For decades patent law was more likely to be described as arcane than trendy. But much has changed.
We are now a technology- and knowledge-based economy, and tech culture is cool. For many of our best known companies, patents have become critical for survival as patent rights have become historically stronger and patent litigation strategies have become more sophisticated. The growing importance of patents in the technology economy has spawned new business strategies for exploiting the incredible power of the patent and turning the playing field upside down on competitors in some cases.
Over the last two years, the field of U.S. patent law itself has been flipped upside down as well. On Sept, 16, 2011, President Obama signed into law the America Invents Act (AIA). The AIA represents the most significant reform to the U.S. patent system in nearly 60 years. As of March 16, 2013, all provisions of the new law have been implemented and are in full force and effect.
The AIA has fundamentally changed the rules for securing and enforcing patent rights. Most significantly, the AIA changed the U.S. patent system to a first-inventor-to-file system, bringing it more in line with the rest of the world. The AIA generally provides that the inventor who files a patent application for an invention first will be entitled to the patent, regardless of whether someone else actually was the first in time inventor. While this is the general rule, the AIA does provide for exceptions to prevent abuse and to continue the uniquely American 12-month grace period, which allows an inventor to test the market without jeopardizing their ability to obtain patent protection, as long as an application is filed within 12 months of the initial public disclosure. However, the nuances of when the grace period may apply are full of pitfalls for the unwary, and some will be unknown until the details of the AIA are tested in the courts.
The AIA also provides several new procedures for third parties to challenge the validity of a granted patent without having to bring suit in federal court. Two of these new procedures, post-grant review and inter partes review, enable a petitioner to present evidence to the United States Patent and Trademark Office (USPTO) in support of why a patent should not have issued, and if the evidence meets a defined threshold, the USPTO will reexamine the patent based on that evidence. As with the first-inventor-to-file provisions, timing is important. The post-grant review process allows for a greater variety of evidence and a broader range of potential issues to be challenged, but post-grant review is only available for a nine-month period after a patent issues. Consequently, would-be challengers need to be tracking the patenting activities of their competitors and acting quickly to take full advantage of these new tools.
The AIA has further provisions that relate to: unpatentability of tax strategies and human organisms, false patent marking litigation, patent infringement defenses, fee reductions for certain filers, fee increases for others and supplemental examination of a patent to correct errors that occurred during prosecution. And the changes keep coming as Congress has passed and is considering a number of measures to tweak the details of this expansive and revolutionary reform of the U.S. patent system. For a more complete overview of the AIA, please click here.
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