The New Patent Amendments
President Obama has signed into law the America Invents Act. This Act represents a substantial change to past U.S. patent law. Some changes in the Act take effect immediately, while others will be phased in over time. Patent filing and prosecution is effected, as well as litigation.
The White House Announcement is here: http://www.whitehouse.gov/the-press-office/2011/09/16/president-obama-signs-america-invents-act-overhauling-patent-system-stim
The immediate changes include:
Standard of Review for Reexamination of Patents: Effective immediately, the standard for granting a request for reexamination of a granted patent will change from whether a “substantial new question of patentability” exists to whether there is a “reasonable likelihood that the requester would prevail” regarding at least one claim in the patent.
Statutory Fees: A new additional examination fee paid at the time of filing are payable, and will result in expedited examination and a 75% discount filing fee is established for universities and small entities meeting certain qualifications.
Best Mode Defense: An allegation that the “best mode” for practicing an invention is not disclosed in a patent is no longer useable to invalidate a patent.
Marking: A new “virtual marking” option is now available, which would allow patentees to mark a product with an internet address, at which a listing of patents covering that product can be found. Additionally, false marking suits can only come from someone who has actually suffered a “competitive injury” as a result of the false marking violation.
Subject Matter Bans: A patent can no longer pursue patent claims directed to the subject of (i) human organisms; and (ii) tax strategies.
Joinder of Defendants: The ability for a plaintiff to join multiple unrelated defendants in a litigation will be limited in certain cases. This is expected to affect “troll” actions where one patent owner files against many defendants.
The future changes include:
First to File: Within one year, the U.S. will change to a first to file jurisdiction, consistent with many other countries. Until now the inventor has been considered the first to conceive of the idea, “the first to invent” rather than the first to file a patent application.
Post Grant Review: Nwe post grant review proceedings will expand the type of challenges available to allowed patents.
Derivation Proceedings: A new type of patent office proceeding will be made available which will effectively replace interference proceedings.
Supplemental Examination: A new examination procedure will be available in which prior art can be considered by the USPTO after a patent has been granted, and which would address potential allegations of inequitable conduct with respect to that prior art in subsequent litigation.
One important thing to note about the “first to file” rule is that in most foreign countries, the rule is also that the invention may not be disclosed prior to a patent being filed. Until now there has been a one-year safe harbor for filing up to a hear after a patentable idea has been disclosed. The one-year period will have limitations, making it more likely that inventors will have to file before disclosure.
