Newsletter

Vol. 01 No. 06

Paul Remus Named IP Super Lawyer 2011

We are pleased to share the news that Paul Remus was again named a Super Lawyer in Intellectual Property by New England Super Lawyers Magazine.  He is the only patent lawyer in Northern New England so named.

The “America Invents Act”:  Substantial Changes To U.S. Patent Law

The “America Invents Act” (AIA) was signed into law on September 16, 2011.  Several years in the making, the AIA represents the first major reform of patent law since 1952.  It amends Title 35 of the United States Code (the “Patent Act”) with the stated goal of encouraging innovation

Implementation of the AIA will occur in a staged manner.  Many of the provisions of the AIA will become effective one year from signing.  However, some provisions will take effect immediately while others are to be implemented 18 months from now.

Listed below are some of the key provisions of the AIA and their effective dates:

• Patent Priority Is Now Determined By A “First-to-File” Rule

   

  One of the most significant provisions of the AIA is the conversion of United States patent law from a “First-to-Invent” rule to a “First-to-File” rule.  This conversion to the “First-to-File” rule is effective March 16, 2013.

  Most countries employ a “First-to-File” rule, awarding a patent to the first party who files an application for the invention, even though another party may actually have invented it first.  The United States has been unique in awarding patent priority to the first inventor to conceive of the invention and to diligently reduce the invention to practice (a “First-to-Invent rule”) rather than awarding priority to a later inventor who files first.  Under the AIA’s new provisions, the first party to file an application generally has priority, bringing United States patent law more into line with patent law of other countries.

  The AIA maintains a one-year grace period, wherein the first inventor to publicly disclose the invention has one year to file a patent application.  Prior to the AIA, an inventor was required to file a patent application within one year from the date the invention was described in a printed publication, in public use, or offered for sale or sold in the United States by anyone.  Under the AIA, this one-year grace period is limited to public disclosures by the inventor.

• New Procedures for Challenging Patents

   

  The AIA creates two new USPTO review procedures for challenging the validity of a patent.  Prior to the new law, the two providers for challenging validity were ex parte and inter parte reexaminations.  They required that the reexamination be based on issues of novelty or obviousness.  The effective date of the two new review procedures (post-grant review and inter partes review) is September 16, 2012.  Inter partes review remains limited to issues of novelty and obviousness; however the scope of post-grant review is much broader.

  Post-grant review may be initiated by any person other than the patent owner within nine months of the issuance of the new patent or reissued patent.  Post-grant review may be used to challenge patents on any statutory ground for patentability.  A panel of three Patent Trial and Appeals Board judges will conduct the post-grant review and must issue a final determination within one year (subject to a six month extension for good cause).  Post-grant review should provide an attractive option for challenging a patent’s validity by offering a procedure that is more encompassing than reexaminations under the prior law, but faster and less expensive than court actions.

  Inter partes review replaces the existing inter partes reexamination procedure with a review process that incorporates nearly all of the procedural features of post-grant review.  The two main differences include: challenges are limited to issues of novelty and obviousness, and the threshold test for initiating an inter partes review is “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition."

• Infringement Suits Against Multiple Defendants

   

  The AIA prohibits infringement suits naming multiple, unrelated parties as defendants in a single action.  These types of suits have commonly been used by plaintiffs that are non-patent practicing entities.  Under the new law, plaintiffs cannot join multiple parties as defendants unless they are selling the same accused product or process, and questions of law or fact common to all defendants will arise in the infringement suit.  Requiring individual suits will likely increase plaintiff’s costs, and subject plaintiffs to the risk that a finding of patent invalidity in one suit will negatively affect subsequent infringement suits.  This provision is applies to all suits filed on or after September 16, 2011

• Fee Changes

   

  The AIA authorizes the USPTO to increase all fees by 15% ten days after the Act is signed into law.  In response, the USPTO has announced a new fee schedule, effective as of September 26, 2011, where almost all fees have been raised by 15%.

  The AIA also authorizes a 75% reduction in most fees for a new category of “micro entities.”  This new “micro entity” category includes applicants having a gross income less than three times the median household income for the preceding calendar year and institutions of higher education.  This provision becomes effective on September 16, 2011.

  The AIA also introduces a $4,800 fee (in addition to all regular fees) for expedited examination of non-provisional utility or plant patent applications.  Prioritized examinations under the AIA are initially limited to 10,000 applications a year, and the new law becomes effective on September 26, 2011.

For more information on these topics or intellectual property in general, please contact

Paul C. Remus at premus@devinemillimet.com
Kimberly A.W. Peaslee at kpeaslee@devinemillimet.com

This Newsletter is prepared as a service to clients and other friends of Devine, Millimet & Branch to report on recent developments.  The information contained herein is general and should not be relied upon as legal advice.

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