It is a major overhaul of the country’s patent system. The America Invents Act, which was signed into law Sept. 16, dramatically changes both patent prosecution and patent litigation.
“This legislation is a big deal no matter how you slice it,” says James Mullen, a partner at Morrison & Foerster.
The new law will change patent litigation in a variety of important ways—almost all of which will aid alleged infringers. For starters, the law prohibits a patentee from suing multiple defendants in one lawsuit merely because the defendants allegedly infringed the same patent. Joinder will be allowed only when defendants allegedly are liable “jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions.”
On the other hand, it will be harder to obtain an inter partes review. The Patent Office granted the old inter partes re-examination if a movant could show a substantial new question of patentability. “It was a pretty broad standard. It was easy to get a review,” says Yar Chaikovsky, a partner in McDermott Will & Emery. The Patent Office will grant the new inter partes review only if a movant can show a “reasonable likelihood” of proving at least one of the challenged claims invalid. “That’s a big difference,” says Chaikovsky.
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