Practice Tips Under the Patent Reform Rules 

September, 2011 - Dustin T. Johnson, J. Andrew Lowes, Jeffrey A. Wolfson

The long anticipated America Invents Act (the “Act”) was signed into law today. However, given that certain provisions of the Act are now in effect while others do not come online until March 16, 2013, innovating companies and individuals should consider the impact and timing of those provisions on their overall patent strategy. Below is a link to some practice pointers and strategic tips you may want to consider when operating under the Act. As for the provisions that are immediately effective, you should be aware that: (i) joinder of defendants in an infringement action is limited to parties accused jointly, severally, or in the alternative with respect to or arising out of the same transaction or occurrence and have questions of fact common to all defendants; (ii) a reasonable likelihood that the requester will prevail is now required to institute inter partes reexamination; (iii) a competitive injury is now required for false marking suits, except by the government; and internet-based patent marking is now sufficient notice even retroactively; (iv) accountants everywhere can relax now that tax patent strategies are no longer patentable; and (v) the “best mode” of carrying out the invention is no longer a basis to invalidate a patent even though the statutory requirement still exists. The other virtually immediate impact is that Patent Office fees will have a 15 percent “transitional” surcharge as of September 26, ten days from now. The timeline below provides some important effective dates for certain significant provisions of the new law. Click here for a printable version of the below timeline.

Many other changes have been made concerning inventor declarations, the availability of documents as prior art, certain defenses to patent infringement, the establishment of fees and other aspects of patent law. A full copy of the legislation is available here. In addition, the U.S. Patent and Trademark Office (“USPTO”) has provided a useful overview of certain provisions here. The USPTO has already been working hard to prepare various proposed rules for public notice and comment, as the Act will require substantial new rulemaking within one year of enactment. While many question whether the Act will create 200,000 new jobs as publicized, it is unquestionable that it significantly overhauls U.S. patent laws and impacts how businesses and individuals should think about protecting technology today.

Innovating companies and individuals will want to consider and develop strategic plans going forward to best maintain and build protective barriers around their technology. A number of the most significant changes are set forth in this alert, along with their effective dates and some potential strategic implications. To read the full alert, click on the PDF linked below.

PDF - Alert - Patent_Reform_Rules.pdf

PDF - Timeline - Patent_Reform_2011.pdf

If you have any questions regarding these matters, please contact one of our patent attorneys.

J. Andrew Lowes
[email protected]

Dustin T. Johnson
[email protected]


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