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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Professor Kwall's Articles on SSRN All-Time Top 10 List.

Professor Roberta Kwall’s articles "Inspiration and Innovation: The Intrinsic Dimension of the Artistic Soul" (Notre Dame Law Review) and "Author-Stories: Narrative's Implications for Moral Rights and Copyright's Joint Authorship Doctrine" (Southern California Law Review) are included in SSRN's all-time top 10 download list for Philosophy Research Network: Aesthetic Experience, Judgment, Value.

14th Annual IP Scholars Conference.

Professors Joshua Sarnoff and Stefania Fusco participated in the 14th Annual Intellectual Property Scholars Conference (IPSC) held at Berkeley Center for Law and Technology (BCLT) at the UC Berkeley School of Law on August 7 and 8, 2014. The IPSC brings together intellectual property scholars to present their works-in-progress and to listen and discuss others’ works. The conference is co-sponsored by the Berkeley Center for Law & Technology, UC Berkeley School of Law; the Intellectual Property and Information Law Program, Benjamin N. Cardozo School of Law at Yeshiva University; the Center for Intellectual Property Law & Information Technology, DePaul University College of Law; and the Stanford Program in Law, Science & Technology, Stanford Law School.

CIPLIT Hosts Third International IP Scholars Roundtable and Hosier Scholar Lecture.

On May 1 and 2, 2014, 22 senior scholars from the United States and various other countries held a roundtable at DePaul on international intellectual property law issues.

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).

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