First to File: Patents for Todays Scientist and Engineer

This book focuses on the America Invents Act (AIA), which has enacted some of the biggest changes in patent law since 1952. The book bridges the gap between the realistic needs and questions of scientists and engineers and the legal skills of professionals in the patent field at a level accessible to those with no legal training. Lays out the new features of patent law introduced by the America Invents Act of 2012 Directed specifically at scientists and engineers rather than patent professionals, and sets forth the features of the law in lay terms with practical examples Explains the differences between the first–to–invent and first–to–file rules and why the two rules will coexist Sets out the changes in determinations of patentable novelty under the new law Focuses on the growth of new technologies in industry versus the laws protecting them

List of Figures List of Tables Preface Introduction Chapter I The First–to–File Rule: Evolution and Application A. History of the First–to–File Rule in the United States B. "Who′s on First?" – The Rule and Its Application C. Adapting Business Routines to the First–to–File Rule Chapter II Prior Art Before and After the AIA – Two Standards Compared A. Prior Art and the First–to–File Rule B. "But Is It Art?" – The Art of Prior Art C. And Is It "Prior" – Pre–AIA Law vs. AIA D. A Servant of Two Masters? – The "Effective Filing Date" and Its Role in Determining the Governing Rule E. Conclusion Chapter III Creating One′s Own Prior Art: Self–Imposed Barriers to Patentability A. The On–Sale Bar B. The Publication Bar – Publish and Perish? C. Observations Chapter IV Cancelling Prior Art and Other Benefits of Record Keeping A. Derivation Proceedings B. Disqualifying Reference Materials as Prior Art C. Records Showing Collaboration D. Records of Public Disclosures and Commercial Uses E. Laboratory Notebooks Chapter V Inventing in an Employment Environment – The AIA′s New Recognition of Employer Interests and Project Management A. Project Management and the New Definition of Prior Art B. Allowing the Employer to Stand In for the Inventor C. What Constitutes an Obligation to Assign? D. Implying an Obligation to Assign When There is No Express Agreement E. Having a "Sufficient Proprietary Interest" Other Than By Assignment or Obligation to Assign F. When No Assignment, Obligation to Assign, or Proprietary Interest: The "Shop Right" Chapter VI The Novelty Threshold: Can You Recognize It When You See It? A. Anticipation and the "All Elements in a Single Reference" Rule B. Novelty in the Arrangement of Parts C. Another Argument Against Anticipation: The "Non–Enabling" Reference D. Caution: A Reference Can Anticipate an Invention Even if it "Teaches Away" From the Invention E. Novelty vs. Anticipation Among Genus, Subgenus, and Species F. Are We Done? Chapter VII Confronting the Prior Art: What Makes an Invention Nonobvious? A. "But Every Invention is a Combination of Old Elements!" B. Pursuing the Unpredictable C. In Hindsight (and Other Obvious or Nonobvious Thoughts) Chapter VIII The View From the Infringer′s Side – Challenging a Patent′s Validity A. Do You Really Want to Go to Court? B. Selecting Claims C. Options for Challenge Before a Patent is Granted D. Options for Challenge After a Patent is Granted Chapter IX Patent Eligibility – Pushing the Envelope on Subject Matter Appropriate for Patenting A. Medical Diagnostic Methods B. Computer–Implemented Processes C. Business Methods D. The AIA′s New Procedure for Challenging Business Method Patents E. Conclusion: A Rule for Patent Eligibility? Or a Case of "I′ll Know It When I See It?" Chapter X Selected Topics in Patent Strategy A. Provisional Patent Applications B. Strategies in Claim Construction Chapter XI Patents and Beyond: The Variety and Scope of Intellectual Property A. Trade Secrets B. Trademarks C. Copyrights D. Design Patents E. Intellectual Property Coverage for Plants F. Conclusion Appendix A Selected Fees Charged by U.S. Patent and Trademark Office and Other U.S. Agencies for Intellectual Property as of January 1, 2014 Appendix B Patent Searchers Acronym Glossary Glossary References, Websites, and Blogs Patents and Published Patent Applications Cited Cases Cited Index

M. Henry Heines, PhD, JD is an Attorney at Law, specializing in patents, with almost 40 years’ experience in the field. His expertise includes patents in the areas of organic and inorganic chemistry, chemical engineering, mechanical engineering, and biotechnology. He is the author of two books, 15 articles, and numerous presentations on the subject of patents in specialized engineering fields. He also authored the Patent Column featured in the AIChE magazine, CEP for numerous years.