The Leahy-Smith America Invents Act was signed into law on September
16, 2011, and made the most sweeping changes to the U.S. patent law in nearly
60 years. America Invents Act: Law & Analysis, 2013 Edition
is the definitive, must-have resource to ensure understanding of and
compliance with the America Invents Act .
Authored by top U.S. patent law firm Foley & Lardner, this title
presents a definitive explanation of the new patent reform legislation. The
authors bring clarity to the complex and confusing provisions of the
America Invents Act, as well as insight into how the Act could be
interpreted.
America Invents Act: Law and Analysis is the most invaluable
resource to help you:
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Understand the implications of the new patent reform act through clear and
straightforward explanations
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Quickly find the correct effective date for important changes in the law
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Gain practical guidance on how the Act may be interpreted so you can
anticipate how the Act may affect your client
America Invents Act: Law and Analysis, 2013 Edition dissects and
analyses the major impacts for patent practitioners, including the switch to a
“first-to-file” jurisdiction and the new post-grant review process. Highlights
of this new edition include:
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A new section on miscellaneous provisions regarding derivation proceedings
including public availability of board records, correction of inventorship,
oral hearing, page limits, discovery and pro hoc vice .
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In depth discussion of the USPTO's final rules of practice relating to the the
inventor’s oath or declaration provisions of the AIA.
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A new section on the four final rules packages implementing inter partes
and post-grant review.
Chapter 1. Introduction - Courtenay C. Brinckerhoff and Sharon S.
Barner
Chapter 2. The First-To-File Provisions - Courtenay C. Brinckerhoff
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§2.01 Introduction
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§2.02 General Definitions
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§2.03 The New 35 U.S.C. § 102
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§2.04 The New Section 103
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§2.05 The Effective Date of the First to File Provisions
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§2.06 Examples of the First to File Provisions
Chapter 3. Derivation and Derivation Proceedings - Antoinette F.
Konski
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§3.01 Introduction
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§3.02 Exception for Derived Prior Art
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§3.03 Derivation Proceedings
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§3.04 Appeal From the PTAB
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§3.05 Derivation Destroys Prior User Rights
Chapter 4. Changes Impacting Patent Prosecution - Lauren L. Stevens,
Lorna L. Tanner and Courtenay C. Brinkerhoff
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§4.01 Introduction
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§4.02 Track I Fee-Based Expedited Examination
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§4.03 Changes Related to Formalities
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§4.04 USPTO Fee-Setting Authority
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§4.05 New Micro Entity Status
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§4.06 Surcharge for Non-e-Filed Applications
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§4.07 No "Best Mode" for Priority Claim
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§4.08 State of Mind—Deceptive Intent
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§4.09 Third Party Submissions
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§4.10 Ban on Tax Strategy Patents
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§4.11 Ban on Human Organism Patents
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§4.12 Statute of Limitations on Disciplinary Actions
Chapter 5. Transitional Program for Covered Business Methods - Paul
S. Hunter
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§5.01 The Transitional Program for Covered Business Methods
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§5.02 Supplemental Examination
Chapter 6. Inter Partes Review and Post-Grant Review - Jacqueline D.
Wright Bonilla
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§6.01 Inter Partes Review
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§6.02 Post-Grant Review
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§6.03 Inter Partes and Post-Grant Reviews—Moving Forward
Chapter 7. Provisions Related to Litigation - Debra D. Nye
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§7.01 General Considerations Related to Litigation
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§7.02 Defense to Infringement Based on Prior Commercial Use
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§7.03 Limitations on False Marking Suits
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§7.04 Restrictions on Joinder of Defendants
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§7.05 Elimination of Best Mode Violation as Grounds for Invalidation
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§7.06 Advice of Counsel
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§7.07 Jurisdiction and Change of Venue
Chapter 8. Other Components of AIA - Lauren L. Stevens, Lorna L.
Tanner and Jacqueline D. Wright Bonilla
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§8.01 Reports and Studies Instituted Under the AIA
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§8.02 Sections 23 and 24: Satellite Offices
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§8.03 Section 28: Patent Ombudsman For Small Businesses
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§8.04 Section 32: Pro Bono Program
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§8.05 Section 37: “Calculation of 60-Day Period for Application of Patent Term
Extension”
Appendix A America Invents Act
Appendix B Patent Act Redline Version
Appendix C Side-by-Side Comparison of Old and New Patent Act Sections
Appendix D Comparison of Selected Sections of Pre-AIA and AIA U.S. Patent Law
Appendix E Revisionof Standard forGranting an Inter Partes Reexamination
Request
Appendix F Ex Partes Quarterly Report – September, 2011
Appendix G Inter Partes Quarterly Report – September, 2011
Index
