Protecting Your Brand in China
What the First-to-File Patent Change Means (And What IP Strategists Should Do About It)
The Corporate Law Report: First-to-File Patents, Hiring for Cultural Fit, Roth Conversions Post-Fiscal Cliff, and Global Corporate Insights
The United States patent system underwent a significant change with the enactment of the First-Inventor-to-File (FITF) provision of the America Invents Act, which became effective on March 16, 2013. The FITF provision...more
This case addresses certain implications of the Laehy-Smith America Invests Act (AIA), namely whether patents with a filing date after March 16, 2013 (pure AIA patents) may be part of an interference proceeding under pre-AIA,...more
In a “first to file” patent system as exists in the United States and in most countries throughout the world, timing of when to file a patent application is critically important but must be balanced by patentability...more
Dear Patenticity, My company has several new product concepts under development right now, and some are very early in the design process. We are in a very competitive space, so we want to protect our work with patents to...more
A patent is eligible for post-grant review (“PGR”) only if the patent is subject to the first-inventor-to-file provisions of the AIA. In Tricam Indus., Inc. v. Little Giant Ladder Sys., LLC, the PTAB explained that...more
There are many misconceptions or ‘myths’ about patents that have found their way into popular discourse, ranging from what type of innovations are patentable, to how important it is to own and protect your intellectual...more
The Québec Court of Appeal recently released a decision in Micron Technology Inc. c Hazan, 2020 QCCA 1104, that could have important implications for defendants seeking to have proposed class proceedings in Québec courts...more
Communications Test Design, Inc. v. Contec, LLC - Before O’Malley, Mayer, and Wallach. Appeal from the Eastern District of Pennsylvania. Summary: Filing a declaratory judgment action in the midst of ongoing licensing...more
Today, technology companies are conceptualizing new ideas and improving upon those ideas at a blistering pace. Previously, under the United States’ first-to-invent patent system, such companies could afford to wait until new...more
Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional patent application. These applications are typically used as a faster and lower-cost first...more
1. Keep Your Eyes on the Prize. A patent defines a piece of intellectual property. As with a parcel of land, the patent’s owner can legally prevent any trespass (called an infringement) on the patent. Analogous to the...more
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
Under the first-to-file rule (not to be confused with the provision from the America Invents Act), when two actions involving overlapping issues and parties are pending in two federal venues, the first-filed case is generally...more
Today’s patent practice is rapidly transforming. The practice is undergoing sea changes in patent eligibility, enforcement strategies, and damages. Now more than ever, innovative companies need to adopt best practices to...more
A recent decision by the PTAB, Inguran v. Premium Genetics, demonstrates that a Petitioner may subject an apparent “pre-AIA” patent, having at least one priority date before and at least one priority date after March 16,...more
In Inguran, LLC v. Premium Genetics (UK) Ltd., the USPTO Patent Trial and Appeal Board (PTAB) instituted Post Grant Review (PGR) proceedings in a patent granted from an AIA transition application based on its finding that at...more
With the enactment of the Leahy-Smith America Invents Act (AIA), the U.S. patent system moved to a “first inventor to file” approach for examining all applications having an effective filing date on or after March 16, 2013....more
U.S. patent applications filed after March 16, 2013, when the “First-Inventor-to-File” portion of the America Invents Act (AIA) took effect, have started to be published. Thus, it is a good time for applicants to consider...more
The second step in bringing your medical device to market is to understand whether you can protect your invention. This article is part two of a series that presents the three big issues in intellectual property: Do...more
On November 26, 2013, Silver Line Building Products LLC (“Silver Line”) filed a declaratory judgment complaint in the Eastern District of New York against J-Channel Industries Corporation (“J-Channel”), seeking a declaration...more
Google recently announced on its blog that its “Google-X” laboratory is testing a prototype “smart” contact lens that includes a miniaturized electronic sensor designed to measure glucose level in the wearer’stears. I...more
In This Presentation: •Today’s Main Topic: – How to Avoid Losing Patent Rights •May Cover: – What is Intellectual Property (Class 1 Redux)? – Making Use of Trade Secrets (Catch-up from...more
In this final post of our trilogy, we present a third scenario where the first-to-file regime under AIA offers previously unavailable opportunities for disqualifying certain prior art references....more
Our previous post discussed the need for invoking the first-to-file regime in order to maximize the value of certain pre-AIA applications that claim foreign priorities. Here, we present another scenario where the different...more
The first-to-file provisions of the Leahy-Smith America Invents Act (AIA) took effect on March 16, 2013. The predominant view among patent practitioners is that applicants should in general keep their pre-AIA patent...more