News & Analysis as of September 18, 2024

America Invents Act › Discovery

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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 -

Patent Owner Tip #8 for Surviving an Instituted IPR: Additional Discovery is Possible, but Should be Carefully Planned

Mintz - Intellectual Property Viewpoints on 5/28/2021

Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. There are three types of discovery at the Patent Trial...more

IP Hot Topic: USPTO Releases a Second Update to the PTAB Trial Practice Guide

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/30/2019

On July 15, 2019, the USPTO released a second update to Trial Practice Guide for AIA proceedings. The 64-page update reflects some of the recent opinions that the Board has designated as precedential and includes helpful...more

USPTO Announces Sweeping Changes to Motion to Amend Procedures in AIA Trials via Pilot Program

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/18/2019

On March 15, 2019, the United States Patent and Trademark Office (USPTO) launched a pilot program that implements significant changes to motion to amend practice in AIA trials. The Office states that its goal in proposing...more

4 Things You Must Know about AIA Trial Depositions

Esquire Deposition Solutions, LLC on 7/11/2018

After the America Invents Act (AIA) passed with a vote of 304-177 in June 2011, inventors seeking patents had to be the first to file to lay claim to their innovations. As the first major shift in patent law since 1952,...more

Skeptical St. Regis Mohawk Tribe Requests Discovery Regarding Panel Selection Circumstances

McDonnell Boehnen Hulbert & Berghoff LLP on 1/4/2018

The creation of adversarial procedures before the Patent Trial and Appeal Board under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business methods review) has raised a number of...more

2017 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

Morgan Lewis on 5/3/2017

Recent patent reform legislation, rule changes, and court rulings are expected to have a significant impact on the strategies of both patent owners and petitioners....more

The PTAB Review - June 2016

Wilson Sonsini Goodrich & Rosati on 6/10/2016

Post-Grant Review Proceeding Filings Ramp Up In addition to inter partes review (IPR) and covered business method (CBM) review proceedings, the America Invents Act (AIA) provides for post-grant review (PGR) proceedings. PGR...more

Stay Versus Stay: How Litigation Stays Pending IPRs Impact the 30-Month Regulatory Stay in Hatch-Waxman Litigation

WilmerHale on 3/28/2016

Upon initiation of a patent infringement action between branded and generic pharmaceutical companies, the Hatch-Waxman Act (21 U.S.C. § 355(j)) provides for an automatic 30-month stay of Food and Drug Administration approval...more

Intellectual Property Newsletter - November/December 2015

King & Spalding on 12/31/2015

The State of Patent Law: The Interplay of Recent, Pending, and Proposed Changes - Recent developments in the field of patent law have given weight to the old adage that the only thing that is constant is change. Enacted...more

Intellectual Property Bulletin - Summer 2015

Fenwick & West LLP on 10/1/2015

28 U.S.C. § 1782: A Powerful Tool in Global Disputes - As the number and complexity of cross-border and multi-jurisdictional disputes increase, companies can use 28 U.S.C. § 1782 to obtain evidence from U.S.-based...more

Inter Partes Review Proceedings: A Third Anniversary Report

Perkins Coie on 9/18/2015

When inter partes review (IPR) proceedings became effective in September 2012, few people would have predicted the transformative effect it would have on patents and the litigation landscape. Three years in, IPR has become...more

Statute Permits Domestic Discovery for Foreign Opposition Proceedings - Akebia Therapeutics, Inc. v. FibroGen, Inc.

McDermott Will & Emery on 9/1/2015

With ample citation to Supreme Court precedent, the U.S. Court of Appeals for the Ninth Circuit affirmed the use of 28 U.S.C. § 1782 to conduct domestic discovery in aid of foreign opposition proceedings at the European and...more

Patent Pending: The Outlook for Patent Legislation in the 114th Congress

King & Spalding on 7/14/2015

The field of patent law is in a state of flux. Just four years after the America Invents Act (“AIA”) went into effect, Congress is taking up the issue once again, this time seeking to pass legislation to curb abusive patent...more

Congress Continues to Promote Patent Reform Efforts

Orrick, Herrington & Sutcliffe LLP on 6/13/2015

In recent years, Congress has devoted a great deal of attention to patent reform. Those efforts led in 2011 to passage of the Leahy-Smith America Invents Act (AIA), which was the most extensive revision of the patent laws in...more

PTAB Issues ‘Quick Fix’ Rule Package, Effective Immediately

Mintz - Intellectual Property Viewpoints on 5/30/2015

On March 31 we posted (here) about the Patent Office rolling out a series of rulemakings for improving post-grant proceedings, beginning with a first rule package of “quick fixes” this spring. This past Tuesday, May 19, 2015,...more

The Futility of Petitioning Congress (After the Fix Is In): Stakeholders Tell Judiciary Committee What's Wrong with Goodlatte Bill...

McDonnell Boehnen Hulbert & Berghoff LLP on 11/22/2013

What everybody doesn't seem to know is how to get Congress to listen to the needs of the innovation community when well-heeled sectors put their lobbying and financial support in favor of legislation purportedly aimed at...more

Six-Month Report Card: Post-Issuance Proceedings Under the AIA

McDermott Will & Emery on 4/8/2013

Introduction - On September 16, 2012, the U.S. Patent and Trademark Office (USPTO) implemented the provisions of the America Invents Act (AIA) to provide post-issuance patent challenge options to third parties...more

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America Invents Act › Discovery

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