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Taft's Intellectual Property attorneys handle a wide variety of intellectual property issues, both nationally and internationally. Our attorneys advise clients on intellectual property matters relating to patents, trademarks, copyrights, trade secrets, unfair competition, false advertising, right of publicity, licensing, open source, software and technology, websites and domain names. We have experienced, highly qualified litigators who bring and defend IP related infringement lawsuits throughout the United States.  Clients include Fortune 500 companies, hospitals, universities and research institutions, mid-size and small companies, authors, artists, inventors, scientists, and entrepreneurs. 

New Patent Rules Allow Submission of References to be Considered by the Patent Examiner in Examination of Patent Applications of Another    



Anthony P. Filomena II


(919) 861-5092 

The America Invents Act introduces new rules, now in effect, implementing Preissuance Submissions.  The Preissuance Submission rules allow you to submit references of potential relevance to the examination of a third party patent application along with a description of the asserted relevance of each submitted reference.  Previously, there was no effective way to submit relevant prior art references to be considered by the patent examiner during the initial examination of a third party patent application.  To encourage use of these new rules, there are provisions enabling submission with no U.S. Patent and Trademark Office ("USPTO") fee.


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Inventor Oath and Declaration Changes under the America Invents Act 

Ryan White
Stephen F. Rost


(317) 713-3456


On Sunday September 16, 2012, changes to the Oath and Declaration of the inventor became effective due to the passage of the America Invents Act.  The United States Patent & Trademark Office (USPTO) published its new rules relating to these changes on August 14, 2012.  These rules are applicable to all new patent applications filed on or after September 16, 2012.

The changes to the Oath and Declaration are provided for in 35 U.S.C. 115 and 118.  Under the changes, someone other than an inventor or a joint inventor can file a patent application.  Moreover, the term "applicant" is no longer synonymous to an inventor.  With the changes, an assignee or other person who can show a sufficient proprietary interest in the invention may be the applicant.


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Inter Partes Review Replaces Inter Partes Reexamination 


Ryan Willis


(513) 357-9663


Changes to federal law have modified how a party can challenge a United States patent. Prior to September 16, 2012, a party interested in challenging the validity of a patent for want of novelty and non-obviousness could file a request for inter partes reexamination. That request, if granted by the United States Patent and Trademark Office (USPTO), provided the party with a voice during subsequent review of the patent by the USPTO. Many parties used inter partes reexamination when confronted with a lawsuit for patent infringement to provide for two potential bites at the apple; one through the courts and a second through the USPTO.


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Taft's Intellectual Property Newsletter is used to inform our clients and friends of significant new developments and current issues in intellectual property law. For more information about Taft Stettinius & Hollister LLP, please visit http://www.taftlaw.com.

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October 2012 Issue
New Patent Rules Allow Submission of References to be Considered by the Patent Examiner in Examination of Patent Applications of Another
Inventor Oath and Declaration Changes under the America Invents Act
Inter Partes Review Replaces Inter Partes Reexamination

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