AIA Impact on Start Up Capital
Patent Office Litigation Update: Lessons Learned from Contested Proceedings at the USPTO
The Decision Maker's Guide to Contested Proceedings Under the American Invents Act
Prior Art Challenges After First-Inventor-to-File
What the First-to-File Patent Change Means (And What IP Strategists Should Do About It)
Expert testimony [may be] required not only to explain what the prior art references disclosed, but also to show that a person skilled in the art would have been motivated to combine them in order to achieve the claimed...more
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar hosted a seminar series on intellectual property basics for Temecula’s business community. Entrepreneurs, investors, startups, inventors and anyone interested in...more
As of March 16, 2013, all the provisions of the Leahy-Smith American Invents Act (“AIA”) have become effective. The AIA creates a new patent system for the United States with important ramifications for all technology...more
Can a method of treatment claim be inherent in the prior art if neither the formulation nor the method of using the formulation twice a day were in the prior art? ...more
Obviousness-Type Double Patenting May Exist When There Is Neither Common Ownership nor Common Inventorship - Addressing an obviousness-type double patenting rejection, the U.S. Court of Appeals for the Federal Circuit...more
Parties in patent infringement lawsuits frequently must choose a witness to explain complex or scientific technology behind an invention or an accused product that sits at the heart of a claim or a defense. Often, the parties...more
On April 16, 2013, in Bayer Schering Pharma AG v. Watson Pharm., Inc., the U.S. Court of Appeals for the Federal Circuit (Lourie,* Schall, Prost) reversed the district court's summary judgment that U.S. Reissue Patent No....more
The following section will discuss: - Written description and enablement, amendment - Obviousness - Usefulness....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
On April 4, 2013, in Saffran v. Johnson & Johnson, the U.S. Court of Appeals for the Federal Circuit (Lourie,* Moore, O'Malley) reversed the district court's judgment that Johnson & Johnson and Cordis Corp. infringed U.S....more
On April 5, 2013, in In re Morsa, the U.S. Court of Appeals for the Federal Circuit (Rader, Lourie, O'Malley*) affirmed-in-part, vacated-in-part and remanded the USPTO Board of Patent Appeals and Interferences decision...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
In this video, Eldora L. Ellison, Ph.D., director with the intellectual property law firm Sterne, Kessler, Goldstein & Fox P.L.L.C., discusses lessons learned from pending inter partes review and covered business method...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
Inherency is not part of Australian novelty law according to the courts. But a recent appeal court decision considers novelty where there is either implicit disclosure or the claimed invention is the inevitable result of the...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
In This Issue: • Licensing to Foreign Manufacturers Satisfies Domestic Industry • Appeal Found to Be Moot in Light of “Side Bet” • Mere Design Choice Leads to Obviousness Finding • Design Patent Infringement...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 15 April 2013, the bulk of 'Raising the Bar' amendments to the Australian Patents Act come into effect. These amendments will change Australian patent law significantly by raising patentability and specification...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
The USPTO’s final First Inventor To File rules and Examination Guidelines were published in the February 14, 2013 edition of the Federal Register. While many of the final rules are identical to the proposed rules, there are...more
In a Federal Register Notice published January, 13, 2013, the USPTO asks the public to consider potential best practices aimed at improving patent application quality ”in order to facilitate examination and bring more...more
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