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…)

Maintaining Rights to an Application under the First to Invent Laws – a.k.a. Avoiding the AIA § 3(n)(1) Trap

Written by Leonard R. Svensson, Partner at Birch, Stewart, Kolasch & Birch, LLP.

Patent practitioners know by now that applications filed before March 16, 2013 will be evaluated under the current “first to invent” laws. Commentators are debating whether this may result in a “bump” of applications filed just before the deadline. But if you rush to file by the deadline, care must still be taken to ensure that the resulting application(s) maintain the right to be evaluated under the current “first to invent” regime.

Suppose one files a provisional application on March 15, 2013 and then one year later converts that case to a regular utility application. If that application is directed to an invention in the life science field, experience suggests that there is a very high chance that at least the broadest claim will be rejected for lack of written description or enablement under 35 USC § 112. If the applicant thereafter amends and narrows such a rejected claim to overcome those rejections, what is the consequence? The unfortunate consequence is that the applicant just lost, forever, the right to have any claims in that application or any divisionals/continuations evaluated under the current “first to invent” regime. This is the consequence of the § 3(n)(1) trap, due to the language in the statute that defines the effective date of an application with the language “shall apply to any application for patent that contains or contained at any time such a claim” having an effective date after the effective date of the “first to file” provisions. Having fallen into the trap, the applicant will have wasted all the work expended to file a provisional application before the March 16, 2011 deadline. (more…)

What Patent Reform Means for Retailers: 4 Key Provisions of the America Invent Act

With the imminent enactment of the America Invents Act (AIA) into law, the patent experts are examining the legislation and helping us understand how it will impact the patent community at large.  R. David Donoghue, Partner at Holland & Knight and Practice Center Contributor, recently posted on his Retail Patent Litigation blog an article discussing how the bill will impact retailers and their supply chains.  He highlights four key provisions of the America Invents Act for retailers:

  1. Smaller Patent Troll Suits: The most immediate impact on most retailers will be Section 19, limiting joinder in a single suit of unrelated parties. This is not the more extreme restrictions on venue or joinder that many had hoped for. But it will have some positive impact on patent troll litigation. For suits filed on or after the date of enactment, plaintiffs will only be able to join related parties in a single suit — for example, multiple manufacturers, distributors or resellers of an identical product. And while cases against unrelated parties could still be joined for discovery, they will not be able to be joined for trial. At first glance, this is not much of a barrier to entry for patent trolls. Very few defendants get to trial, and cases may still be consolidated for discovery purposes at the court’s discretion. Where a troll today could pay one $300 filing fee and sue 100 unrelated defendants, after enactment that same troll would have to file 100 suits and pay $30,000 in filing fees. $30,000, however, is dwarfed by the settlement demands in many cases. The hassle of filing the extra suits and the related filing fees, however, may be enough to prevent suits against some of the much smaller entities that almost always end up in these suits. And the requirement of separate suits will allow defendants a much greater ability to seek transfer to an appropriate venue. So, while this is not the sea change that many sought, it is a real benefit to retailers who are tired of being sued in Texas and want a better shot at transferring cases. This Section only applies to cases filed after enactment, not pending cases. So, existing cases will not be impacted. (more…)