The Patent Reform Bill passed this year drawing a collective “Huh!” from the legal community, most of who believed that this would never happen in their lifetime. The burning questions now are: what does the act really mean? How will it impact litigation and innovation? How quickly are these changes being implemented? In this article, we provide you with a quick cheat sheet of the newly implemented or newly modified provisions of the ‘America Invents’ Act so you can stay on top of your innovation.
Key issues have been discussed in prior editions of this newsletter. Our focus here is what goes into effect now. Some provisions take effect immediately. Others will take effect only next September. Here's a rundown: Provisions effective immediately False Marking: Only the U.S. government can sue for statutory damages, although persons who have suffered a "competitive injury" from false marking can bring a civil action for damages "adequate to compensate for the injury." The new law provides that marking with an expired patent is not a violation of the statute. This means that virtually all pending false marking suits will need to be dismissed once the law is enacted. Defense to infringement: A defense can be raised in a patent infringement case based on prior commercial use if the commercial use that would otherwise infringe a claimed invention occurred one year before the filing date of the application of the patent. Joinder of Defendant: The new law will limit the circumstances for joining defendants in patent infringement cases. Best Mode no longer a Defense: A failure to describe the "best mode" to make or use the invention in a patent application will not be a basis for invalidating a patent or ruling a patent unenforceable. This will be applicable to new cases only. Reexamination: For new requests for reexamination, the standard for reexamination will change from "a substantial new question of patentability" to "a reasonable likelihood that the requestor would prevail" with respect to at least one of the challenged claims. Patent Scope: For pending applications, patents will not be granted to "tax strategy patents" or to claims encompassing human organisms. Fees Raised: a 15-percent surcharge will be added to all patent-related fees, including patent maintenance fees. The USPTO will be authorized to proceed with its "Track I" program for fee-based prioritized examination, and to charge a $4,800 fee for large entities ($2,400 for small entities). Effective in 1 year after enactment: Post-Grant Review: Under a new Chapter 32 (35 U.S.C. § 321. Post-grant review), there will be a nine-month window for challenging a patent on any ground, including 35 U.S.C. § 112. Chapter 32 takes effect in one year. Inter Partes Review: Under a new Chapter 31, patents can be challenged on the basis of patents or printed publications only, after the window for post-grant review has passed. Chapter 31 takes effect in one year. Review may be granted upon a showing that the petitioner has a reasonable likelihood in prevailing that at least one of the challenged claims is patentable. First-to-File Provisions: The new law will only retain a limited one-year grace period for filing an application after a public disclosure made by the inventor or somehow through the inventor. If the disclosure was made from somebody other than the inventor then the inventor will not be able to get a patent. Derivation Proceedings: A Derivation petition may be filed only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim.Interference proceedings will continue to be available to earlier applications under the old version of § 135.