Patent Law Practice Center

America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice

On Monday, I attended PLI’s  program on the America Invents Act via webcast.  For those of you who were lucky enough to attend it, I’m sure you would agree  that the panel of experts delivered an extremely informative and concise program.  As I listened to each speaker deliver his/her presentation, it confirmed that the AIA is a major overhaul of the U.S. patent law.  It’s going to take quite some time for the patent community to really get a handle on all the nuances of the legislation.  With that being said, Monday’s esteemed panel did an excellent job breaking down the various provisions in AIA and helping to make sense of  how it pertains to your patent practice.  According to Gene Quinn, of IPWatchdog and Patent Center Contributor, PLI is considering reprising the presentation for an audience at PLI’s New York City location. Keep you posted.  

In the meantime, here are some highlights from Robert A. Armitage’s, of Eli Lilly and Company, presentation entitled “A New 102: Reform, Not Recodification”….

-AIA leaves only a 4-prong set of requirements for patentability-

1. Sufficient differentiation from prior public disclosures and earlier patent filings of others.
2. Sufficient disclosure to identify the claimed embodiments and to enable them to be put to a specific, practical, and substantial use.
3. Sufficient definiteness to differentiate subject matter claimed from subject matter that is not.
4. Sufficient concreteness to avoid excessively conceptual or otherwise abstract subject matter. (more…)

America Invents: A Simple Guide to Patent Reform, Part 1

Written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

[Yesterday] I spoke at the Practising Law Institute program on the America Invents Act. We had a good turnout in the room and an excellent turnout via webcast. The program was 4 hours long, and truthfully we could have gone on for at least several more hours without running out of material. For those who stayed online we ran long by about 20 minutes, and stayed talking with attendees and answering questions of live attendees for another 20 minutes. We are already talking about reprising the presentation for an audience at PLI’s New York City location on Seventh Avenue, so stay tuned.

There will be plenty of time to drill down on the particulars of the America Invents Act. The Act is dense, language choices from section to section in some places change and in other places remains the same, making you suspect that different terms must mean different things but the same term in different places has to mean the same thing, right? Our moderator, Denise Kettelberger (Faegre & Benson) said that patent attorneys should really read the Act about 10 times, which is really good advice.  Every time you read it you notice something a little different, and during the presentation of others today I found myself taking notes and looking up things in the Act with new understandings.  This is a major re-write of patent laws and not one that is at all simple.

Click here for the full IPWatchdog.

 

Reexamination Requests Filed The Week of May 31st

Scott M. Daniels, partner at Westerman Hattori Daniels & Adrian, LLP, writes for Reeaxamination Alert, a blog that focuses primarily on post-patent grant issues.  Mr. Daniels has agreed to provide us with a weekly feature on Reexamination Requests.  Here is his first installment….

Reexamination Requests Filed the Week of May 31^st

(June 9, 2010)

Reexamination requests are typically reported in the Official Gazette approximately three months after filing. Such a delay in reporting requests, particularly for requests that involve copending District Court litigation, is too long. We therefore report new ex parte and inter partes reexamination requests filed electronically the previous week as they appear on the Patent Office PAIR system.

Some reexamination requests are still filed by paper.  Because of the time required for the Patent Office to review such paper requests before posting on PAIR, our report may come three weeks after filing.  The information available from the Patent Office may be incomplete in a few cases because not all the reexamination request papers have yet been posted on PAIR.  There may also be gaps in the Patent Office docket numbers listed because, for any of various reasons, a reexamination request has been assigned a docket number but is not ready for posting.

The following inter partes requests were made: (more…)