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Big deal + Complex. First-to-Invent ˃˃ First-to-File . More foreign Art. More litigation in PTO.

Oregon State Bar Intellectual Property Law Section, Oregon State Bar Computer and Internet Law Section, and Oregon Patent Law Association John D. Vandenberg, Klarquist Sparkman, LLP December 7, 2011 Immediate and Near-Term Practical Impacts of the America Invents Act . Big deal + Complex.

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Big deal + Complex. First-to-Invent ˃˃ First-to-File . More foreign Art. More litigation in PTO.

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  1. Oregon State Bar Intellectual Property Law Section, Oregon State Bar Computer and Internet Law Section,and Oregon Patent Law Association John D. Vandenberg, Klarquist Sparkman, LLP December 7, 2011 Immediate and Near-Term Practical Impacts of the America Invents Act

  2. Big deal + Complex. • First-to-Invent ˃˃ First-to-File. • More foreign Art. • More litigation in PTO. • Phase-in of changes. 2 Klarquist Sparkman, LLP

  3. NOW • False marking. • Virtual patent marking. • Best mode. • Joinder of defendants. • Prior use defense. • PTO fee setting. Micro-entity status. • Tax strategies. • Prioritized examination. 3 Klarquist Sparkman, LLP

  4. 09/16/12; EFD-03/16/13 • Inter partes review. • Post-grant review. • Transitional post-grant(business methods). • Derivation. 4 Klarquist Sparkman, LLP

  5. 09/16/12 • Supplemental Examination. 5 Klarquist Sparkman, LLP

  6. The new PTO. 6 Klarquist Sparkman, LLP

  7. EFD-03/16/13 • First-to-File SHIELDS • Common Ownership / Joint Research. • Defensive Disclosure. 7 Klarquist Sparkman, LLP

  8. EFD-03/16/13 “First to File” - Prior Art, Examples Prior art after March 16, 2013 B app published B files US app Prior art now A conception 12/07/11 A “RTP” Feb. 2012 A files US app 03/17/13 B files foreign app, and later claims priority to it in US Result: A is NOT entitled to patent. 8 Klarquist Sparkman, LLP

  9. EFD-03/16/13 “First to File” - Prior Art, Examples A publicly discloses B app published B files US app A conception 12/07/11 A “RTP” Feb. 2012 A files US app 03/17/13 B files foreign app, and later claims priority to it in US Result: A IS entitled to patent. Klarquist Sparkman, LLP

  10. www.nissanusa.com/Patent Pat. - www.apple.com/iphone 10 Klarquist Sparkman, LLP

  11. “Micro Entities” 11 Klarquist Sparkman, LLP

  12. Start-Up Tech. Co. • Licensing • Patent-Clearance • Mnfr. Who Doesn’t Want to File Pat. Apps. • Co. With Litigious Competitor • Patent Owner • Owner Of “Business Method” Patent • Owner Of Patent Filed Before 11/29/99 • Non-U.S. Filer Of PCT/U.S. Pat. Apps. • Patent Prosecutors 12 Klarquist Sparkman, LLP

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