Staking an Advantage in an AIA World: Practical Patent Tips for Biotechnology Companies
PDF

Supplementary Files

Editable Figures Accompanying Text (Boxes A to C)

Keywords

AIA
patent
prior art
IP liaison

Abstract

With passage of the Leahy-Smith America Invents Act (AIA), new rules and procedures related to the application of prior art now apply to patenting under a “first-inventor-to-file†system. This article summarizes certain key prior art provisions that biotechnology companies should be aware of and details practical steps that can be implemented to help stake a competitive advantage under the new law including the use of patent liaisons, early provisional and patent application filings, and in certain circumstances, defensive publication of patentable subject matter.

https://doi.org/10.5912/jcb652
PDF

References

Title 35 of the United States Code (U.S.C.), Section (§) 102 (enacted 2012) available online at http://www.law.cornell.edu/uscode/text/35/102?qt-us_code_tabs=0 (accessed 26 February 2014).

U.S.C. § 122

U.S.C. § 305

AIA Frequently Asked Questions (2013). USPTO, 30 October. http://www.uspto.gov/aia_implementation/faqs_first_inventor.jsp, accessed 26 February 2014.

American Intellectual Property Law Association (2012) Summary of the America Invents Act. http://www.aipla.org/advocacy/congress/aia/Pages/summary.aspx, accessed 26 February 2014

Fox, J. (2011) America Invents Act receives cautious welcome. Nature Biotechnology. 29: 953–954

Intellectual Property Owners Association (2011) Comparison of Selected Sections of Pre-AIA and AIA U.S. Patent Law https://www.ipo.org/ wp-content/ uploads/ 2013/ 03 /Patent_ Reform_ Chart_ Comparison_ of_ AIA_ and_ Pre-AIA_ Laws_FINAL.pdf, accessed 26 February 2014.

Knight, J. (2013) Patent strategy for researchers and research managers, 3rd ed. Chichester, West Sussex, U.K.: John Wiley at ch. 3

Leahy-Smith America Invents Act, H.R. 1249 (112th Congress, First Session), enacted (President Obama) 16 September 2011, available online at http://www.gpo.gov/ fdsys/ pkg/ PLAW-112publ29/content-detail.html (accessed 24 February 2014).

Lu, D., Kowalkski, T., Uthaman, S. (2012) Are laboratory notebooks necessary in a first inventor to file world? Journal of Commercial Biotechnology. 18(3): 67–68.

Luke Johnston (2011) The biggest groups are ill with inefficiency. Financial Times. 5 April. http://www.ft.com/intl/cms/s/0/863409bc-5fca-11e0-a718-00144feab49a.html#axzz2uMzj3yLQ, accessed 25 February 2014

Rao N. (2013) Opinion: AIA Does Not Discriminate. The Scientist. 21 August. http://www.the-scientist.com/?articles.view/articleNo/37133/title/Opinion--AIA-Does-Not-Discriminate/, accessed 26 February 2014

Rondeaue, G. (2011) “America Invents Act†patent law overhaul: the benefits and the drawbacks. Lexology. 17 November. http://www.lexology.com /library/detail.aspx?g=5f772592-7ac2-41bc-becb-d3ff5c8ed192, accessed 26 February 2014.

Rzucidlo, G. and Miller, S. (2008) Aggressive Intellectual Property Strategies. In Friedman, Y. (ed.) Best Practices in Biotechnology Business Development, ed. Yali Friedman, US: Logos Press, pp. 61–80

Uthaman (2012) Post-grant review: The good, the bad and the ugly for biotechnology companies.

Uthaman, S., Lu, D., and Kowalski, T. (2012) Post-grant review: The good, the bad and the ugly for biotechnology companies. Journal of Commercial Biotechnology 18(1): 97–99

Unless specified by prior arrangement, the author agrees to the following terms and assurances:

  1. For myself and on behalf of the other authors listed on this work, I assign to thinkBiotech LLC the copyright* in the contribution for the full term throughout the world.
  2. I/we further give to the following assurances
    1. I am the sole author of the contribution, or, if not, I have the written authority of the other authors to transfer the copyright* to thinkBiotech LLC and give these warranties;
    2. I and (where appropriate) the other authors are entitled to transfer the copyright to thinkBiotech LLC and no one else would be entitled to prevent us from publishing the contribution;
    3. To the best of my/our knowledge, all the facts in the contribution are true and accurate;
    4. The content of the contribution is entirely original to me (and where appropriate to the other authors) or, if not, the written permission of the owner of the copyright in any material copied from elsewhere has been obtained for all media (all such permissions to be attached to the contribution as supplementary files);
    5. Nothing in the contribution is obscene or libellous;
    6. Nothing in the contribution infringes any duty of confidentiality which I/or the other authors may owe to anyone else.
    7. I and/or the other authors have obtained the appropriate clearances from my/our employer(s) or other concerned institution(s).
* Works by US government employees prepared as part of official duties are in the public domain and the authors are therefore exempt from copyright assignment.