Patent Law Practice Center

IP Watchdog’s Interview with David Kappos

A few months ago, IPWatchdog author, Practice Center contributor, and PLI Patent Bar Review instructor, Gene Quinn was granted an exclusive interview with USPTO Director and Under Secretary of Commerce for Intellectual Property, David Kappos. Throughout the lengthy interview, the focus shifted from acceleration of applications through the Track 1 program, to agency-wide uniformity despite having 7,000 examiners, and to current initiatives geared toward making the near future for the patent system more efficient. It is amazing to see how Quinn, one of the primary instructors of PLI’s Patent Bar Review, is treated with such respect by the Director of the USPTO.

For the transcript of the interview in its entirety, click here for the IPWatchdog postings. Here are some of the key points taken from the conversation between Quinn and Kappos: (more…)

Courtenay Brinckerhoff: What Happens When Interfering Applications Straddle The First-To-File Effective Date?

The following article comes from Courtenay C. Brinckerhoff, Partner at Foley & Lardner and writer of PharmaPatents Blog. 

It has been a while since I’ve taken an in-depth look at the first-to-file provisions of the America Invents Act. This interesting fact pattern comes from Andrea Levesque, IP Counsel at ARC Energy, and relates to the interference provisions that survive the general March 16, 2013 effective date of the first-to-file provisions.

The March 16, 2013 Effective Date

As I wrote previously, one of the more complex aspects of the America Invents Act relates to the effective date and applicability of the first-to-file provisions of new 35 USC § 102. As a general rule, applications with any claim that has an effective filing date on or after March 16, 2013 will be subject to the new version of § 102. On the other hand, applications with any claim that has an earlier effective filing date still will be subject to the current versions of 35 USC §§ 102(g), 135 and 291: (more…)

Scott Daniels: PTO Requests Public Comment on Proposed Rules for AIA Post-Issuance Proceedings

Here is a recent article from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

The PTO has now published a lengthy set of proposed rules for administering the various post-issuance proceedings created by the America Invents Act (AIA) – supplemental review, inter partes review, post-grant review, covered business method patents, and derivation.  If you have time to read just one notice, choose the “Practical Guide for Proposed Trial Rules.” It was issued Thursday and summarizes the procedures to be followed in the latter four inter partes-type proceedings.  (Incidentally, acronyms will be important to master: e.g., PO = patent owner, IPR = inter partes review, PGR = post-grant review, CBM = covered business method patents). (more…)

David Kappos Shares USPTO’s Game Plan for 2012

As Director of the USPTO and Under Secretary of Commerce for Intellectual Property, David Kappos is a busy, busy individual. Just look at the year the USPTO had in 2011: they issued more utility patents last year than they ever have in any year prior, they reduced the backlog of unexamined patent applications to below 665,000, and expanded the Peer-to-Patent (P2P) pilot program to strengthen the patent examination process. And don’t forget about the enactment of the America Invents Act!

Considering the success of 2011, it is of no surprise that Kappos is excited about the prospects of what’s to come for the USPTO in 2012. On Director’s Forum: David Kappos’ Public Blog, Kappos lays out what his game plan is for the agency in the new year. Below are the patent driven highlights: (more…)

Top 5 PLI Patent Law Posts of the Year

Every Friday, the Patent Law Practice Center likes to provide our readers with highlights from the week’s best patent law blog posts and articles. As 2011 reaches its end, and as the new year causes people to look back on the year that was, we thought it was a great opportunity to present to you the Patent Law Practice Center’s top 5 posts of the year:

1) America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice, Parts 1 & 2: Explanations provided by Robert A. Armitage of Eli Lilly and Company, and Janet Gongola, Patent Reform Coordinator at the USPTO, helped in breaking down the AIA for the masses.

2) A New Doctrine of Equivalents? CAFC Defines “Use” Under §271 – Written by Gene Quinn, of IPWatchdog and Practice Center Contributor, this post discusses Centillion Data Systems, LLC v. Qwest Communications International, Inc., and questions whether it will “breathe new life into the doctrine of equivalents” given the Court’s determination of the meaning of “use” of a system as a matter of law under 35 U.S.C. 271 (a). (more…)