Friday, September 16, 2011
No surprises here, but now its official. President Obama has signed the America Invents Act and has now officially brought us patent reform. As of today, the old qui tam false marking cases are dead. As of today, multi-defendant patent cases will be less frequent. As of today, the clock is ticking to when the other significant provisions of the new law go into effect. If nothing else, it should be interesting. Stay tuned.
Thursday, September 15, 2011
I didn't get around to writing up a summary of the changes that are coming when H.R. 1249 gets the President's signature this week. Fortunately, many others have. Here is a link to one such write up put together by Ken Levitt and Ryan Fortin in Dorsey's Minneapolis office. Thanks guys!
One of the many features of the America Invents Act, is a new statute addressing joinder in patent cases. (Added as 35 U.S.C. 299). Under this new section of the Patent Act, a plaintiff will no longer be able to group unrelated defendants together simply because they are accused of infringing the same patent. Once President Obama signs the patent reform bill into law (which is expected to happen tomorrow), there will need to be a legitimate factual nexus among the various defendants – which in most cases will require making, using or selling the same product.
What this means for plaintiffs’ is that in more cases than not, new cases will have only one defendant per complaint instead of the large collection of defendants that are now common in most patent cases. This won’t stop the case from being filed, of course, but will result in a modest increase in transaction costs for filing a complaint since for 10 defendants a plaintiff will need to file 10 complaints and pay $3500 in filing fees instead of $350. (We should expect to see a spike in the number of patent cases filed next year, since the “typical” case filed recently will now require multiple filings). This change should also make it easier for individual defendants seeking to transfer the case from a venue that it has little or no connection to, since (in theory) it no longer needs to consider the potential ties other defendants may have to the plaintiff’s chosen forum. On the downside, it may also make the logistics of joint defense groups slightly more complicated as defendants’ will need to coordinate across a number of related cases instead of acting within a single case. (As a practical matter, I expect that most judges will likely be inclined to consolidate the related cases at least for purposes of discovery, minimizing the logistical complications.)
So, what are the unintended consequences referred to in the title of this post? It may be coincidence (if you believe in such stuff), but the number of multi-defendant cases filed since the Senate passed the patent reform bill seems unusually high. PriorSmart litigation alerts so far this week show 88 new complaints with 515 defendants, including today's report of 18 new complaints against a whopping 196 defendants. It looks like plaintiffs are racing to the court house to get there last multi-defendant complaints filed before President Obama signs the bill into law and changes the rules of the game. No one is being sued who wouldn’t eventually be sued anyway, but they may be seeing the lawsuit a bit sooner. Welcome to the brave new world of patent reform.
Wednesday, September 14, 2011
Patent reform is now a reality. The bill is in the hands of
President and it’s
expected that it will be signed into law on Friday. One of the significant and controversial changes
in the America Invents Act is that patents will now be awarded to the first
inventor to file, rather than the first inventor. Every time first-to-file has been proposed
for the U.S., many commentators would cry out that first-to-file is bad for
small companies and individual inventors since large corporations have the
resources needed to get applications on file fast. Clearly, big corporations have financial
resources, but does that really mean that they have an edge in a first-to-file
In a race to the patent office, speed and agility will be at a premium. Currently at many large companies, the large budget – those resources that the commentators all fear- comes with a price. Layers of corporate bureaucracy make the process from invention to filing fairly long. Many months, sometimes years may pass before an application is filed. For these large companies to succeed in a first-to-file paradigm, the process currently used to identify inventions, gather and evaluate invention disclosures from inventors, approve a disclosure for filing, prepare the application, and approve the application for filing need to be reviewed and streamlined. These companies are currently built for power, not speed, and need to change their thinking or suffer a disadvantage in the first-to-file system.
In contrast, small companies, should be able to move quickly to get applications for important inventions on file. Budget will, of course, play a part in the decision to move forward, but its certainly not the only (or main) factor that will determine who has the advantage in the new first inventor to file paradigm. The reduced patent office fees available for small entities, the strategic use of provisional patent applications, and a lower cost “Track 3” filing system that will be rolled out by the patent office that will allow applicants to pay a lower fee to file while deferring examination for a later date, should provide small entities with the tools needed to insure that the first inventor to file system serves them well.
In short, I don’t believe that the first inventor to file system will inherently favor big entities over small. It will ultimately favor those that adapt best to the new system. Ladies and gentleman, start your engines – the race to the patent office is on.