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Defensive Publication: An Alternate Way of Maintaining Your Turf in a Competitive Marketplace

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

New IPR Ruling Further Clarifies Burden on Patentees to Amend Claims

The Patent Trial and Appeal Board (PTAB) issued its second Final Written Decision in a contested case under the AIA's inter partes review process on January 7, 2014. As with the PTAB's first decision, the petitioner...more

A Road Test of the New PTAB and a Road Map for Future IPR’s - Garmin Int’l, Inc., v. Cuozzo Speed Techs. LLC

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

6 Reasons Inter Partes Review Was Popular in 2013

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

Federal Circuit Holds Full Sequence Not Required for Invention of DNA

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

The Goodlatte Innovation Act Proposes More U.S. Patent Reform

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

Four Tips on Preparing Inter Partes Review Petitions [Video]

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

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

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

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

America Invents Act (AIA) Chart For University Personnel

The following chart reflects a stratified list of recommendations that university personnel should consider in view of the new U.S. patent system, i.e., the America Invents Act (AIA), which is intended to align the current...more

More Changes to U.S. Patent Laws Coming From Implementation of 2012 Treaties Act

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

Dey, L.P. v. Sunovion Pharmaceuticals, Inc. (Fed. Cir. 2013)

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

Therasense Revisited: In re Rosuvastatin Calcium Patent Litigation

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

AIA Impact on Start Up Capital [Video]

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

A Cautionary Tale for Patent Applicants

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

The Decision Maker's Guide to Contested Proceedings Under the American Invents Act [Video]

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

IP: Mediation’s role in the patent arena -- In-house counsel should consider using mediation early in patent cases for maximum...

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

Prior Art Challenges After First-Inventor-to-File [Video]

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

USPTO Finalizes "First Inventor to File" Rules

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

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

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

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

America Invents Act: USPTO Publishes Final Examination Guidelines for the First-Inventor-to-File Provisions

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

First Inventor to File System Dictates Changes in Patent Filing Strategies

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

The America Invents Act: All Grown Up in 2013

The America Invents Act (AIA), which was commonly referred to as the “patent reform bill,” was signed into law in 2011, rolled out in 2012 and 2013, and business owners are still wondering what, if anything, it means to them....more

USPTO Issues First-Inventor-to-File Examination Guidelines and Final Rule

In a press release issued earlier today, the U.S. Patent and Trademark Office announced that examination guidelines and the final rule for implementing the first-inventor-to-file (FITF) provisions of the Leahy-Smith America...more

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