Technology Transfer and Innovation Forum Series

Wednesday, February 15, 2012

12:00 Noon - 2:00 PM

Topic: 

USPTO Implementation of the America Invents Act

Speaker:

Nathan K. Kelley
Associate Solicitor
United States Patent and Trademark Office

The Presentation:

On September 16, 2011, the President signed into law the Leahy-Smith America Invents Act (“AIA”), which presents the biggest change to U.S. patent law in 60 years.  Beyond shifting the U.S. system from a first-to-invent to a first-to-file system, the AIA significantly overhauls the administrative procedures used to challenge the validity of issued patents.  Specifically, the AIA creates two new trial-like proceedings, Post-Grant Review and Inter Partes Review, both of which will be conducted by the Patent Trial and Appeal Board, formerly the Board of Patent Appeals and Interferences.  In addition to those new proceedings, the AIA changes the current U.S. system in other ways by, for example, permitting third parties to submit prior art in pending applications and by allowing patentees to request Supplemental Examination in order to cure any potential inequitable conduct issues.

In order to implement all of these changes, the AIA requires the USPTO to issue new rules, most of which must be final by the September 16, 2012 anniversary date of the AIA.  As a result, approximately one dozen significant rulemakings are now underway within the agency.  This talk will focus on the most significant of those rulemakings, as well as the scope and conduct of the new Board proceedings.

The Speaker:

Nathan Kelley is an Associate Solicitor at the United States Patent and Trademark Office.  In that role, he represents the USPTO in the federal courts, and has been the lead agency counsel in over twenty appeals before the United States Court of Appeals for the Federal Circuit.  He has defended the USPTO on a wide range of legal issues, from specific patentability determinations to broader issues touching on the USPTO’s statutory examination duties, the limits of its reexamination jurisdiction, and the scope of various provisions of the Hatch-Waxman Act.  He also provides advice and guidance to the agency regarding various intellectual property policy issues, including proposed rulemakings, internal procedures, and legislative matters.  Before the Solicitor’s Office, Mr. Kelley worked at the Federal Circuit, first as a member of its permanent legal staff, and later as a judicial law clerk to the Hon. Randall R. Rader.  Earlier, he was an associate at a mid-sized intellectual property law firm in Washington D.C.  His career began as a patent examiner at the USPTO, where he examined patent applications directed to integrated circuits and computer chips.  Mr. Kelley received both a JD magna cum laude and a BS in electrical engineering from George Mason University.