News & Analysis as of September 19, 2024

America Invents Act › First-to-File › Inventors

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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... more +

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 -

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): SNIPR Technologies Ltd. v. Rockefeller University, 72...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/5/2024

As part of the America Invents Act (“AIA”), Congress moved the patent system from a first-to-invent to a first-inventor-to-file system. For patents governed by the new first-to-file system, the Act also eliminated...more

SNIPR Technologies Ltd. v. Rockefeller University (Fed. Cir. 2023)

McDonnell Boehnen Hulbert & Berghoff LLP on 7/17/2023

One of the wonderful (as in, it makes one wonder) and frustrating (which needs no explanation) aspects of patent law is that just when you think a question is settled it either isn't or the conventional interpretation is...more

Publication of Part of Complex Invention Does Not Prevent Joint Inventorship

Manatt, Phelps & Phillips, LLP on 9/1/2020

In Dana-Farber Cancer Institute v. Ono Pharmaceutical Co., Ltd., the Federal Circuit held that publication of a part of a complicated invention did not automatically preclude joint inventorship of that invention. The court...more

What Rights Will I Lose if I Pitch My Invention to Investors Before I File a Patent Application?

Ward and Smith, P.A. on 5/24/2017

Did you know that the individual often credited with popularizing karaoke did not reap the financial rewards of his invention to the extent possible? It's true—Japanese musician Daisuke Inoue invented karaoke in Kobe, Japan...more

Drew Hirshfeld Appointed as New Commissioner of Patents

McDonnell Boehnen Hulbert & Berghoff LLP on 7/31/2015

The U.S. Patent and Trademark Office announced earlier today that U.S. Secretary of Commerce Penny Pritzker has appointed Deputy Commissioner for Patent Examination Policy Drew Hirshfeld to be the new Commissioner for Patents...more

Federal Circuit Sidesteps Constitutionality of AIA First-to-File Provision

McDermott Will & Emery on 9/5/2014

MadStad Eng’g, Inc. v. USPTO - The U.S. Court of Appeals for the Federal Circuit faced an issue of first impression when a named inventor on three patents challenged the first-inventor-to-file provision of the America...more

Top Three Stories of 2013

McDonnell Boehnen Hulbert & Berghoff LLP on 1/6/2014

Reflecting upon the events of the past twelve months, Patent Docs presents its seventh annual list of top biotech/pharma patent stories. For 2013, we identified fourteen stories that were covered on Patent Docs last year...more

MBHB Snippets: Review of Developments in Intellectual Property Law - Spring 2013 - Volume 11, Issue 2

McDonnell Boehnen Hulbert & Berghoff LLP on 5/13/2013

In This Issue: Comments on New AIA Rules; Implementing the New Micro Entity Status at the U.S. Patent Office; Obama Administration Focuses on Chinese Trade Secret Misappropriation; and Tiffany & Co. v. Costco Wholesale...more

A Cautionary Tale for Patent Applicants

Foley & Lardner LLP on 4/5/2013

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

AIA Technical Corrections Bill Signed Into Law

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 1/16/2013

President Obama signed into law H.R. 6621 on January 14, 2013, enacting a number of technical corrections to the Leahy-Smith America Invents Act and title 35, United States Code. In addition to correcting a number of...more

“America Invents Act” Patent Law Overhaul: The Benefits and the Drawbacks

Davis Wright Tremaine LLP on 11/22/2011

“A good idea is never lost. Even though its originator or possessor may die without publicizing it, it will someday be reborn in the mind of another.” ~ Thomas Edison As any inventor or innovator will tell you, an...more

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