What should you do?  You have a provisional patent application which was filed pre-AIA (i.e., before March 16, 2013). You want to file a non provisional patent application with additional subject matter and claim priority to the provisional patent application while still maintaining first to invent status of the subject matter you filed in your [...]

Under the America Invents Act (“AIA”), the first-to-file a patent application on an invention is awarded the patent. Under a true first-to-file system like in Europe, the rules require that there be no public disclosure until after the patent application is filed. This is known as absolute novelty. The AIA brings the United States closer [...]

On March 16, 2013, the United States will transition from a first to invent system to a first to file system under the America Invents Act (“AIA”). In my opinion, it is more advantageous to have a patent application governed by the first to invent system than the first to file system even though the first to invent system for the most part behaves like a first to file system. What I mean is …

Basic Structure Under the America Invents Act, the public can submit evidence to the Patent Office in an attempt to prevent issuance of a patent.  Under the basic structure of the regulations, if the patent application is not published or accessible to the public, then a protest or a preissuance submission may be filed with [...]

Supplemental examination allows a patent owners to submit information relevant to an issued patent in order to avoid any charges of inequitable conduct during litigation and to prevent defendants from making arguments that the patent is unenforceable because of “bad” acts or omissions of the patent owner during examination of the patent, such as not [...]

The America Invents Act (AIA) which changes major sections of the current Patent Laws became law on September 16, 2011. Under the AIA, the first inventor to file, not the first to invent is awarded the patent. Other sections changes the law on false marking, attacks on best mode, and many more.

General rule The America Invents Act (Patent Act) transitions the United States from a first to invent system to a first to file system.  Under the new first to file system, the general rule to obtain a patent on an invention is that absolute novelty is required and the first inventor to file or win [...]

On March 16, 2013, the United States will transition from a first to invent system to a first to file system under the America Invents Act (“Patent Act”). As the March 16, 2013 date approaches, inventors and businesses should consider the following things when implementing a patent protection strategy.

Under the Patent Act, any disclosure dated prior to the filing date of the inventor’s patent application will considered prior art and bar the inventor from being granted a patent on the invention unless one of two exceptions applies. Hence, the general rule is that you must be the first to file. Under the first exception, if the prior art disclosure is 1 year or less prior to the filing date of the inventor’s patent application and the prior art disclosure is

The first inventor to file system under the America Invents Act adds a catch all category that includes anything publicly available. Some argue that the catch all phrase narrows the meaning of on sale to exclude secret offers for sale. Expect litigation in this area.

Under the first inventor to file system, the inventor that wins the race to the patent office is awarded the patent and any public disclosure by the inventor before filing a patent application bars the inventor from seeking patent protection except under two very important exceptions.