On September 16, 2011, President Obama signed into law the American Invents Act which makes the biggest changes to U.S. patent law in over 60 years.
What do you need to know about it?
- Rights to a patent will be determined by who filed first, not who first conceived the invention. To preserve your patent rights you should consider filing a provisional patent application.
- Marking products with an expired patent is no longer a violation of the statute. The cottage industry that grew up around false marketing claims is over.
- It will be difficult for plaintiffs (sometimes known as "non-practicing entities" or "trolls" to sue multiple defendants in a single lawsuit. On the other hand, it will be difficult for defendants to coordinate joint defenses.
- Failure to disclose an invention's best mode will not invalidate a patent.
- Failure to obtain an infringement opinion of counsel cannot be used to prove willful infringement (subjecting the infringer to punitive damages) or an intent to induce infringement.
- Third parties may challenge the validity of a patent in a Patent Office proceeding on any grounds.
- The burden to prove invalidity is by a preponderance of the evidence.
- No more "tax strategy" patents will be granted.
- No patents will be granted on claims encompassing human organisms.
- All patent fees will increase 15%.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
