Today, President Obama signed the America Invents Act, H.R. 1249, into law. The patent reform legislation took many years to pass, and contains significant changes to the United States patent laws. This post summarizes those that are most significant from a patent litigation perspective.
Post grant review procedure (regulations within a year). Within nine months after a patent issues, a third party may seek to cancel the patent’s claims. The patent may be challenged under any of the defenses relating to invalidity in 35 U.S.C. § 282(b)(2), (3) (as amended). The review petition must show it is “more likely than not” that at least one patent claim is unpatentable or that there is a “novel or unsettled legal question that is important to other patents or patent applications.” Any ground of invalidity raised or that reasonably could have been raised in the request for review may not later be asserted by the requester in a civil action if the review results in a written decision.
Inter partes review (revised regulations within a year). Currently, “reexamination” proceedings—in which the PTO takes another look at the patentability of an issued patent—frequently are requested during patent litigation. Now, these “inter partes reviews” will be more limited: They must be requested by an alleged infringer within a year after an infringement complaint is served, and they may not be requested if the alleged infringer has filed a civil action challenging the patent (this does not apply to counterclaims). These reviews are more limited than the post grant review (above) because only 35 U.S.C. §§ 102 (novelty) and 103 (nonobviousness) may be invoked as a basis for the review.
Joining multiple defendants (effective for lawsuits filed from now on). It has become common in some patent litigation for a plaintiff to name multiple unrelated defendants in a single lawsuit. Now, defendants may only be joined in a single lawsuit under circumstances where there are fact questions common to all defendants, and where the defendants are, for example, jointly or severally liable for the alleged infringement.
Advice of counsel (effective in one year). The courts recently have struggled with the evidentiary significance of an alleged infringer’s failure to obtain advice of counsel relating to the alleged infringement. Now, neither failing to obtain the advice nor failing to offer the advice at trial may be used to prove that the alleged infringer willfully infringed the patent or intended to induce infringement.
Prior user defense (effective for patents issued from now on). A new defense to patent infringement exists if the alleged infringer “commercially used” certain types of patented subject matter (“consisting of a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process”) more than a year before the patent was filed or the claimed invention was disclosed to the public.
Best mode (effective immediately). It no longer is a defense to patent infringement that the patent is invalid because the inventor did not disclose the “best mode” of practicing the invention. That defense is deleted from the statute.
Patent marking lawsuits (effective immediately). The patent reform legislation will shut down private qui tam actions for false patent marking, except for private litigants who have “suffered a competitive injury.” Solo Cup and others have been the subject of recent false marking lawsuits seeking $500 per false marking violation (for each Solo cup, for example).
First to file (effective in eighteen months). The first inventor to file a patent application will be entitled to a patent, bringing U.S. law in to line with that of many other countries. This “first to file” regime replaces the previous “first to invent” regime.