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What All GCs Should Know About the America Invents Act

By Stephanie Rabiner, Esq. on February 09, 2012 | Last updated on March 21, 2019

It's been a little over four months since Congress enacted the America Invents Act, yet the patent reform law is already making its mark.

Courts have rejected a number of false marking lawsuits, and others have severed multiple-defendant litigation. The U.S. Patent and Trademark Office has also issued notices of proposed rulemaking, asking for commentary on the reexamination process and genetic testing.

The Act is ultimately expected to change U.S. patent litigation, particularly in the following ways.

1. Multiple filings. On March 16, 2013, the U.S. will become a first-to-file nation. As a result, lawyers will need to file early and often. It'll also be important to update provisional filings when any significant improvements are made.

Publicly available prior disclosure has replaced novelty and obviousness as the new statutory bar.

2. Prior art. Speaking of public disclosure, prior art has become more important under the America Invents Act. Prior art searches must include foreign patents, prior-sale and prior-use, including those dated less than a year before filing.

3. False marking lawsuits will disappear. The America Investments Act destroys almost all false marking claims by requiring plaintiffs to prove actual competitive injury, explains Reuters. Inventors will also be unable to bring a claim based solely on marking with an expired patent number.

Overall, such actions will become unprofitable.

4. Stricter joinder requirements. Congress has made it more difficult to join and consolidate patent suits against multiple infringers. Plaintiffs will now need to prove all claims result from the same "transaction or occurrence."

5. Supplemental examination. Patent owners will be able to ask the USPTO to "consider, reconsider or correct" relevant information post-grant. The procedure will act as a sort of "cleansing," according to Reuters. Reexamination can prevent some future claims of unenforceability.

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