The First Year of First-Inventor-to-File: Applicants, Patentees, Assignees, and Petitioners Adjusting to the New Regime

Author: Jonathan R.K. Stroud
Editor: Adriana L. Burgy

Anniversaries invite reflection. On the one-year anniversary of the first-inventor-to-file (FITF) provisions of the America Invents Act (AIA), we look back at the past year.

On March 16, 2013, many patent applications were filed just prior to the implementation of FITF. But many parties filed applications under the new rules, perhaps taking advantage of opportunities that they may afford.

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Don’t Waive a Statutory Bar Defense Goodbye: One Simple and Effective Tip to Minimize the Window Accused Infringers Have to File an Inter Partes Review Petition

Author: Andrew G. Strickland
Editor: Michael J. McCabe, II

Most patent practitioners engaged in Inter Partes Review (IPR) proceedings are familiar with the “one-year rule.” The one-year rule, codified in 35 U.S.C. § 315(b), bars a party from filing an IPR petition challenging the validity of a patent’s claims “more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.” When a petitioner is formally served in compliance with the Federal Rules, the application of the one-year rule is straightforward. But defendants often choose to waive service. When a defendant waives service, the date triggering the one-year rule, i.e., “the date on which the petitioner . . . is served,” is not clear. However, in three decisions concerning the issue of waiver (Macauto U.S.A. v. BOS Gmbh & KG, Motorola Mobility LLC v. Arnouse, and Scotts Comp. v. Encap), the Patent Trial and Appeals Board (PTAB) has consistently held that the service date for the one-year rule is the date the patent owner files the waiver of service with the court and only the filing of the waiver of service triggers the one-year rule.  Continue reading

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Where Can We Expect Differences Between EPO Oppositions and PGR’s?

Author: Leythem A. Wall
Editor: Anthony C. Tridico, Ph.D.

With over 1000 IPRs and CBMs already filed and PGR eligible patents beginning to issue, can we expect similar growth of PGR filings? The European Patent Office (EPO) Opposition may provide us a bit of a crystal ball regarding what we can expect from PGR. As previously reported in the AIA blog, there are a number of significant differences such as cost, effect on later litigation and anonymity. However, can these really be seen as substantive differences that would lead to different results and trends than we currently see at the EPO. Both procedures assess anticipation (novelty) and obviousness (inventive step). Both procedures take into account formal matters (written description in the United States, added matter in the EPO) and do not allow broadening of patents. Whilst clarity is not a ground of opposition at the EPO, when amended claims are filed during the opposition process they have to satisfy clarity requirements.

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