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This title comprehensively guides patent practitioners and patent litigators through the changes made by the America Invents Act (AIA) to substantive patent law, patent practice, and patent litigation. It explains each of the AIA's modifications to the patent law against the background of existing law and the relevant expressions of congressional intent. The book is divided into five logical parts.
Starting with substantive patent law, Part I explains how the AIA changes the U.S. patent system from “first to invent” to “first inventor to file,” redefines the concepts of prior art and the grace period, modifies the dates for determining what counts as prior art, and makes other substantive law changes of which every patent practitioner should be aware.
Part II focuses on the AIA changes to patent litigation. It covers caselaw addressing the termination of qui tam actions for false marking and explains how courts have addressed the requirements of the new cause of action for a “competitive injury” from a false marking violation. The book also covers the AIA's expansion of the prior use defense, elimination of the best mode defense (but not the best mode requirement), new requirements for joining multiple alleged infringers in one action, new provisions on the advice of counsel, state court jurisdiction, the venue for reviewing PTO actions, and the routes for appeal.
Part III explains the four new administrative trials before the new Patent Trial and Appeal Board. It covers the statutes and new PTO rules applicable to these new proceedings, including the PTAB's general procedures and its procedures for post-grant reviews, reviews of covered business method patents, inter partes reviews, and derivation proceedings (which have replaced interferences).
Parts IV and V focus on other new PTO procedures in handling patent applications and issued patents. For example, the AIA gives patent owners a valuable opportunity to allow the PTO to have a post-grant supplemental review of the patent which can preempt potential inequitable conduct and related issues in future litigation involving the issued patent.
The book will be supplemented annually to cover important case rulings on these revisions and further developments.