On September 16, 2011, President Obama signed into law the Leahy- Smith America Invents Act. Highlights of the changes to U.S. Patent Law include the following:1

FIRST INVENTOR TO FILE

On March 16, 2013, the U.S. patent system will switch from a first-toinvent system to a first inventor-to-file system, although applicants will still have a one year “grace period” for some of their own disclosures. Under the new law, certain disclosures may be used to antedate a publication or patent filing. For instance, a public disclosure of an invention by Company A might be prior art against a subsequently filed patent application by Company B, but not against Company A’s even later-filed patent application. Further, Company A might rely on its own public disclosure to overcome the prior art effect of Company B’s patent application filing. Best practices under the new laws will be to file patent applications earlier rather than later.

CHALLENGING ANOTHER’S PATENT OR APPLICATION

Available options to challenge another’s patent or application are updated to include:

  • Prior Art Submissions against pending patent applications are permitted for a lengthier time window, effective September 16, 2012. Third parties are able to submit prior art against pending applications before the earlier of (1) a notice of allowance or (2) the later of (i) six months from publication or (ii) a first rejection. This may provide a cost effective way to prevent a patent from issuing or limit the scope of that patent.
  • Post-Grant Review is available as of September 16, 2012 and provides a nine month window to challenge the validity of a granted or reissued patent based on failure to meet a condition of patentability.
  • Inter Partes Review is available as of September 16, 2012 and allows for patent challenges after the window for Post-Grant Review has passed or after an actual Post-Grant Review. This works similarly to Inter Partes Reexamination, which is being phased out, and is limited to patents and printed publications.
  • Derivation Proceedings become available as of March 16, 2013 to correct the inventorship of a patent application or patent. Derivation Proceedings will replace Interferences.

 

SUPPLEMENTAL EXAMINATION

Patent owners can request Supplemental Examination as of September 16, 2012 to address issues that might render the patent unenforceable, for instance, inequitable conduct arising through failure to disclose prior art.

PRIOR ART EXPANDED

As of March 16, 2013, a number of previously existing timing, geographic and English-language distinctions for prior art are eliminated, broadening the scope of available prior art.

PRIOR COMMERCIAL USE DEFENSE

The Prior Commercial Use Defense to patent infringement is broadened to include commercial use involving a machine, manufacture or composition of matter. Previously, the defense was limited to instances involving methods. This is operative for patents issued on or after September 16, 2011.

ADVICE OF COUNSEL

As of September 16, 2012, failure to present a noninfringement or invalidity opinion cannot be used to prove willful infringement or inducement. Still, a properly formulated opinion can be an important part of a defense strategy and valuable to reduce the risk of enhanced damages or inducement.

BAR AGAINST MULTIPLE UNRELATED DEFENDANTS

For suits filed on or after September 16, 2011, multiple accused infringers may only be joined as defendants if they may be jointly liable, or, alternatively, with respect to common acts or events and questions of fact common to all defendants. This part of the law prevents patent owners from collectively suing a variety of unrelated defendants in a single lawsuit.

NO MORE INVALIDITY FOR LACK OF BEST MODE

As of September 16, 2011, failure to describe the best mode was removed as method to invalidate a patent.

LIMITED STANDING FOR FALSE MARKING CLAIMS

As of September 16, 2011, only persons who suffer a competitive injury can bring false marking suits. Previously, any member of the public could bring a false marking suit. This change applies retroactively.

VIRTUAL PATENT MARKING

As of September 16, 2011, virtual patent marking became available, allowing marking with the word “patent” together with an Internet address with content associating the patented article with the patent number.