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Patent Law Reform Update: Enactment of Leahy-Smith America Invents Act

September 17, 2013

Patent Law Reform Update: Enactment of Leahy-Smith America Invents Act

On September 8, 2011 the U.S. Senate passed a patent reform bill, the “Leahy-Smith America Invents Act,” which was subsequently signed into law by President Obama on September 16. The final Senate vote was 89-9, reflecting broad support for patent reform legislation in this Congress-the Senate passed its version of the bill (S. 23) by a vote of 95-5, and the House bill (H.R. 1249) passed by a 304-117 margin. It is widely believed that this patent reform measure is going to usher in considerable changes in how patents are obtained and enforced in the United States.

McDonnell Boehnen Hulbert & Berghoff attorneys are well versed on the Leahy-Smith America Invents Act patent law changes and how the changes will impact prosecuting and enforcing patents in the U.S. They are providing up-to-date developments related to the Leahy-Smith America Invents Act and its potential impact upon your business, including the information highlighted below.

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Stay current on the latest trends and developments in IP law: sign up online to join the MBHB mailing list to receive our snippets publications and invitations to upcoming MBHB webinars. Go to http://www.mbhb.com/pubs/snippetssignup/. Feel free to forward this link to colleagues and friends.

MBHB Publications

“On the Brink of Change — Congress Passes Patent Reform,” MBHB snippets, Summer 2011 edition (Vol. 9, Issue 3)

“Leahy-Smith America Invents Act Ratchets Up Fees 10 Days After Enactment,” MBHB snippets Alert (September 15, 2011)

“Patent Reform: What Has Already Changed?,” MBHB snippets Alert (October 4, 2011)

“‘Patent Reform: First-Inventor-to-File’ to Replace the Current ‘First-to-Invent’ System,” MBHB snippets Alert (October 13, 2011)

“Patent Reform: Derivation Proceedings,” MBHB snippets Alert (November 1, 2011)

“Patent Reform: New Section 298 Will Preclude Patentees from Proving Willfulness or Inducement Through an Alleged Infringer’s Failure to Obtain or Provide Evidence of an Opinion of Counsel,” MBHB snippets Alert (November 3, 2011)

“Patent Reform: Transitional Review of Business Method Patents Under AIA,” MBHB snippets Alert (November 10, 2011)

“Patent Reform: Changes to Reissues and the New Supplemental Examination Procedure,” MBHB snippets Alert (December 12, 2011)

 “AIA Rules Going Into Effect September 16, 2012,” MBHB snippets Alert (August 7, 2012)

“Post-Grant Review: A Double-Edged Sword,” MBHB snippets, Fall 2012 edition (Vol. 10, Issue 4)

Preparing for the Final Phase of the America Invents Act Going Into Effect March 16, 2013, MBHB snippets Alert (February 11, 2013)

Comments on New AIA Rules,” MBHB snippets, Spring 2013 edition (Vol. 11, Issue 2)

 

MBHB Webinar and In-House Seminars

MBHB Webinar | February 21, 2013 | 10:00 a.m. CT

When Trade Secrets Go Abroad: Strategies for Combating Trade Secret Misappropriation (Live Webinar)

MBHB Webinar | February 14, 2013 | 10:00 a.m. CT

Last Chance! The Top Ten Things In-House Counsel Need to Do to Prepare for The AIA’s March 2013 Deadline (Live Webinar)

MBHB Webinar | January 22, 2013 | 10:00 a.m. CT

Top Patent Law Stories of 2012 (Live Webinar)

MBHB Webinar | December 12, 2012 | 10:00 a.m. CT

Saving the Best for Last: the Top Ten Things In-House Counsel Need to Do to Prepare for The AIA’s March 2013 Deadline (Live Webinar) 

MBHB Webinar | September 6, 2012 | 10:00 a.m. CT

A Review of the Impact of Recent Supreme Court and Federal Circuit Decisions on Patent Strategy

MBHB Webinar | February 23, 2012 | 10:00 a.m. CT

Impact of the America Invents Act on Patent Litigation Strategy (access arhived version via WebEx)

MBHB Webinar | October 5, 2011 | 12:00 p.m. CT and Webinar | October 19, 2011 | 8:00 a.m. CT

Impact of the New Patent Law: An Overview of the America Invents Act (access archived version via WebEx) 

Please contact an MBHB attorney should you have any questions about the Act or to arrange an in-house seminar about the Leahy-Smith America Invents Act.

Select AIA Proposed and Final Rules

  1. Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 77 Fed. Reg. 42150 (July 17, 2012)
  2. Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings, 77 Fed. Reg. 45247 (July 31, 2012)
  3. Changes To Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act, 77 Fed. Reg. 46615 (August 6, 2012)
  4. Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions, 77 Fed. Reg. 48612 (August 14, 2012)
  5. Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48680 (August 14, 2012)
  6. Transitional Program for Covered Business Method Patents — Definitions of Covered Business Method Patent and Technological Invention, 77 Fed. Reg. 48734 (August 14, 2012)
  7. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (August 14, 2012)
  8. Changes To Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act, 77 Fed. Reg. 48776 (August 14, 2012)
  9. Changes To Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act and To Revise Reexamination Fees, 77 Fed. Reg. 48828 (August 14, 2012) 
  10. Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act, 77 Fed. Reg. 43759 (July 26, 2012)
  11. Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act, 77 Fed. Reg. 43742 (July 26, 2012)
  12. Examination Guidelines for Implementing the First Inventor To File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11059 (Feb. 14, 2013)
  13. Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11023 (Feb. 14, 2013) 

Patent Docs Weblog

Visit Patent Docs, authored by MBHB attorneys, at http://www.patentdocs.org/ for additional information on the Leahy-Smith America Invents Act.