America Invents Act Primer

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Language: English

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Since its passage in 2011, the Leahy-Smith America Invents Act ("AIA") has brought many significant changes to U.S. patent law. Accordingly, to assist readers in developing an in-depth understanding of these changes, the America Invents Act Primer provides discussions of each and every one of the AIA?s substantive provisions. More specifically, and whenever possible, each discussion of the AIA?s provisions includes the following key features:

  • An identification of the AIA section?s effective date, including the statutory basis for such dates;
  • A direct comparison of relevant pre- and post-AIA statutes;
  • An analysis of the similarities and differences between pre- and post-AIA statutes;
  • A discussion of the legislative goals that were addressed by the AIA section; and
  • An analysis of the practical implications of the changes made by the AIA section.

The America Invents Act Primer additionally highlights a number of free resources that can be utilized by readers to attain a deeper understanding of the AIA, including resources that explain how the U.S. Patent and Trademark Office is applying the new law.

Overall, the America Invents Act Primer provides a unique and practical desk reference on the AIA that is sure to be useful for years to come.

1. Introduction to the America Invents Act2. Transitioning U.S. Patent Law From a “First-to-Invent” to a “First-Inventor-to-File” System Under the AIA 3. The AIA’s Impact on the Novelty and Non-Obviousness Patentability Requirements4. The AIA’s Effects on Patentable Subject Matter and the Patentability Requirements Set Forth by 35 U.S.C. § 112 5. The AIA’s Impact on Post-Grant Proceedings6. The AIA’s Effects on Claims That May Be Brought in Patent Infringement Suits 7. AIA’s Modifications to Patent Infringement Defenses8. AIA’s Changes to Patent Prosecution Practices 9. The AIA’s Changes to Inventor Oaths and Declarations and Patent Application Filings by Non-Inventors10. Miscellaneous Provisions of the AIA

Legal professionals who are involved in patent law, including Patent Attorneys, Patent Agents, Technical Specialists, scientists who serve as Expert Witnesses in patent cases, and Patent Examiners

Sarah Hasford has been involved in the field of patent law for almost ten years. She began her career working as a Patent Examiner at the United States Patent and Trademark Office in Alexandria, Virginia where she examined patent applications directed to heterocyclic pharmaceutical and agricultural compounds. After working as an Examiner, Sarah attended law school at Franklin Pierce Law Center (now known as the University of New Hampshire School of Law). While in law school Sarah interned for the Honorable Arthur J. Gajarsa of the United States Court of Appeals for the Federal Circuit. Upon graduating from law school, Sarah entered private practice in the Washington, D.C. area. Sarah’s practice spanned all aspects of patent law, including patent prosecution, opinion work, and litigation with an emphasis on pharmaceutical patent litigation under the Hatch-Waxman Act. In 2015, Sarah left law firm practice to pursue her passion for educating non-legal professionals about patent law.
  • An identification of the AIA section’s effective date, including the statutory basis for such dates;
  • A direct comparison of relevant pre- and post-AIA statutes;
  • An analysis of the similarities and differences between pre- and post-AIA statutes;
  • A discussion of the legislative goals that were addressed by the AIA section; and
  • An analysis of the practical implications of the changes made by the AIA section.