Speeding Up Invalidity Using Procedures at the USPTO

September 4, 2013

The presentation discusses different techniques for using US Patent and Trademark Office (USPTO) invalidity proceedings to invalidate issued patents. The presentation specifically discusses the new procedures available under the America Invents Act (AIA). Topics include Post-Grant Review (PGR) and Inter Partes Review (IPR) and cover business method review (CBM) programs. Deadlines as well as specific scheduling orders for these programs are discussed as well as how best to use the new programs at the USPTO. To view the presentation, visit:
Invalidity Using Procedures from Woodard, Emhardt, Henry, Reeves & Wagner, LLP

Partner Chuck Schmal Presents on the Final Rules for the AIA and is Featured by the Indiana Lawyer

April 12, 2013

Woodard Emhardt partner Chuck Schmal along with Eli Lilly patent counsel Andrea Castetter recently presented to other patent attorneys at a CLE event on the final rules and guidelines for implementing the AIA and how to embrace these requirements for the management of patent portfolios. Additionally, Chuck was recently interviewed by the Indiana Lawyer for his views on the impact of the First-Inventor-to-File patent system on start-ups and solo inventors. More details of his interview can be found here.

America Invents Act (AIA) Transition Patent Application Statements

March 29, 2013

The presentation and accompanying video below generally concerns the procedures and rules for identifying whether or not patent applications are subject to the America Invents Act, commonly known as the AIA. It more specifically concerns the procedures and practices for US patent applications that were filed on or after the AIA’s implementation date of March 16, 2013, but claim priority  to patent applications filed before then, such as patent applications filed continuation, divisional, and/or continuation-in-part (CIP) patent applications. It describes the new rules concerning the timing and procedures for AIA transition applications. In addition, it discusses when and how to make Statements under Rules 55 or 78 to designate that the AIA’s First Inventor to File standard should apply to an AIA transition application. A copy of the presentation can be found here.

USPTO Implements Final First-Inventor-to-File Rules Effective March 16

February 18, 2013

The USPTO recently published final rules implementing the first-inventor-to-file provisions of the America Invents Act (AIA) that take effect on March 16, 2013.  The full text of the new rules is available here.  The USPTO also published examination guidelines accompanying the new rules which include additional information on how the office plans to interpret the new statute and rules. 


New Year Brings New Amendments to AIA

January 3, 2013

With confetti still lingering in the air Congress passed H.R. 6621 which includes many technical amendments to the America Invents Act.  The passing of H.R. 6621 was not without a small amount of controversy as a section dealing with still pending and unpublished pre-GATT applications was ultimately removed from the Bill.  As originally drafted, the Bill would have altered the term for such applications still pending one year from the Bill’s implementation date, effectively killing a majority of pre-GATT applications.  The section was first amended to require only that a report on still-pending pre-GATT applications be sent to congress including the inventor identities, before the Senate removed the section completely in the version ultimately passed by both houses. Some highlights of the Bill that did pass are discussed below.

 Dead-Zones: H.R. 6621 allows inter partes reviews to be filed at any time for issued patents with effective filing dates before March 16, 2013.

 Oath or Declaration: H.R. 6621 allows for an oath or declaration, substitute statement, or assignment, to be filed “no later than the date on which the issue fee for the patent is paid.”

 Patent Term Adjustment: H.R. 6621 clarifies that patent term adjustment accumulates only on “commencement of the national stage under section 371 in an international application.”  The Bill also requires that patent term adjustment be calculated with the issuance rather than at the notice of allowance.  Finally, the Bill clarifies that patent term adjustment decisions may only be challenged by filing in the Eastern District of Virginia.

 Improper Applicant: H.R. 6621 eliminates 35 U.S.C. 373 which restricts who may file international PCT applications at the USPTO.

 Patent and Trademark Fee Allocation: H.R. 6621 eliminates the requirement that patent fees be used to cover “administrative costs of the Office relating to patents” and a similar restriction relating to trademark fees.

 Derivation Proceeding: H.R. 6621 alters the timing for filing a petition to institute a derivation proceeding and includes a definition of the term “earlier application.”  The Bill also clarifies that interferences declared after September 15, 2012 are subject to the pre-AIA provisions of the Patent Act governing the Board of Patent Appeals and Interferences and appeals to the Court of Appeals for the Federal Circuit.

Woodard Emhardt Obtains Order Transferring Patent Case out of the ED of Texas

September 28, 2012

Judge Leonard Davis of the Eastern District of Texas recently ordered that a patent infringement lawsuit filed against an Indianapolis based company be transferred to the Southern District of Indiana.  The lawsuit was filed following the effective date of the new joinder provisions of the America Invents Act which prevent Plaintiffs from filing large multi-defendant lawsuits.  The case involved a New York based Plaintiff and Judge Davis found that the Southern District of Indiana was clearly a more appropriate forum.  Woodard Emhardt attorneys Spiro Bereveskos and Bill McKenna are representing the Defendant.

Will the America Invents Act (AIA) Change Patent Litigation in the Eastern District of Texas?

December 15, 2011

This presentation examines whether the AIA will change patent litigation in the Eastern District of Texas. The presentation explores aspects of the AIA, including changes to joinder, Post Grant Review and Inter Partes Review and how each of these changes in the law may impact patent litigation, particular with regard to the Eastern District of Texas. To view the presentation, visit: AIA Change Patent in Eastern District of Texas from Woodard, Emhardt, Henry, Reeves & Wagner, LLP.