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America Invents Act Prior Art

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 -

The Importance of Affidavit Evidence in Proving Public Accessibility of Printed Publications

by McDermott Will & Emery on

Addressing the issue of evidence sufficient to establish when a document qualifies as printed publication and prior art, the Patent Trial and Appeal Board (PTAB or Board) issued two decisions reaching differing conclusions,...more

The Board Gives Section 325(d) Sharp Teeth—Part II – The Petitioner's Criticality to Selecting and Using The Right Prior Art

This is the second of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part three will appear in our December 2017 newsletter....more

Perspectives on the PTAB Newsletter - November 2017

The Perspectives on the PTAB Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both sides...more

Expanded PTAB Panel Explains Exercise of Discretion on Second-Bite Petitions

by McDermott Will & Emery on

A rare expanded panel (including the chief judge) of the Patent Trial and Appeal Board (PTAB or Board) issued an precedential decision denying requests for rehearing of decisions denying institution in five inter partes...more

PTAB Should Have Given Credit to Inventor Corroborating Evidence

by McDermott Will & Emery on

Addressing the issue of whether the patent owner had provided sufficient evidence of prior conception to establish inurement by third-party activity, the US Court of Appeals for the Federal Circuit reversed and remanded a...more

The PTAB Establishes Standards for Exercising Discretion to Deny Institution Under § 314(a) and § 325(d)

In AIA post-grant proceedings, petitioners occasionally present challenges based on prior art or argumentation that was previously presented to the Patent Office. In some cases, the Patent Trial and Appeal Board (PTAB) has...more

The Board Gives Section 325(d) Sharp Teeth

This is the first of a three-part series discussing developments around Section 325(d). Part two will appear in our November 2017 newsletter and part three will appear in our December 2017 newsletter. Congress granted the...more

8 Ways To Avoid Inter Partes Review Estoppel

by Morrison & Foerster LLP on

Inter partes review has become an enormously popular method of challenging patents. One important downside of filing for IPR, however, is that, if the petitioner loses, it faces an estoppel that could prevent it from raising...more

[Webinar] Prior Art: Understanding and Attacking Prior Art Rejections - September 6, 10:00am ET

Join us for a compare and contrast discussion on what constitutes prior art in the United States and in Europe, and how to respond to rejections over that art. Relying on over sixty years combined prosecution experience...more

PTAB Can Rely on New Evidence Introduced by Petitioner in its Reply

by Pepper Hamilton LLP on

In a decision last month, the Court of Appeals for the Federal Circuit gave petitioners in AIA proceedings yet another weapon to invalidate patents – by affirming a Patent Trial and Appeal Board (PTAB) decision that relied,...more

PTAB Discretion, Petitions Reliant on Prior Art Cited During Prosecution

by McDermott Will & Emery on

In three recent cases, the Patent Trial and Appeal Board (PTAB) addressed arguments pertaining to when and how it should exercise its discretion to deny some or all grounds for unpatentability in an inter partes review (IPR)...more

Patent Grace Period Laws in the IP5 Patent Offices: Some Similarities But Largely Different

Life science and other high technology companies most frequently file patent applications in five IP offices (IP5), namely: the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japanese...more

New Fed Circuit decision bolsters on-sale bar

by Thompson Coburn LLP on

Patent litigators will tell you that there are many ways to invalidate a patent. One of their favorites is a self-inflicted ground of invalidity known as the “on-sale bar.” Under patent law, if you sell (or offer to sell)...more

Federal Circuit Clarifies the On-Sale Bar Under the AIA: No Public Disclosure of the Invention Is Required if the Existence of the...

Under 35 U.S.C. § 102, the on-sale bar generally holds that the sale of a patented invention more than one year before the filing date invalidates the patent. Before the America Invents Act (AIA), courts held that...more

Federal Circuit Maintains Pre-AIA Interpretation of the On-Sale Bar for Public Sales

by Brinks Gilson & Lione on

In Helsinn Healthcare S.A., v. Teva Pharm. USA, Inc., the Federal Circuit recently held that, despite changes to the statutory language of § 102 under the Leahy-Smith America Invents Act (“AIA”), the Court’s pre-AIA...more

Are Secret Sales Prior Art Under The AIA?

by Foley & Lardner LLP on

In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit found that a publicly-announced “Supply and Purchase” agreement triggered the on-sale bar under pre-AIA 35 USC § 102(b) and under AIA 35 USC §...more

Federal Circuit Clarifies the On-Sale Bar under AIA

Last week the Federal Circuit in Helsinn Healthcare v. Teva Pharmaceuticals clarified the scope of the on-sale bar rule under the America Invents Act (AIA). The on-sale bar in general means that a sale or an offer to sale of...more

A Sale is Still a Sale under the AIA

At least so far, the meaning of “on sale” under AIA 35 U.S.C. §102(a)(1) has not changed from pre-AIA 35 U.S.C. §102(b) following a decision by the Federal Circuit in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.,...more

Federal Circuit Holds Non-Public Sales Can Still Satisfy The On-Sale Bar For Patents Under The AIA

by Weintraub Tobin on

In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the United States Court of Appeals for the Federal Circuit recently ruled that the America Invents Act’s (“AIA”) did not change the meaning of the on-sale bar...more

Public Sales Remain Prior Art After AIA Even Without Disclosing Invention

by Dorsey & Whitney LLP on

Public sales which do not themselves disclose an invention nonetheless continue to be available as prior art events after the America Invents Act (AIA). Innovators must file US patent applications within one year of any sale...more

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

by Morgan Lewis on

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. Please see full Digest Report below for more information....more

Federal Circuit: AIA On-Sale Bar Applies Even if Details of Invention Are Not Publicly Disclosed

In reversing a previous U.S. District Court ruling, the Federal Circuit held on May 1, 2017 that entering into and publicizing a licensing and supply agreement may constitute an on-sale bar under the America Invents Act...more

Novartis AG v. Noven Pharmaceuticals Inc. (Fed. Cir. 2017)

In inter partes review proceedings, is the U.S. Patent and Trademark Office's Patent Trial and Appeal Board required to take into account a final district court determination of non-obviousness of the same claims based on the...more

Design Patent Survives AIA Review

by McDermott Will & Emery on

In a rare inter partes review (IPR) decision involving a challenge to a design patent, the Patent Trial and Appeal Board (PTAB) issued a final decision finding that the petitioner had not shown that a sole claim of a design...more

Post-Grant Review Estoppel – Looking Forward by Looking Back at Estoppel in Inter-Partes and Covered-Business-Method Review

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more

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