The Spring 2013 Advanced Courses Program will be held April 7-13, 2013 at the Hyatt Regency Grand Cypress in Orlando, Florida, and 14 excellent patent law courses will be offered, including thirteen 3-day courses and the 1-day blockbuster course, America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions. Now is the time to register for this Program, since you can save $100 on any 3-day course by registering now through February 6, 2013. For PRG attendees, we are offering an incredible room rate of $199.00 (single or double, plus tax) at the Hyatt Regency Grand Cypress. The rate is available through March 15, 2013, but we encourage you to reserve your room early to ensure a reservation at the discounted rate.
Today we’ll take a closer look at the extremely popular one day seminar that analyzes the monumental changes to patent law brought about by the America Invents Act (AIA). Continue reading to learn all the details about America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions!
- Date: April 10, 2013
- Projected CLE: 6.0 hours
- Instructors: Paul Gardner and Edward Manzo.
- Course Times: 8:15-11:30; 1:30-4:45
As all of us in the patent profession know, the time has come for us to become intimately familiar with the extensive, complicated, unprecedented changes and additions to Title 35, some of which have already become effective, others of which will become effective on March 16, 2013. Not only do patent lawyers and agents have to master the new law, we must – during a transition period that will last for many years to come – remain acutely aware of the “old” law and be able to determine whether the old or new law applies under any given set of circumstances.
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 unanswered issues raised by the changes, many of which will not be definitively resolved until the Federal Circuit interprets the law many years from now.
The course will analyze the statutory changes, consequences and unresolved issues, including the following, most significant subjects:
- 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 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 replaces old inter partes reexamination. The new proceeding permits 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 expired on September 16, 2012 in favor of “Inter Partes Review” of paragraph 3 above), revised by imposing a different requirement for granting a request for review. The new requirement is that the information presented in an inter partes review 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 [8 years, beginning September 16, 2012] Program for Covered Business Method Patents,” a post grant review proceeding before the Board (mentioned in paragraph 2, above), for challenging the validity of any “covered” business method patent for which the petitioner initiating the proceeding (or his/her privy) had been charged with infringement. (“Covered” patents are those claiming “a method or corresponding apparatus for performing data processing…operations used in the practice…of a financial product or service” other than in ‘technological inventions.'” Sec. 18(d)(1) of Public Law 112-29.)
- New “best mode” law is a step toward global harmonization. The statute retains the best mode disclosure requirements in Section 112, Paragraph 1, but eliminates its violation as the basis for an invalidity or unenforceability (inequitable conduct) defense. Newly written Section 282(a)(3)(A) of Title 35.
- “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, domestic 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,
- Very limited patentability of tax strategies,
- Patent Office fees, including new “micro entity” fees, and
- Elimination of qui tam actions for “false marking.”
How to Register
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