IP Law Bulletin

The November 2011 edition of Nutter’s IP Bulletin features a number of articles dedicated to some of the most challenging and sweeping provisions of the Leahy-Smith America Invents Act (AIA) signed into law on September 16, 2011. This article highlights, and provides practical tips for coping with, a variety of miscellaneous, important AIA provisions that should not be overlooked by practitioners who may otherwise be focused on some of the more widely discussed provisions. The provisions discussed in this article include the best mode defense, citation of prior art in a patent file, false marking and virtual marking, inter partes review, inventor’s oath and declaration, supplemental examination, tax strategies in patent applications, and third party prior art submission.

The AIA provides different effective dates for different provisions. For each of the miscellaneous provisions discussed below, the effective date is provided, along with a brief summary of the provision and some practical tips for coping with the provision.

Best Mode Defense

Effective Date: September 16, 2011

Brief Summary: Failure to disclose best mode in a patent application is no longer a basis for invalidating a patent or rendering a patent unenforceable. (AIA § 15)

Practical Tips: While the AIA lessens the importance of best mode considerations following issuance of a patent, the best mode of carrying out an invention must still be considered during prosecution. 35 U.S.C. §112, first paragraph, requires that the specification of a patent application “shall set forth the best mode contemplated by the inventor of carrying out his invention.” Although best mode rejections during prosecution are rare, applications may still be rejected under 35 U.S.C. §112, first paragraph, on best mode grounds. It is therefore important to ensure that the inventor’s best mode of carrying out the invention is disclosed in a patent application despite the AIA taking the teeth out of best mode post-issuance.

Citation of Prior Art in a Patent File

Effective Date: September 16, 2012

Brief Summary: The AIA allows third parties to anonymously submit prior art or statements to be placed in the file of an issued patent for use in any future reexamination, inter partes reexamination, or post-grant review of the patent. In particular, new 35 U.S.C. §301(a) provides that “[a]ny person at any time may cite to the Office in writing – (1) prior art consisting of patents or printed publications which that person believes to have a bearing on patentability of any claim of a particular patent; or (2) statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim in a particular patent.” (AIA § 6, Ch. 32)

Practical Tips: This AIA provision could be a powerful tool in ensuring that certain prior art be considered in a reexamination or post-grant review proceeding for a particular patent. By monitoring patents issued to competitors and/or in a particular technical field, it may be possible to submit prior art that limits or invalidates a patent post-issuance without requiring civil litigation. Maintaining a well-indexed library or database of potential prior art and patentee statements can help quickly identify material that may be ideal for patent file submission.

False Marking and Virtual Marking

Effective Date: September 16, 2011

Brief Summary: The AIA provides that lawsuits can be filed based on false marking, i.e., physical marking of product/packaging with patent information, and, newly by the AIA, on virtual marking, i.e., product/packaging directing the reader to a publically accessible website providing a product’s patent information. However, the AIA removed qui tam remedies that previously existed and permitted any individual to file a lawsuit based on allegations of false marking, even if the individual was not harmed by such markings. Now only the United States can sue for false or virtual marking unless the plaintiff can prove a “competitive injury.” The AIA also provides that marking a product with a patent that covered the product but has since expired is no longer considered a marking violation. (AIA § 16)

Practical Tips: While it remains good practice to review products/packaging for the addition of valid patent marks and the removal of expired patent marks, the AIA lessens the sometimes very expensive consequences of unintentional false or virtual marking. Nevertheless, it is generally advisable to carefully monitor physical patent marks on your own products/packaging and your competitors products/packaging. By now allowing lawsuits based on virtual marking, the AIA appears to encourage periodic review of not just virtual patent marks on your own website to ensure its current accuracy, but the virtual patent marks on competitors’ websites for its current accuracy.

Inter Partes Review

Effective Date: September 16, 2012

Brief Summary: Inter partes review replaces inter partes reexamination as of the effective date, thus changing 35 U.S.C. § 311. Inter partes review allows a third party to request review of any U.S. patent for double patenting, 35 U.S.C. §102, and/or 35 U.S.C. §103 reasons.  The request will be granted if there is a “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged.”  (AIA § 6, Ch. 31)

Practical Tips: If any patents are identified as candidates for inter partes reexamination prior to September 16, 2012, it would be advisable to consider whether the rules of inter partes reexamination or the new rules of inter partes review would be more beneficial to the requestor of reexamination, and file the request on the appropriate date. The AIA details numerous requirements and procedures for inter partes review that should be consulted in making such a determination. The implications of inter partes review should likewise be weighed against post-grant review when a patent first issues or reissues and litigation.

Inventor’s Oath and Declaration

Effective Date: September 16, 2012

Brief Summary: The AIA changes the current inventor’s oath and declaration practice, namely by 1) not requiring the inventor’s oath and declaration to identify inventor citizenship, 2) requiring a statement that “the application was made or was authorized to be made” by the affiant/declarant, and 3) allowing the inventor’s oath and declaration to be made in an Assignment of Record.  (AIA § 4)

Practical Tips: The AIA should generally not have much effect on current oath/declaration and assignment practices. However, this AIA provision can make the preparation, execution, and filing of formal papers easier. For applications filed on or after September 16, 2012, in which an assignment is desired, paperwork can be reduced by combining an inventor’s oath and declaration with the assignment.

