On 5 December 2013, the U.S. House of Representatives voted to pass the Innovation Act (H.R. 3309 (here)). The bill seeks to amend the America Invents Act to address what is perceived as abusive behaviour by patent owners in infringement litigation.

The Innovation Act aims at transparency by requiring a plaintiff to disclose, at an early stage, considerable information including identification of patents allegedly infringed, claims infringed, process, machine or any products related to the infringement. Starting infringement proceedings should be harder than before, considering the increased amount of work to be undertaken before a hearing.

An unintended consequence is that making such allegations in certain European countries comes with a risk of a groundless threats action against the claimant in any relation to pre-proceedings contact with an alleged infringer. For example, Section 70 of the UK Patents Act provides for relief, in certain circumstances, against unjustified threats of action for patent infringement, although this is currently under review (UK Law Commission). In addition, while the German Patents Act contains no such provision, relief for groundless threats can be derived from the general provisions of the German Civil Code, as recently confirmed and restated by the Grand Senate of the German Supreme Court BGH (ZR 98/02). This recent BGH decision confirms that, in at least both Germany and the UK, the onus is currently on the patent owner to carefully consider the strength of a case before threatening court action.

If the Innovation Act is passed by the US Senate with these transparency provisions remaining in place, litigators should tread carefully!