Posts Tagged: first to invent


Legislation Introduced in House to Repeal the PTAB and the AIA

There are 13 sections to Massie’s bill, many of which are geared towards the abolition of various statutes of the AIA. Perhaps the most salient portion of …
By Steve Brachmann
1 year ago 24

Legislative Steps in the Pro-patent Direction

New patent legislation would rectify some of the damage done by several court rulings and by Congress.  It would reestablish the fundamental constitutional principle that a U.…
By James Edwards
1 year ago 22

What Inventors Need to Fix the Patent System

While we have damaged our patent system, China has strengthened theirs. Job creation is stagnant, economic growth is anemic and the America Dream is dying. Congress must …

The America Invents Act on Its Fifth Anniversary: A Promise Thus Far Only Partially Fulfilled

Unfortunately, Mr. President, after five years I cannot report back that the AIA has yet ”improve[d] patent quality and help[ed] give entrepreneurs the protection and …
By Phil Johnson
3 years ago 3

The AIA’s First-to-File Transition SHOULD have Resulted in More Provisional Filings

To investigate whether applicants have been adopting a strategy of filing more provisional applications, we determined a ratio of the number of provisional filings (with a first-named …

The CRISPR Clash: Who owns this groundbreaking, DNA altering technique?

Right now, behind the walls of the USPTO, there is a fiery interference battle occurring between two scientific teams over who created a groundbreaking, DNA altering technique …
By Angélique McCall
3 years ago 12

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 …
By Gene Quinn
5 years 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 …
By U.S.P.T.O.
7 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 …
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

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

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

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