Patent Law Weblog
recent posts
- Apple v. Squires: USPTO Director Has Unlimited Discretion on IPR Institution
- The Ghost in the Machine: Why GenAI Can Be Both a Brilliant Researcher and a Terrible Advocate
- Bayer Files Suit Against Trio of COVID-19 Vaccine Makers
- Allen v. Cooper (4th Cir. 2026)
- To Require an Inventor ID, or Not to Require an Inventor ID – That Is the Question
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Category: Patent Legislation
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By Kevin E. Noonan — The U.S. Patent and Trademark Office on Friday released a "Report on the Prior User Rights Defense" provisions of the Leahy-Smith America Invents Act. This Report was prepared as part of a mandate by Congress in §§ 3(m) and 31 of the Act that the Office perform studies relating to…
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By Donald Zuhn — Reflecting upon the events of the past twelve months, Patent Docs presents its fifth annual list of top biotech/pharma patent stories. For 2011, we identified a dozen stories that were covered on Patent Docs last year that we believe had (or are likely to have) the greatest impact on biotech/pharma patent…
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By Kevin E. Noonan — Another significant change effected by the Leahy-Smith America Invents Act relates to the power of an assignee, or someone who has obligated an inventor to assign, to file an application without obtaining an oath or declaration (or even permission or knowledge) of the inventor, raising an interesting Constitutional question as…
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By Kevin E. Noonan — One provision in the Leahy-Smith America Invents Act (AIA) that appears to benefit (or at least be intended to benefit) patentees is the Supplemental Examination revision set forth in Section 12. This section revises 35 U.S.C. § 257 to include a new "Request for Supplemental Examination" that is limited to…
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By Kevin E. Noonan — The Leahy-Smith America Invents Act (AIA) revises the law relating to third-party submissions of patent and printed publications in patents (Section 6(h)) and patent applications (Section 8). In both instances the scope of the prior art, the type of art that can be cited, and/or the timing for citing such…
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By Kevin E. Noonan — In addition to an entirely new post-grant review procedure, the AIA contains significant revisions to the current inter partes re-examination proceedings (which are now termed "inter partes review"). Section 6(a) of the AIA sets forth these revisions to inter partes review. The most significant of these is a change in…
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By Kevin E. Noonan — For the first time in U.S. patent law, the AIA provides a mechanism for post-grant review of U.S. patents that is capable of considering reasons for unpatentability other than prior art under §§ 102 or 103. These provisions comprise Section 6(d) of the law. The new post-grant review provisions (codified…
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By Kevin E. Noonan — Section 5 of the AIA expands prior user rights: 35 U.S.C. 273 Defense to infringement based on earlier inventor. (a) IN GENERAL.–A person shall be entitled to a defense under section 282(b) with respect to subject matter consisting of a process, or consisting of a machine, manufacture, or composition of…
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By Kevin E. Noonan — The provisions of the Leahy-Smith America Invents Act (AIA) relating to "First-Inventor-to-File" are set forth in Section 3. Section 3(a) amends definitions relating to inventorship in 35 U.S.C. § 100. The "inventor" is defined in new § 100(f) as "the individual, or if a joint invention, the individuals collectively who…
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By Donald Zuhn — On Friday, the U.S. Patent and Trademark Office announced that it was seeking comments with regard to two studies it must conduct under the Leahy-Smith America Invents Act (AIA). The studies, on the operation of prior user rights in selected countries in the industrialized world and international patent protection for small…
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