Next Wave of AIA on Patent Exam Starting Oct. 2, 2012

By now you have certainly heard about the most revolutionary change to the U.S. patent laws since at least 1952, and most likely since the inception of the first patent laws in the U.S. in 1790.  The America Invents Act (AIA) is poised to change patent practice from the ground up.  The bill was signed into law by President Obama on September 16, 2011, and some minor provisions went effective immediately, or nearly immediately.

The next wave of changes comes online on September 16, 2012, and the United States Patent and Trademark Office is feverishly working on multiple final rules packages that will be required for the implementation of that next wave of changes.  So far, the only one that has been released is the final rules package relative to third-party submissions of prior art during prosecution. See USPTO Publishes Final Rule on Preissuance Submissions.


Check out PLI’s Summer Schedule of Patent Law Events!

There is no better sign that summer has arrived than the recent heat wave blanketing the U.S. While making summer plans of barbecues and vacations, don’t forget that there are a handful of great patent law CLE programs being hosted by PLI all summer long. From introductory patent law basics to the complexities of the AIA’s implementation, there is a seminar available for patent law practitioners from across the spectrum.

Understanding Patent Law 2012: June 29, 2012 –  The morning discussion of fundamental patent principles, including what is patentable and how to prosecute and protect patents, establishes an important foundation for the topics that follow throughout the afternoon.  Patent opinions, patent licensing, and patent issues that arise in the context of transactions such as mergers and acquisitions will be covered.  In addition, a broad overview of patent litigation, including coverage of recent case law, will be addressed.  In-house counsel, general attorneys and business managers will learn to spot key patent issues that may face their clients and/or organizations and will learn what steps need to be taken next.

(SF) Fundamentals of Patent Prosecution 2012: A Boot Camp for Claim Drafting & Amendment Writing: July 11 – 13, 2012 – This program is directed to patent attorneys, litigation attorneys and patent agents with or without a Patent Office registration number, or little patent experience. It will focus on teaching the basics of claim drafting, patent application preparation and prosecution, as well as a review of recent developments in the law. A litigator’s perspective is also presented to show how drafting and prosecution can influence the development, and often the outcome, of subsequent patent litigation. The clinics offer a unique supplement to the kind of hands-on mentoring that senior attorneys are hard-pressed to provide to less-experienced attorneys and agents.

Patent Bar Review 2012: Boston, July 11-15, 2012; Chicago, August 7-11, 2012 – In clear, concise, right-to-the-point language, this information-packed course leads you through the intricacies – and around the traps – of the Patent Bar Exam. You’ll get the hard facts, test-taking tips, sample questions and answers, and intense practice exams that mirror what you’re going to face when you sit down to take the real thing. Our PatWare software almost exactly predicted the current format of the Exam by many years. PatWare has now been expanded, updated and Web-connected to play an even more critical and informative role in your preparation.

Advanced Patent Prosecution Workshop 2012: Claim Drafting & Amendment Writing: New York, July 19-20, 2012; San Francisco, August 20-21, 2012 – In this advanced two-day program, you will have a unique opportunity to receive hands-on drafting experience under the guidance of experienced patent prosecutors. By working in small technologically-distinct groups, you will receive individualized feedback on claim drafting and amendment writing skills, as well as learn practical techniques for avoiding prosecution pitfalls. Guidance will be provided on the America Invents Act and its implementation by the Patent and Trademark Office, including the new post-grant review and inter partes review systems. Course material will include sample problems and model solutions.

(NY) Prior Art, Obviousness, and the America Invents Act in 2012: July 23, 2012 – This program will allow you to obtain an essential working understanding of this complicated statute, including recent re-interpretations, case law, and explore the statutory revisions.  Meanwhile, obviousness, the most common reason any application is rejected or patent held invalid, is changing as a result of KSR (already 5 years old). Explore 103 from inside and outside the PTO as both the CAFC and PTO try to shoehorn their past decisions into a KSR pigeonhole!

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…)

Preparing for the Patent Bar Exam Changes

The following post is written by Mark Dighton, PLI’s Director of Law School Relations and Administrative Director of the Patent Bar Review.

If all goes as planned, the Patent Office will start on Tuesday, January 31st, to test on the PTO’s Registration Exam (sometimes called “the patent bar exam”) some of the first changes to US patent law resulting from the America Invents Act, as well as some changes to the appeals rules that had been in the works even before Patent Reform.  The new appeals rules did not even become effective until January 23, 2012.  Testing them only eight days later demonstrates clearly that the Patent Office is good to their word that they expect the Exam to more accurately reflect current practice going forward. (For many years, the Exam was YEARS behind current practice. Seemingly almost an afterthought.)

The changes from the America Invents Act already subject to testing are the new rules that permit prioritized examination of patent applications (Track I) and revise the standard for granting inter partes reexamination requests.  (more…)

Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. Highlights include the anticipated revisions to the Patent Bar, a conflict of interest for U.S. Supreme Court Justice Breyer, and an update from the USPTO’s collaborations in improving the patent system via open access.

1. IP Watchdog: PTO Updates Patent Bar Exam to Test AIA & Appeal Rules – The Patent Bar will change to reflect the new rules incarnated by the America Invents Act. This post outlines what new topics will be tested and how the USPTO has established a trend in making sure the exam is as up to date as possible. The new Patent Bar exam will debut January 31, 2012. For information regarding PLI’s Patent Bar Review (Jan. 11-15, 2012), click here.

2. Peer To Patent: Improving Patent Systems through Open Access– The USPTO hosted its Second Annual Prior Art Collaboration Conference in October 2011, and this post provides the proceedings that developed during the conference. Participants such as WIPO, the European Patent Office, the U.K. Intellectual Property Office, IP Australia, the Japan Patent Office, and the Korea Intellectual Property Office discussed ways in which the patent offices and the public could work together to improve access to prior art. (more…)