoiding Repricing Pitfalls: Perhaps it is no more than a result of...more

Foley & Lardner LLP

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

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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

Foley & Lardner LLP

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

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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

Foley & Lardner LLP

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

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

Butler Snow LLP

Pro Te Solutio - Vol. 6 No. 1 February 2013

Butler Snow LLP on

In This Issue: - Can Experts Testify as to the Ethics or State of Mind of Corporate Defendants? - Patent Reform for Biotech Companies - United States v. Caronia and its Implications for Off-Label...more

McDonnell Boehnen Hulbert & Berghoff LLP

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

McDonnell Boehnen Hulbert & Berghoff LLP

MBHB Snippets: Review of Developments in Intellectual Property Law - Spring 2013 - Volume 11, Issue 2

In This Issue: Comments on New AIA Rules; Implementing the New Micro Entity Status at the U.S. Patent Office; Obama Administration Focuses on Chinese Trade Secret Misappropriation; and Tiffany & Co. v. Costco Wholesale...more

Downs Rachlin Martin PLLC

The New Age Of Patent Enforcement In The United States: The Brave New World Post-AIA Is NOT First To File – It IS Post Grant...

Sure, First-to-File is new here, but the rest of the world has been dealing with it forever and the sky has not fallen on technological innovation elsewhere. And it won’t fall on it here either under a First-to-File system....more

Foley & Lardner LLP

A Cautionary Tale for Patent Applicants

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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

Ervin Cohen & Jessup LLP

Patent Reform — First to File is Finally Here

As of March 16, 2013, the USPTO officially switched to the first-to-file system—from the first-to-invent system that had previously been a hallmark of U.S. patent law. Part of the America Invents Act, which was enacted...more

Dickinson Wright

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

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

Stinson LLP

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

Stinson LLP 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

Foley & Lardner LLP

Does The Experimental Use Exception Survive The AIA?

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Now that the March 16, 2013 effective date of the first-to-file provisions of the Leahy-Smith America Invents Act (AIA) is fast-approaching, I have been reviewing the commentary in the USPTO’s February 14, 2013 Federal...more

McDermott Will & Emery

IP Update, Vol. 16, No. 2, -- February 2013

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In This Issue: Patents - Supreme Court: State Court Has Jurisdiction over a Legal Malpractice Claim; Nothing Non-Obvious About Applying Pre-Existing Technology to the Internet; The Federal Circuit Is Not the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent Filing Considerations Under the AIA on the Eve of March 16th

March 16, 2013 is rapidly approaching. This date is significant because it is the effective date of Section 3 of the American Invents Act (AIA). Section 3 of AIA includes the first-inventor-to-file provisions (FITF). Most of...more

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