Posts Tagged: first to file


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 …
By Gene Quinn
7 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 …
By Gene Quinn
7 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 …
By Gene Quinn
7 years ago 21

USPTO Publishes Proposed First to File Examination Guidelines

For well over a year I have been explaining that under the US first to file system the inventor will still have a personal grace-period, but that …
By Gene Quinn
7 years ago 16

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 …
By Gene Quinn
8 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 …
By Charles Gorenstein
8 years ago 8

First-to-File and the Speed of Technology Evolution

22% of social network patent applications are filed within one year of the youngest prior art cited against them. So speed of filing counts. If these applications had …
By Mark Nowotarski
8 years ago 8

America Invents: A Simple Guide to Patent Reform, Part 1

There will be plenty of time to drill down on the particulars of the America Invents Act. The Act is dense, language choices from section to section …
By Gene Quinn
8 years ago 77

Reshaping U.S. Patent Law. Who are the Winners & Losers?

It is fair to say that enactment of the AIA is not what most stakeholders championed early on. Many small inventors and innovation companies feel that some …
By Manus Cooney
8 years ago 5

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 …
By Manus Cooney
8 years ago 4

America Invents: How the New Law Impacts Your Patent Practice

The America Invents Act, which just recently passed by the Congress and sent to the White House for President Obama’s signature, is the most significant patent …
By Gene Quinn
8 years ago 11

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, …
By Eric Guttag
8 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 …
By Eric Guttag
8 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 …
By Gene Quinn
8 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 …
By Gene Quinn
8 years ago 49