Coping With The New First-Inventor-to-File Prior Art Law: What Patent Prosecutors Need to Know and Do Before and After the Effective Date

This program provided patent prosecutors with practical tips and strategies to file and prosecute patent applications in light of the imminent new definition of prior art under the LEAHY-SMITH AMERICA INVENTS ACT (AIA), enacted on September 16, 2011, and soon to be effective.

Many inventions that are patentable today will irrevocably become unpatentable in a patent application filed on or after March 16, 2013, and vice versa for a few inventions. You will need to determine which inventions are among the many and which are among the few, and take the appropriate actions to avoid traps and meet deadlines. Additionally, how you prosecute a patent application filed under pre-AIA law will determine whether you will irrevocably lose its pre-AIA status. This easily could happen without your knowledge, only to be discovered after the patent issues and is involved in litigation.


Ed Manzo reviewed the first-inventor-to-file prior art provisions of the AIA, as well as explaining its complicated effective-date provisions.

Joe Hetz explained what steps should be taken before March 16, 2013, when the "first-inventor-to-file" law takes effect.

John Paniaguas provided practical tips for dealing with the America Invents Act after March 16, 2013.

George Wheeler explained a specific strategy sometimes allowing access to the preexisting “first-to-invent” law for many years after the “first-inventor-to-file” law takes effect.

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CIPLIT hosted the Third International IP Scholars Roundtable and Hosier Scholar Lecture on May 1 - 2, 2014.

On May 1 and 2, 2014, twenty-two senior scholars from the United States and various other countries held a roundtable at DePaul on international intellectual property law issues.

Learn more.

Professor Sarnoff named Edison Scholar.

Professor Joshua Sarnoff has been appointed a Thomas Alva Edison Visiting Scholar for the United States Patent and Trademark Office (USPTO).

Learn more.

15th Annual Niro Distinguished IP Lecture.

"How to Retain Patent Enforcement While Reforming It – Judges and Counsel Should Manage Infringement Suits, not Congress"

Honorable Paul R Michel(Ret.)
Chief Judge, U.S. Court of Appeals for the Federal Circuit

Commentator, Honorable James F Holderman
U.S. District Court, Northern District of Illinois

To view the video of this discussion, please click here.

In August 2013, four members of CIPLIT faculty participated in the 13th annual IP Scholars Conference, which originated at DePaul in 2000.

Professor Roberta Kwall opened the conference with a talk about the history of the conference and the top 10 things law faculty can do to enhance their career potential in this new reality of legal education. Professor Margit Livingston presented her paper on Copyright Infringement of Music: Determining Whether What Sounds Alike Is Alike. Professor Josh Sarnoff commented on Victoria Stodden’s paper, Software Patents as a Barrier to Scientific Transparency: An Unexpected Consequence of Bayh-Dole. Professor Fusco spoke about The Origins of Patent Examination in the Venetian Republic.

More CIPLIT news >