News & Analysis as of

Patent Applications First-to-File

Sheppard Mullin Richter & Hampton LLP

SNIPR Tech. Ltd. v. Rockefeller Univ., No. 22-1260 (Fed. Cir. July 14, 2023)

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

MoFo Life Sciences

Recent Updates On Use Of Post-Filing Data As Evidence To Support Patentability

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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

Buckingham, Doolittle & Burroughs, LLC

Dear Patenticity: Still Inventing

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

Jones Day

PGR Eligibility: An Uphill Climb For Transition Patents

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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

Smart & Biggar

Fact or fiction? Debunking patent myths for business and technology leaders.

Smart & Biggar on

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

Bennett Jones LLP

Stay Here or There? Recent Direction from the Québec Court of Appeal on Stays in Proposed Parallel Class

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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

Knobbe Martens

Inducing Delay: When a Court Can Deviate From the First-To-File Rule

Knobbe Martens on

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

Womble Bond Dickinson

Quick Protection or Flexible Prosecution? Have it Both Ways with Track-One and Deferred Examination

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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

Burr & Forman

Risks of Cover Page Provisional Applications

Burr & Forman on

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

Snell & Wilmer

Ten Tips on Preparing and Prosecuting Patent Applications

Snell & Wilmer on

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

Ward and Smith, P.A.

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

Ward and Smith, P.A. on

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

Akin Gump Strauss Hauer & Feld LLP

Under the First-to-File Rule, District Court Stays Case Filed Hours After a Declaratory Judgment Action

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

Robins Kaplan LLP

[Webinar] Best Patent Practices in a Transforming Environment | Part I: Evolving Strategies for Patent Procurement - Feb. 22nd,...

Robins Kaplan LLP on

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

Foley & Lardner LLP

Use of Priority Denial to Subject Apparent "Pre-AIA" Patents to PGR: Inguran v. Premium Genetics

Foley & Lardner LLP on

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

Foley & Lardner LLP

Did The PTAB Dose The AIA Poison Pill Incorrectly Against Premium Genetics?

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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

BakerHostetler

Did Recent Changes in the Patent Laws Turn the Page on the Need for Accurate Laboratory Notebooks?

BakerHostetler on

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

Mintz - Intellectual Property Viewpoints

Does the AIA Have a Prior Art Exception You Can Use?

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

Knobbe Martens

Beginning the Patent Process

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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

Bond Schoeneck & King PLLC

EDNY – First-Filed Action Forum Should Determine Whether an Exception to the First-to-File Rule Applies

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

Knobbe Martens

Five Patenting Lessons Exemplified by Google’s Glucose-Sensing Contact Lenses

Knobbe Martens on

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

Knobbe Martens

Class 6: How to Avoid Losing Patent Rights

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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

Foley & Lardner LLP

Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part III

Foley & Lardner LLP on

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

Foley & Lardner LLP

Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part II

Foley & Lardner LLP on

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

Foley & Lardner LLP

Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part I

Foley & Lardner LLP on

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

McDonnell Boehnen Hulbert & Berghoff LLP

MBHB Snippets: Review of Developments in Intellectual Property Law - Spring 2013 - Volume 11, Issue 2: Comments on New AIA Rules

On March 16, 2013, the final (and most significant) portion of the Leahy-Smith America Invents Act (AIA) took effect, and the United States broke from a first-to-invent regime to a first-inventor-to-file (FITF) regime. Of...more

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