Registration is now open for the Summer and Fall 2012 Advanced Courses Conferences, and one key course on the America Invents Act will be held at both conferences! America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions is a one-day course that provides an overview of the changes and consequences introduced by the America Invents Act (AIA). As all of us in the patent profession know, the time has come for us to become intimately familiar with the new law, some portions of which have already become effective, others of which will become effective on September 16, 2012, and the remainder of which will become effective on March 16, 2013. The content of this course and its accompanying materials were created in an effort to assist patent professionals in acquiring a more or less profound understanding of the new law, its consequences, and the important issues raised by the changes but left unanswered.
This course will be held August 13, 2012 at the Summer Advanced Courses Conference and October 20, 2012 at the Fall Advanced Courses Conference. After the jump, learn more about the content of this important course, and how to register!
- Projected CLE: 6.0 hours
- Instructors: Paul Gardner and Edward Manzo.
- Course Times: August 2012: 8:45-Noon; 1:15-4:30 (Mon); October 2012: 8:15-11:30; 1:30-4:45 (Sat)
- The “first inventor to file” system, which takes effect on March 16, 2013, and replaces the “first to invent” system of the current law. The course lecture and materials consider in detail the provisions of completely rewritten Section 102 of Title 35 U.S.C., which expands – both geographically and temporally – the universe of prior art that may render claims unpatentable for lack of novelty or for obviousness under Section 103.
- The new “Post Grant Review” proceeding (so-called by the applicable new statute, Chapter 31, Sections 321-329) before the newly named Patent Trial and Appeal Board, (formerly the Board of Patent Appeals and Interferences). This course considers in depth the requirements, limitations, potential risks and consequences of such a review, which may be initiated by any third party on or after September 16, 2012, who desires to challenge the validity of any claims in a patent issued or reissued during the nine month period preceding initiation of the review for failure to comply with the requirements of one or more of Sections 101, 102, 103 or 112 (with the exception of a best mode violation, discussed below).
- A new “Inter Partes Review” proceeding before the Board under new Sections 311-319, effective September 16, 2012, which will replace old inter partes reexamination. The new proceeding will permit a third party to seek cancellation of claims in any patent (no matter when filed or issued) for lack of novelty under Section 102 or obviousness under Section 103, but only based on prior patents or printed publications.
- A revised inter partes reexamination proceeding, which became effective on September 16, 2011 (and will expire on September 16, 2012 in favor of “Inter Partes Review” of paragraph 3 above), revised by imposing a more stringent requirement for granting a request for reexamination. The new requirement is that the information presented in an inter partes reexamination request must provide a showing that there is “a reasonable likelihood that the requester will prevail” (not merely the prior “substantial new question of patentability” showing under the previous legal standard).
- A new derivation proceeding under new Section 291 of the statute, a proceeding before the Board whereby a patent applicant may establish that the inventive entity named in an earlier-filed application published within a year prior to initiation of the proceeding was derived by the earlier filer from the inventive entity initiating the derivation proceeding.
- Revised Section 301 of the statute which permits any person to submit not only “prior art consisting of patents or printed publications” believed to have a bearing on the patentability of a particular patent’s claims, a limitation of the previous version of the statute, but also statements of the patent owner filed in a Federal court or Office proceeding wherein the patent owner expressed a position on the scope of any claim of the particular patent, and also related documentation (e.g., court pleadings and/or evidence). Such written statement(s) and related documentation may be considered by the Office in any proceeding reviewing the patent, but only with respect to interpretation of the claim(s) involved.
- New Section 257, which permits the owner of a patent to request “supplemental examination” of the patent by the Office to consider, reconsider, or correct information believed by the applicant to be relevant. Applying the “substantial new question of patentability” standard, the Office will decide whether to order reexamination based on the information submitted in support of the patent owner’s request. If reexamination is ordered, the Office will consider all of the information submitted, not just the patents, printed publications and newly-added “written statements” to which ex parte reexamination requests are otherwise limited under Chapter 30 of the statute, Sections 301-307.
- A “Transitional Program for Covered Business Method Patents,” a proceeding before the Board under the new post grant review mentioned in paragraph 2 above, for challenging the validity any business method patent for which the petitioner initiating the proceeding (or his/her privy) had been charged with infringement.
- New “best mode” law, curiously retaining the best mode disclosure requirement in Section 112, Paragraph 1, but eliminating its violation as the basis for an invalidity or unenforceability (inequitable conduct) defense. Newly rewritten Section 282(a)(3)(A).
- “Prioritized Examination,” a procedure for obtaining expedited examination of applications, subject to applicant’s compliance with certain stringent prerequisites and payment of significant fees, aimed at final disposition of the application with 12 months of the Office’s granting of “prioritized” status.
- Prior user rights pursuant to rewritten Section 273, under which a good faith, commercial use of a claimed invention more than one year before the effective filing date of a claimed invention (or the date the claimed invention was first disclosed under a limited one-year grace period provided in Section 102(b)) is a defense to infringement.
- Certain other changes in the AIA of less substantive concern and/or less frequently encountered, will also be considered, albeit to a lesser extent, such as:
- Added inventor’s oath or declaration requirements under rewritten Section 115,
- Unpatentability of tax strategies,
- Patent Office fees, including new “micro entity” fees, and
- Elimination of qui tam actions for “false marking.”
How to Register
Use the links below to: