Patent Reform: 5 Ways You Can Expect Patent Litigation to Change

“The signing into law of the [America Invents] Act marks a new era of patent litigation. The Act presents a host of opportunities for companies, especially those defending patent infringement actions, provided they act quickly – given that several of the provisions have immediate prospective and in some cases even retroactive effect.” (From Patent Reform Act Will Change the Face of Patent Litigation by Morrison & Foerster LLP) 

One key objective of the Leahy-Smith America Invents Act is reducing costly legal battles for inventors, entrepreneurs and small businesses with limited resources for litigating disputes. From lawyers and law firms on JD Supra, here’s a look at five ways the Act will do that: 

1.  False marking lawsuits are effectively finished…

“The Act amends § 292 to effectively eliminate all pending and future false marking lawsuits. First, the Act provides that only those plaintiffs who have suffered ‘competitive’ injury as a result of the false marking have standing to sue for compensatory damages. Second, only the United States government has standing to sue for the fine of ‘not more than $500 for every such offense.’ Third, no civil or criminal liability arises if one marks a product with an expired patent number, provided that the expired patent actually covered the product.” (From Patent Reform – Changes That Take Effect Immediately by McKenna Long & Aldridge LLP) 

2.  There’s a new post-grant review in town…

“Effective one year after enactment, any third-party will have the right to petition the U.S. Patent and Trademark Office to review the validity of an issued patent within nine months of the patent’s grant. The U.S. Patent and Trademark Office may authorize a post-grant review if the information presented by the petitioner, ‘if not rebutted, would demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable.’ Importantly, patents may be challenged through this process based on any ground of patentability; not merely the limited grounds available in Reexaminations or inter partes Reviews.” (From New Patent Reform Bill Poised to Significantly Change U.S. Patent Law by Bryan Cave) 

3.  Deadlines for third party submission of art are extended…

“The Act extends the time period during the prosecution of a patent application in which a third party may submit prior art for the examiner’s consideration. Currently, a third party must submit prior art within 2 months of the publication of the application. The Act extends the deadline for submitting art to the earlier of the notice of allowance of the application or the later of six months following publication of the application and a first office action in the application. These provisions go into effect one year from the date of enactment. They will also apply retroactively, allowing third parties to submit prior art related to then-pending applications.” (From Long-Awaited Patent Reform Bill Passes Congress by Ropes & Gray LLP) 

4.  “Best mode” is no longer a basis for patent invalidity…

“The current patent law requires a patent must disclose the best mode contemplated by the inventors for carrying out the invention; because of the subjective nature of this requirement, a common defensive litigation tactic has been to assert patent invalidity for failure to disclose the best mode. The America Invents Act removes that defense as a basis for finding the patent invalid or unenforceable.” (From Patent Reform on the Way by McNees Wallace & Nurick LLC) 

5.  “Prior Use” defense is significantly expanded…

“The Act expands the ‘prior use’ defense to infringement provided under 35 U.S.C. § 273 to commercial use of any type of invention (process, machine, manufacture or composition of matter) that occurred in good faith more than one year prior to the filing date of the patent in question. The practical effect of this provision is to provide a defense to parties who have been commercially using an invention as a trade secret… This provision is effective upon enactment of the Act and applies to any patent issuing thereafter.” (From President Obama Signs Off on Amendments to Patent Act by McAfee & Taft) 


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