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Patent Reform Updates


Developments

December 19, 2012 - USPTO Releases Final Rules to Implement the Mirco Entity Provision of the AIA
Today the USPTO published the Federal Register notice regarding applicants’ ability to claim micro entity status and to take advantage of the reduced fees associated with this status. Final rules go into effect on March 19, 2013.

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September 19, 2012 - Federal Bar Association Annual Meeting and Convention

Michael Rosen (Southern California) will speak on a panel "Patent Litigation Under the AIA-Strategic Use of New USPTO Post-Grant Oppositions" at the FBA 2012 Annual Meeting and Convention. The meeting will be held at the Manchester Grand Hyatt in San Diego, CA. Fish & Richardson is also a sponsor of the event, stop by our booth and say hello. For more information or to register, click here.

Friday, September 21, 2012
10:00am - 11:00am

Session 7B: Patent Litigation Under the AIA-Strategic Use of New USPTO Post-Grant Oppositions

 

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July 26, 2012 - USPTO Releases Proposed Rules and Examination Guidelines on First Inventor to File
Today, July 26, the USPTO published Federal Register notices regarding its proposed rules and examination guidelines relating to the first inventor to file (FITF) provisions under the America Invents Act (AIA), which will take effect for filings on or after March 16, 2013.  Read the full alert here.

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June 14, 2012 - The America Invents Act: Do you need to rethink your strategy?
The America Invents Act is the most extensive revision of US patent law in over 50 years. What really changed? How will it impact your company? This practical discussion will address the new law, including how it may affect your IP procurement and enforcement strategies. View the presentation.

 

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May 8, 2012 - Putting It All Together - Which Tools Are Right for You?

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. The USPTO recently circulated proposed rules governing these procedures. Join us for a six-part webinar series in which experienced Fish & Richardson attorneys and guest speakers explore the strategic implications of these rules in-depth.

 

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April 24, 2012 - Post-Grant Review and Derivation Proceedings

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. The USPTO recently circulated proposed rules governing these procedures. Join us for a six-part webinar series in which experienced Fish & Richardson attorneys and guest speakers explore the strategic implications of these rules in-depth.

 

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April 17, 2012 - Supplemental Examination

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. The USPTO recently circulated proposed rules governing these procedures. Join us for a six-part webinar series in which experienced Fish & Richardson attorneys and guest speakers explore the strategic implications of these rules in-depth.

 

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April 10, 2012 - Inter Partes Review Part III: Post-Trial

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. The USPTO recently circulated proposed rules governing these procedures. Join us for a six-part webinar series in which experienced Fish & Richardson attorneys and guest speakers explore the strategic implications of these rules in-depth.

 

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April 3, 2012 -
Webinar - Inter Partes Review Part II: Trial
The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. The USPTO recently circulated proposed rules governing these procedures. Join us for a six-part webinar series in which experienced Fish & Richardson attorneys and guest speakers explore the strategic implications of these rules in-depth.

 

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March 27, 2012 -
Webinar - Inter Partes Review Part I: Pretrial
The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. The USPTO recently circulated proposed rules governing these procedures. Join us for a six-part webinar series in which experienced Fish & Richardson attorneys and guest speakers explore the strategic implications of these rules in-depth.

 

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February 21, 2012 - 
Webinar - The New Inter Partes Proceedings at the USPTO 

Karl Renner, Co-chair of Fish's reexam practice, spoke on a panel "The Preliminary Phase: Deciding to File, Filing a Petition, the Preliminary Response, and Institution of Review." The webinar focused on the two new proceedings that experts anticipate will be the most widely used: post-grant review and inter partes review.


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February 9, 2012 -
Alert - USPTO Releases Proposed Rules Under the America Invents Act

Yesterday the USPTO provided advance access to a number of proposed rulesets under the America Invents Act (AIA). The documents are provided in this alert. To read the alert, click here.


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February 1, 2012 -
US Patent and Trademark Office Director, David Kappos, weighs in on the prior use rule in the America Invents Act on Law360: "Kappos Says Prior Use Rule Shouldn't Be Changed For Now."


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January 24, 2012 -
Indranil Mukerji, Managing Principal of Litigation for the Washington, DC, office, talks with National Law Journal reporter about the new law and what should be considered. Watch the video here.


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January 23, 2012 -
The America Invents Act, enacted on September 16, 2011, has created a flurry of questions, especially regarding how attorneys should advise their clients. Indranil Mukerji, Managing Principal of Litigation for the Washington, DC, office, answers the question of "Ten things you should know about the new patent law," an article published by the National Law Journal.


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November 18, 2011 -
President Obama signed Public Law 112-55, including the PTO appropriation for Fiscal Year 2012.


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November 17, 2011 -
In the most important patent law development since the enactment of the America Invents Act, Congress approved Public Law 112-55, including the PTO appropriation for Fiscal Year 2012. The appropriation provides for a funding stream that is sufficient for the PTO's  planned operations in Fiscal Year 2012. The law authorizes the PTO  to spend up to a little over $2.7 billion from PTO fees in the period through September 30, 2012. This appropriation exceeds the PTO's current estimate of FY 2012 receipts by 7.5%. Public Law 112-55 passed the House by a vote of 298-121 and passed the Senate by 70-30.

 

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October 17, 2011 -
Dorothy Whelan, Co-chair of Fish's reexam practice, co-presented with Tim Bianchi of Schwegman, Lundberg, & Woessner at MPLA's AIA seminar about, "New, Revised, and Now-Extinct Post-Issuance Proceedings."

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October 11, 2011 -

Alert - Initial Impact of the America Invents Act and the Kappos Interview
This alert briefly summarizes the initial impact of patent law reform under the America Invents Act (AIA), and other important PTO developments disclosed in a webinar interview with PTO Director David Kappos by AIPLA Executive Director Q. Todd Dickinson on September 30th....to read more, click here.

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September 16, 2011 -
President Obama signed the "America Invents Act" (H.R. 1249) today. This is the "enactment," which initiates all of the immediate and delayed effective dates for this new patent law reform law. See our summary, "What you need to know now," for the provisions that are effective immediately or shortly after enactment.

Most of new provisions for post-grant review of patents will be effective one year from now, on September 16, 2012. The new first-inventor-to-file and prior art changes will be effective 18 months from now, on March 16, 2013.

For more information on fee increases, see our alert Patent Reform: What You Need To Know About Fee Increases.

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September 15, 2011 -
Alert - Patent Reform: What You Need To Know About Prioritized Examination
Today's signing of the America Invents Act implements Prioritized Examination and creates a process for examining patent applications on a special accelerated track. Applications filed with a Request for Prioritized Examination will be placed on an examination track to reach final disposition within twelve months...to read more, click here.