Print this page Understanding the New Patent Law Changes
Tracy P. Jong, Esq., Patent and
Trademark Attorney
Cheng-Ning Jong, P.E., B.S., M.S.,
Registered Patent Agent
Course Outline
In this course, you will learn:
- Changes from “First-to-Invent” to “First-to-File” System
- Increased Importance of Confidentiality Agreements
- Increased Importance of Provisional Patent Applications
- Writing Provisional Patent Applications that are Defensible and Receive Priority
- Foreign Sales and Public Use – changes in the definition of prior art
- Other Recommendations and Good Practices Under the New Patent Laws
- Best Mode
- New Oath and Declaration Procedures
- Limitation on Issuance of Patents Claiming “a Human Organism”
- Limitation on Issuance of Patents Claiming “Tax Strategies”
- Understanding the Scope (Limits) of Patent Protection for Future Discoveries
- New Virtual Patent Marking
- Reducing Patent Troll Activity
- Expedited Proceedings: the New Fast track option
- How does the new Fast Track option compare to the Accelerated Examination procedure for patent applications?
- Priority of Examination for Important Technologies
- Micro entities
- Initiatives for Assisting Small Businesses and Independent Inventors
- End of SIR Program
- Satellite offices
- Out with Interference Proceedings, In with Derivation Proceedings
- Third Party Challenges
- Pre-issuance Submissions by Third Parties
- Post Grant Review
- Ex Parte Reexamination
- Inter Partes Reexamination
- Inter Partes Review
- Supplemental Examination
- Transitional Program for Covered Business Method Patents
- Expansion of Prior User Defens
This course includes
a multiple choice quiz at the end,
Learning Objective
In this course, you will learn:
- the implications of the change to a first-to-file system;
- the increased importance of provisional patent applications and confidentiality agreements;
- how to develop a provisional patent application that can withstand a challenge;
- important exceptions to the first-to-file rule for inventor’s own disclosures
- expansion of the on-sale and in-use patent bars;
- understanding how prior art will be defined under the new laws;
- changes in the Best Mode challenge to patent validity – no longer a way to invalidate your patent;
- the New Oath and Declaration procedures that allow assignees such as employers to sign if the inventor is unavailable or uncooperative;
- the new prohibition on issuance of patents claiming “a Human Organism” and “Tax Strategies”;
- Technology updates to business practices – New Virtual Patent Marking;
- some good news for businesses – changes aimed at reducing patent troll activity and false marking claims;
- Expedited Proceedings – for a small fee, you can buy your way to the front of the line!
- Lower fee structure for micro entities – how to qualify for the savings;
- how to take advantage of initiatives for assisting small businesses and independent inventors;
- the new Derivation Proceedings – what to do if someone uses your technology to derive their own “invention”;
- Third-Party Challenges – new opportunities during prosecution for preventing your competitors from getting patents for inventions that are not novel or are obvious;
- how to ensure you have timely notice of patent publications so you can act in time;
- how to perform a do-it-yourself search for patent publications;
- when a Prior User Defense can be asserted in a patent infringement case;
- how the new supplemental examination can “cure” potential inequitable conduct issues;
- an introduction to post-grant review including ex parte re-examination, inter partes re-examination and inter partes review;
- the scope of patent protection for future discoveries;
- When a Prior User Defense can be asserted in a patent infringement case;
- How the new supplemental examination can “cure” potential inequitable conduct issues;
- An introduction to post-grant review including ex parte re-examination, inter partes re-examination and inter partes review; and
- Understanding the scope of patent protection for future discoveries.
Intended Audience
This course is intended for practicing engineers of any industry whose daily work involves creating innovations but have little or no practical experience in protecting the innovations or differentiating innovations from prior art and patented inventions. For those engineers who have had patents filed in the past or dealt with their intellectual property legal department, this course introduces important changes in the patent laws which could significantly change the modus operandi of their patent protection practices.
Benefit to Attendees
Attendees of this course will become aware of the important changes of the Leah-Smith America Invents Act and how these changes may affect patent protection both from the perspectives of themselves and their competitors.
Course Introduction
Technology is a key asset to most businesses. The know-how to produce a product or a service in a manner that sets the company apart from its competitors is a proprietary advantage that must be protected for continued success. Know-how is often the result of a significant expenditure of corporate resources and the benefit of experience through trial and error. This proprietary technology allows them to be competitively positioned in the marketplace. Your competitor is equally aware of the importance of protecting technology and has applied for and been granted patents in certain technology areas you operate in. This course is designed to bring awareness to you about the important changes in the patent laws in the twenty first century and possibly one of the most significant changes in the patent laws in the past two centuries.
In this lesson, you are required to download and study the following course contents in PDF format:
Understanding the New Patent Law Changes
Please click on the above underlined hypertext to view, download or print the document for your study. Because of the large file size, we recommend that you first save the file to your computer by right clicking the mouse and choosing "Save Target As ...", and then open the file in Adobe Acrobat Reader. If you still experience any difficulty in downloading or opening this file, you may need to close some applications or reboot your computer to free up some memory.
Course Summary
We have reviewed several important patent law changes introduced as a result of Leahy-Smith America Invents Act and what they may mean to you as an engineer. By pointing out various aspects of the changes, it is the authors’ hope that the course has raised the reader’s awareness in spotting potential changes that may be required in their own patent protection practices.
Quiz
Once you finish studying the above course content, you need to take a quiz to obtain the PDH credits.
DISCLAIMER: The materials contained in the online course are not intended as a representation or warranty on the part of PDH Center or any other person/organization named herein. The materials are for general information only. They are not a substitute for competent professional advice. Application of this information to a specific project should be reviewed by a registered architect and/or professional engineer/surveyor. Anyone making use of the information set forth herein does so at their own risk and assumes any and all resulting liability arising therefrom.
