Posts Tagged: first to invent


The Risk of Not Immediately Filing a Patent Application

I do not begrudge anyone their point of view, or suggest that there is but one right way to successfully get from point A where you have …
1 year ago 1

USPTO Publishes Final Rules and Guidelines Governing First-Inventor-to-File

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today published final rules of practice implementing the first-inventor-to-file provision of the Leahy-Smith …
3 years ago 0

First Inventor to File: USPTO Derivation Proceedings Go Final

Section 42.405(c) provides that a derivation is not sufficiently shown unless it is supported by substantial evidence. This includes at least one affidavit addressing communication and lack …
3 years ago 11

Defending the USPTO Interpretation of the New Grace Period

The questions asked of the USPTO, and specifically Director Kappos, related to the USPTO interpretation of the grace period in 102(b)(1)(B). At one point, in response …
3 years ago 48

Keeping a Good Invention Notebook

Even when we switch to first to file inventors will still in some cases need to be able to detail when they conceived of various aspects of …
3 years ago 21

Change? Derviation May Feel a Lot Like Interference Practice

How this will philosophically change things remains unclear because the America Invents Act requires that the petition filed to institute a derivation proceeding demonstrate that the claimed …
3 years ago 2

The America Invents Act – Panacea or Just Pain for the PTO?

Many people situated variously within and outside of the patent system of the United States urged the adoption of first-to-file. There are, however, many questions about the …
4 years ago 8

The America Invents Act – How it All Went Down

On Friday, September 16, 2011, President Obama signed into law “The America Invents Act” (“AIA”) which passed the Senate on September 8, 2011, by a vote of 89-9. The AIA passed …
4 years ago 4

American Davids of Innovation, Start Your Engines: Strategies for Coping with First to File Under the America Invents Act

Under the “first to file” AIA regime, the effective prior art date is what prior art exists before the U.S. patent filing date. In other words, …
4 years ago 22

Bayh-Dole Compliance Obligations Meet America Invents Act

In going from the current “first to invent” to the new “first to file” regime mandated by the America Invents Act (AIA), much attention has been focused …
4 years ago 11

First U.S. Patent Laws Were First to File, Not First to Invent

The reality is that from 1790 to 1836 patents were given to the first to file. Between 1836 and 1870 a panel of arbitrators would decide disputes between conflicting patents and …
4 years ago 47

The Constitutional Argument Against Prior User Rights

The man who secretes his invention makes easier and plainer the path of no one. He contributes nothing to the public. Over and over has it been …
4 years ago 49