America Invents Act, Derivation Proceeding, Patent Trial and Appeal Board

America Invents Act › Derivation Proceeding › Patent Trial and Appeal Board

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The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition. less -

IP Hot Topic: USPTO Publishes Long-awaited Notice of Proposed Rulemaking with Updates to PTAB Practice and Procedure

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 4/24/2024

On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...more

5 Key Takeaways - PTAB Trials Insights and Strategies-Leveraging Recent Development at the PTAB

Kilpatrick on 8/14/2019

Kilpatrick Townsend partners John Alemanni, Tina McKeon, and Wab Kadaba recently presented to clients on the topic of “PTAB Trials Insights & Strategies – Leveraging Recent Developments at the PTAB” at the annual Kilpatrick...more

A Window into PTAB Derivation Proceedings

McDermott Will & Emery on 5/7/2019

In the first-ever final written decision in a post-American Invents Act (AIA) derivation proceeding, the Patent Trial and Appeal Board (PTAB) found that the petitioner had not shown that an inventor named in the respondent’s...more

Andersen: A Window into Derivation Proceedings before the PTAB

Jones Day on 4/11/2019

Recently, the PTAB issued its first ever final written decision in a post-AIA derivation proceeding in Andersen Corporation v. GED Integrated Solutions, Inc., Case DER2017-00007, Paper 57 (PTAB Mar. 20, 2019), finding that...more

The PTAB Review - June 2018

Wilson Sonsini Goodrich & Rosati on 6/22/2018

Orange Book-Listed Patents Prove to Be Popular Targets for AIA Challenges - On March 13, 2018, Chief Administrative Patent Judge Ruschke of the Patent Trial and Appeal Board (PTAB) released findings of the Patent Office’s...more

Why No One is Talking About Derivation Proceedings

Mintz - Intellectual Property Viewpoints on 11/2/2016

Someone stole your invention and filed for a patent on it? Derivation proceedings in the Patent Office may be an answer. The Leahy-Smith America Invents Act (AIA) amended 35 U.S.C. § 135 to replace interference proceedings...more

Proof of Conception of Invention Is Not Confined to Any Formula - Sanofi-Aventis v Pfizer Inc.

McDermott Will & Emery on 1/3/2014

Analyzing whether proof of conception of a DNA segment invention required a showing of the entire polynucleotide sequence, the U. S. Court of Appeals for the Federal Circuit affirmed the Board of Patent Appeals and...more

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