“Lecturers, materials, location…everything with PRG exceeds expectations and is of the highest quality.”
Steve Rost, Taft Stettinius & Hollister (Fall 2012 attendee)
Please note that the faculty members listed for this course are subject to change prior to the actual course date.
A one day seminar analyzing the monumental changes to the patent law signed into law on September 16, 2011.
The extensive, complicated, unprecedented statutory changes and additions made by the America Invents Act have now become fully effective. Not only is it necessary for all patent professionals to know the new law, we must - during a transition period that will last for many years to come - be able to determine when the AIA law applies and when the pre-AIA version of the law applies.
The content of this course was created with the goal of assisting patent attorneys and agents in fully understanding the new law, its consequences, nuances, ambiguities and unresolved issues created by the new statutory language. The course lectures and materials include analyses of the following aspects of the AIA law:
1. The “first inventor to file” system, which became effective on March 16, 2013, and replaces the “first to invent” system of the pre-AIA law. The course lectures and materials analyze 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. Incorporated in our analyses and materials are the Patent Office's new rules implementing the first-inventor-to-file regimen, its extensive commentary interpreting the several unclear provisions of the AIA version of Section 102, and its extensive guidelines.
2. 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 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).
3. A new “Inter Partes Review” proceeding before the Board under new Sections 311-319, which replaces pre-AIA 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.
4. 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.
5. 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.
6. 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.
7. A “Transitional [8 years, ending September 16, 2020] 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.)
8. 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.
9. “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.
10. 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.
11. 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 provisions under rewritten Section 115 of Title 35,
- Very limited patentability of tax strategies,
- Patent Office fees, including new “micro entity” fees, and
- Preclusion from evidence of failure of an accused infringer to obtain advice of counsel, and
- Elimination of qui tam actions for "false marking."