In our last two updates, we reviewed the new definition of prior
art as well as the exceptions thereto. In view of the intricacies
imposed by the upcoming expansion of the definition of prior art,
patent applicants should consider the following:
Filing patent applications on or before March 15, 2013.
Applicants can beneficially use this interim time period (between
now and March 15, 2013) to file applications thereby obtaining the
benefits of the current first-to-invent system. This can be
particularly important for inventions that have a long development
cycle and may be entitled to a substantially earlier date of
Publishing invention disclosures on or after March 16, 2013.
Applicants can consider early publication of their inventions, even
prior to patent application filing, in view of the AIA assuming
that they do not contemplate seeking protection outside the U.S.
and intend to file a patent application within one year. These same
publications can render unpatentable later-filed patent
applications filed by others.
Preserving both U.S. and international patent rights by filing
at least a U.S. provisional patent application before disclosing
Performing an early assessment of inventions, determining
whether the inventions are worthy of patent pursuit
internationally, or in the U.S. only, or should be held as a trade
secret, and then acting accordingly. If in the U.S. only, consider
In conclusion, the view of the AIA's new definition of prior
art, patent applicants are well advised to "file early and
file often," such as to avoid finding themselves precluded
from patent opportunities by competitors who file or disclose
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
While under attack for several years now, the patent infringement defense of laches was dealt a serious, and likely final, blow by the recent Supreme Court case of SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment of infringement and summary judgment for non-infringement of The Medicines Company's ("MedCo") patents-in-suit.
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