The America Invents Act, signed by President Obama on Sept.16, significantly altered the landscape of patent enforcement for businesses and inventors. In an effort to streamline the patent dispute process, the bill provides incentives designed to make it more desirable to keep challenges within the U.S. Patent and Trademark Office. These incentives limit, but don’t remove, what have been perceived as abuses that needlessly exacerbated the time and expense of litigation.
So, in essence, this means that patent owners and challengers have more strategic options for patent reviews throughout the life of a patent.
Businesses willing to monitor competitive patent activity can use settlements, coupled with the new ability to challenge threatening patents, for almost any reason as a new tool for managing risk. The ability to settle makes these proceedings more like “oppositions,” that are frequently used in other countries for retiring—or at least clarifying—risks from patents before an active dispute arises.
This ability to manage risk is enhanced by a change in the threshold requirement for initiating post-grant review in combination with an expanded ability to provide prior art to an examiner, even before a competitive patent is issued. The changed threshold removes the requirement for a post-grant challenge to raise a “new” question and, instead, allows prior art that an examiner considered but perhaps misunderstood to be a basis for a post-grant challenge. There is now more upside, and less downside, to providing prior art to an examiner that may block issuance of an overly broad competitive patent.