Tech Transfer Central
Industry-Sponsored Research Management

Moving From First to Invent to First to File: Understanding the Opportunities and Challenges

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: April 26, 2012

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Price: $197
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Although the first-to-file provision of the America Invents Act does not take effect until next March, waiting too long to prepare your organization and your researchers for this historic shift will only leave you playing catch-up later, or worse yet putting your valuable IP in jeopardy. It’s critical that you start preparing for the changes now, and begin the process of adopting researcher education and patent prosecution practices to conform with the new regime.

That’s why we’ve recruited renowned patent attorney and tech transfer expert Charles R. Macedo, partner with Amster, Rothstein & Ebenstein LLP and author of The Corporate Insiders’ Guide to US Patent Practice, for a crucial webinar session that will arm you with the strategies and tactics you need to prepare effectively:

Moving From First to Invent to First to File:
Understanding the Opportunities and Challenges
DVD – On Demand – PDF Transcript

In this nuts and bolts program, Mr. Macedo will expertly guide you through the conversion to the new system and clarify the opportunities and challenges TTOs and others will face in the transition and beyond. Here’s a brief look at the agenda:

  • Understanding the categories of prior art: What’s new, and what has changed?
  • Comparing the old and the new rules on determining priority date
  • Walking through examples of effect of publication on prior art analysis
  • The latest on PTO rules implementing AIA
  • The impact of revised prior user rights under AIA
  • Proposed policies for TTOs to implement In advance of March 2013
  • Implementation and Beyond, including:
    • Adapting practices to a framework in which there may be more pressure to file applications earlier, at a point closer to conception than commercialization
    • Considering the role of provisional applications and provisional best practices
    • Preventing public disclosures of the invention
    • Understanding the impact of the new definitions of prior art and the grace period provisions of the AIA

Your Expert Presenter:

Charles R. Macedo is a partner with the intellectual property law firm Amster, Rothstein and Ebenstein, LLP of New York. Mr. Macedo advises and litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation. He also assists clients in obtaining, maintaining and enforcing patent and trademark portfolios. Mr. Macedo is the author of The Corporate Insider’s Guide to U.S. Patent Practice, being published by Oxford University Press, and received the prestigious AIPLA Robert C. Watson Award for his analysis of the First to File System vs. First to Invent System. 

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CLP Credits are also available.


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