This is the second in a series on the America Invents Act (AIA).
1. Monitor and take steps to torpedo pending competitor patent applications
2. Request non-publication or early publication to prevent competitors from raining on your parade
Companies interested in depriving competitors of an opportunity to submit art for the examiner’s consideration might weigh the risks of third party submissions versus the benefits of foreign filings. A company willing to forgo foreign filings may file a non-publication request at the time of initial filing of a U.S. patent application. Absent a non-publication request, U.S. patent applications are typically published 18 months after filing.
When acquiring businesses or business lines, companies should consider including in asset purchase agreements and other acquisition agreements language assigning the right to assert the prior commercial use defense as to all processes, machines, manufactures or compositions of matter practiced by the seller in the U.S. on or before the effective date of the acquisition. Companies should also consider including language indicating motivations for assigning the business, as the AIA requires the transfer be for reasons other than transferring the right to assert the prior user defense. If an infringer pleads the prior commercial use defense and cannot demonstrate a reasonable basis for assertion, the AIA compels a finding that the case is exceptional, opening the door to an award of attorney fees.
4. Consider insisting on products “Born in the USA”