IP|Trend: Inter Partes Review: Is it Litigation or Something Else?
Post-Grant Insights: The Preparation and Pace of the PTAB
Controlling the Cost of Patent Litigation
Post-Grant Insights: The Impact of PTAB Appeals on the Federal Circuit
Post-Grant Insights: Key Considerations in PTAB Oral Hearings
Post-Grant Insights: What claims to include in your PTAB petition
What are the Implications of Alice v. CLS?
What Does the Supreme Court Ruling in Alice v. CLS Mean to a Software Entrepreneur?
Derivation Proceedings: What You Need to Know
What is Graphene? Fenwick Patent Attorney Has the Answer
Examining Trends in Worldwide Design IP Filings
Track One and the Patent Prosecution Highway
The Intersection Between Intellectual Property Law and Employment Law
Lessons from Nautilus v. Biosig at the Supreme Court
The Art of Communicating to a Jury
The Evolution of Patent Damages
The Changing Landscape of Intellectual Property in China
How does the IPR Process Work?
Interpartes Review: Is it Right for You?
Taking Notice of Notice Letters
Last week, on September 2, 2014, Accord Healthcare, Inc. ("Accord") filed what appears to be the second-ever Post-Grant Review ("PGR") (see Petition). This PGR was for U.S. Patent No. 8,598,219 ("the '219 Patent"), which is...more
The recent America Invents Act both modified and created procedures for challenging patents in proceedings before the United States Patent and Trademark Office (PTO) after they have been issued, which are called post grant...more
Boku, Inc. ("Boku") filed a CBM petition with the PTAB seeking review of the patentability of Plaintiff's U.S. Patent No. 7,273,168 (the "'168 patent"). The petition challenged all claims of the '168 patent on grounds that...more
FEDERAL CIRCUIT CASES -
Newsgroup Post Held to be A Printed Publication and Anticipatory Prior Art -
On May 27, 2014, the Federal Circuit affirmed a decision granting summary judgment of invalidity by the...more
It is common knowledge that the bread-and-butter of emerging startups lies in securing exclusive rights to key aspects of their implicated technology. Staking claims to valuable IP assets via direct ownership or exclusive...more
In the final decision of the first inter partes review (IPR) (under the America Invents Act), in a proceeding that included a rejection of the patent owner’s attempt to antedate prior art using, as evidence, an inventor’s...more
A look back on 2013 reveals that one reform enacted under the America Invents Act – Patent Office Litigation – has perhaps had the most immediate and dramatic impact. While many predicted that Inter Partes Review (IPR)...more
In Sanofi-Aventis v. Pfizer, Inc., the Federal Circuit affirmed the USPTO’s determination that Pfizer had proven an earlier date of invention of the DNA sequence at issue, even though it did not have the full, correct...more
On October 23, 2014, Congressman Goodlatte (R-VA) introduced the “Innovation Act,” which is intended “to make improvements and technical corrections” to the Leahy-Smith America Invents Act (AIA) “and for other purposes.”...more
Jon Wright, a director at the intellectual property law firm Sterne, Kessler, Goldstein & Fox, gives would-be petitioners four tips for preparing for inter partes review under the America Invents Act. Wright tells petitioners...more
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
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
While much attention has been given to the recent, significant changes in U.S. patent law arising from the America Invents Act (“AIA”), lesser attention has been given to patent law changes brought about by further...more
Enactment of the Leahy-Smith America Invents Act in 2011 focused the patenting community on the changes of U.S. patent law from "first to invent" under the 1952 Patent Act to "first inventor to file" under the AIA as the...more
In the United States, patent applicants and their counsel owe a duty of candor and good faith to the Patent Office. This duty is breached when the applicant or its counsel knowingly fails to disclose material prior art...more
An important consideration following the implementation of the America Invents Act is how will the law will affect capital raises for critical start-ups and emerging companies. In this video, Robert Greene Sterne, a founding...more
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
Under the America Invents Act, a patent owner has many tools available when considering contested proceedings. Some of those options include inter partes review, covered business method review proceedings, supplemental...more
Originally published in InsideCounsel on March 5, 2013.
The primary advantage of mediation is to avoid the costs and risks of litigation. A secondary advantage of mediation is the ability to tailor the resolution of...more
The First-Inventor-to-File provisions of the America Invents Act (AIA) will take effect on March 16, 2013. In this video, John Covert, a director with Washington, DC-based intellectual property law firm Sterne, Kessler,...more
The United States Patent and Trademark Office (USPTO) finalized the rules of practice implementing the "first inventor to file" provision of the America Invents Act (AIA). The rules take effect March 16, 2013. The "first...more
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
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
On July 26, 2012, the United States Patent and Trademark Office (USPTO) published proposed Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act (AIA), which...more
One of the most significant provisions of the recently enacted America Invents Act (AIA), the change from a "first to invent" system to a "first inventor to file" system, will go into effect March 16, 2013. Currently, the...more
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