Workshop A

January 22, 2014 9:00am

Patent Reform 101: A Primer on the Fundamental Provisions of the America Invents Act

David E. Korn
Vice President, Intellectual Property and Law
Pharmaceutical Research and Manufacturers of America (PhRMA) (Washington, DC)

Robert D. Summers
IP Attorney
Brinks Gilson & Lione

The America Invents Act (AIA) wrought vast changes on what is arguably the most complex and heavily litigated part of the United States Code this side of Title 26. These changes not only fundamentally alter inventorship, patentability, prior art, and best mode, but they also create entirely new procedures for challenging patents outside federal court. In addition, myriad smaller changes to the code lay waiting to trip up even the most diligent prosecutors and litigators. As a result, it is vital to be certain that you are aware of the major changes to Title 35 U.S.C., and this pre-conference primer’s faculty will provide you with a clear overview of the numerous sections of the Act that will be the subjects of intensive strategic analysis in the general session.

Topics to be discussed will include:
• Definitions in the Act explained
• Outlining the provisions impacting prosecution
– First-to-file inventorship
– Accelerated examination
– Prior art and pre-issuance
– Public “disclosure” defined
– Derivation proceedings
– Best mode inclusion
• An overview of the litigation and procedural provisions
– Inter partes review
– Post grant review
– Third party prior art submission
– Supplemental examination and reexamination
– Venue, jurisdiction, and procedural matters
– Effect of false marking changes
• Financial provisions laid out in the AIA
– Fees and fee setting authority
– Tax consequences
– Funding and expenses
• The AIA’s impact on universities and academic institutions
– How the first-to-file system will affect academic innovation
– How the AIA advantages universities
• Prioritized examination
– Determining which technologies can qualify as “important technologies”
– Data and information required to be eligible for a prioritized examination
• Changes to Patent Term Extension calculations
• Changes to declarations and assignments
• Studies and satellite offices
• Micro-entity certification provisions
– Qualifying as a micro-entity
– The risks associated with obtaining micro-entity status
– Fee reduction provisions
• Identifying what was not included in the AIA and the current status of these initiatives
– The current status of inequitable conduct under new guidance set forth in Therasense and the impact of changes to supplemental examinations in the AIA on inequitable conduct
– Applicant Quality Submissions
– Stays of post-issuance proceedings
– Limits on injunctions
– Interlocutory appeals of claim construction