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Elissa M. Kingsland

Associate

[email protected]

+1.617.348.1701

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Elissa is an accomplished attorney experienced in drafting and prosecuting patent applications. She advises clients on the full range of patent portfolio management, from patentability searches and opinions to freedom to operate assessments. She has considerable experience in the life sciences, medical technology, and consumer products industries, working on portfolios involving advanced materials, chemistry, and mechanical innovations.

Prior to joining the firm, Elissa was an associate in the Atlanta office of another international law firm, where she focused on patent prosecution, including post-grant proceedings. Earlier, Elissa served as primary IP counsel for a high tech company in the lighting sector, where she worked with researchers to identify patentable technologies and drafted and prosecuted US patent applications. Before that, she worked as a patent attorney consultant for a medical device company.

Her earlier work as a summer associate for a Boston-area firm involved analyzing state and federal cases to assist in civil litigation. She also gained a wealth of practical experience through her work at Procter & Gamble, Millennium Pharmaceuticals, Inc., and General Electric Water and Process Technologies.

viewpoints

At the time of filing any patent application with the United States and Patent Trademark Office (USPTO), patent applicants must designate their entity status.  Selecting the correct entity status can significantly reduce costs, so it is important to determine the correct entity status and update the status as needed throughout a patent’s and patent application’s life.  There are three types of entity statuses: large, small, or micro, with small and micro entities being entitled to reduced USPTO fees

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On January 23, 2019, the Federal Circuit decided Supernus Pharmaceuticals, Inc. vs. Iancu and shed light on Patent Term Adjustment (PTA).  PTA was established by the American Inventors Protection Act of 1999 and codified at 35 U.S.C. § 154(b), which defines three kinds of United States Patent and Trademark Office (USPTO) delays, “A” delay, “B” delay, and “C” delay, and sets forth certain reductions from the summation of the Type A, B, and C delays.  One of these reductions relates to Applicant delays.  For an overview of PTA, see our prior articles here and here.
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This article is second in a two-part series focusing on various issues related to priority claims in U.S. patent applications.  While Part 1 is a general overview of how to make a proper priority claim, this article addresses how to make a timely post-filing priority claim in an application and how to correct an improper priority claim.  Timeliness is crucial to avoid high fees and ensure that an earlier priority date is not lost.  The procedures discussed below are post-America Invents Act (AIA) procedures applicable to applications and issued patents filed on or after March 16, 2013.
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This article is first in a two-part series focusing on various issues related to priority claims in U.S. patent applications.  Part 1 is a general overview of how to make a proper priority claim, without addressing how to correct an improper priority claim, which will be examined in Part 2.
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Under U.S. patent law, while there is no duty to perform a search of relevant art, inventors and those associated with filing or prosecuting patent applications as defined in 37 C.F.R. § 1.56 have a duty to disclose to the U.S. Patent and Trademark Office (USPTO) all known prior art or other information that may be “material” in determining patentability.
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This article is second in a series focusing on various issues related to Patent Term Adjustment for U.S. patent applications.  While Part 1 is a general overview of how to calculate patent term adjustment (“PTA”), this article addresses how the filing of various papers during prosecution can affect PTA.
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This article is first in a series focusing on various issues related to Patent Term Adjustment. Part 1 is a general overview of how to calculate patent term adjustment, without addressing the numerous factors that can affect patent term adjustment that will be examined in future articles.
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Events & Speaking

Speaker
Apr
30
2019

Technology Centers 3600 and 3700 Customer Partnership Meeting

USPTO and American Intellectual Property Law Association

USPTO Headquarters, 600 Dulany Street, Alexandria, VA

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