Supplemental Examination

Effective Date: September 16, 2012

Brief Summary: New 35 U.S.C. §257 provides that a “patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish.”  (AIA § 12)

Practical Tips: Following this provision’s effective date, it may be advisable for patent owners to review their issued patents for any incorrect information that may be appropriate to correct through supplemental examination. Supplemental examination may be used to cure various ills of a patent that would otherwise prove burdensome, if not fatal, during any subsequent litigation involving the patent. For example, supplemental examination may be requested to have a reference reviewed that was not cited during prosecution in anticipation that a third party might assert that reference in an inequitable conduct claim. It is important to note that once a reference has been asserted in a civil action for purposes of alleging unenforceability of a patent, the reference is no longer eligible for consideration using Supplemental Examination.

Multi-Party Patent Infringement Lawsuits

Effective Date: September 16, 2011

Brief Summary: 35 U.S.C. § 299(a) only permits multiple defendants to be included as parties in a lawsuit under very limited circumstances. In order for there to be multiple defendants, the patent owner must seek to hold the defendants jointly or severally liable, or the relief sought from all of the defendants must arise out of the same transaction, occurrence, or series of transactions or occurrences relating to the alleged infringing acts involving the same accused products or process. The party bringing the lawsuit must further allege that there are questions of fact common to all accused infringers. (AIA § 19)

Practical Tips: This provision was primarily directed at curtailing patent infringement lawsuits brought by “patent trolls” or non-practicing entities. Prior to enactment of the AIA, a single party could lump a host of alleged infringers in a single lawsuit in an attempt to save costs. Following the announcement of this provision, a number of last minute multi-party defendant lawsuits were brought prior to the effective date. It is anticipated that the number of lawsuits brought by “patent trolls” or non-practicing entities may be reduced in light of this provision. However, if a patent owner does meet the provisions now provided for in 35 U.S.C. § 299, the party should feel comfortable in alleging patent infringement against multiple parties.

Failure to Obtain or Present an Opinion of Counsel

Effective Date: September 16, 2012

Brief Summary: Recent Federal Circuit decisions regarding how the failure to obtain an opinion of counsel in a patent infringement case should be treated were codified in 35 U.S.C. § 298. In particular, § 298 states that “[t]he failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.” (AIA § 17)

Practical Tips: This provision does not change the status quo in light of recent Federal Circuit decisions. Thus, although the failure to obtain the advice of counsel, or present such advice to the court or jury cannot be used to proved willful infringement, it remains a factor that can be considered in making a willfulness determination; it just cannot be the sole factor for arriving at the conclusion of willful infringement. Further, obtaining advice of counsel may still be prudent in a number of situations, such as to provide exculpatory evidence and to obtain the desired peace of mind prior to launching a product.

Tax Strategies in Patent Applications

Effective Date: September 16, 2011

Brief Summary: All tax strategies are deemed to be within the prior art, regardless of whether the strategies were “known or unknown at the time of the invention.” A “tax strategy” as defined by the statute includes “any strategy for reducing, avoiding, or deferring tax liability.” The AIA provides for two exceptions: 1) the part of an invention “used solely for preparing a tax or information return or other tax filing,” and 2) the part of an invention “used solely for financial management, to the extent that it is severable from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax advisor.” (AIA § 14)

Practical Tips: The AIA strictly curtails reliance on a tax strategy for patentability by deeming all tax strategies within the prior art. It is therefore important to carefully consider before filing a patent application, and during prosecution of applications pending on or after September 16, 2011, whether novel and/or nonobvious subject matter other than a tax strategy is disclosed and can be claimed. It is also important to remember that this AIA provision does not necessarily allow all tax strategies to be made, used, or otherwise practiced without fear of patent infringement. This AIA provision only applies to applications pending on or after September 16, 2011, and to patents issued on or after September 16, 2011. Patents issued before September 16, 2011, and claiming tax strategies may therefore be enforceable.

Third Party Prior Art Submission

Effective Date: September 16, 2012

Brief Summary: New 35 U.S.C. §122(e) allows “[a]ny third party” to submit prior art “for consideration and inclusion in the record” of any pending patent application provided that various conditions specified in the statute are met. Some of the conditions relate to a time window for third party prior art submission, which must be made before 1) a Notice of Allowance has been given or mailed, or 2) the later of 6 months after the date of publication, or the date of first rejection of any claim in the application by the Examiner.  (AIA § 8)

Practical Tips: This AIA provision could be a powerful tool in limiting, curtailing, or delaying issuance of others’ patent applications. By monitoring patent applications filed by competitors and/or in a particular technical field, it may be possible to submit prior art during prosecution that prevents, limits, or delays issuance of a patent application that may be potentially problematic, i.e., for infringement reasons. Maintaining a well-indexed library or database of potential prior art can help quickly identify prior art that may be ideal for third party prior art submission. Such a library or database may be particularly beneficial for in-house prior art such as publically available product brochures and conference presentations that a patent examiner may not be able to find as easily as patents and articles. Because the AIA only allows prior art to be submitted by a third party within a limited time window, any procedures to monitor and review newly published, newly allowed, and newly rejected patent applications should be time sensitive. While this AIA provision ultimately benefits patent applicants by helping to ensure that the best prior art is considered during prosecution, this AIA provision could also be a time-consuming nuisance to patent examiners and to patent applicants if prior art is submitted by a third party. However, the nuisance effect may be limited because, unlike the AIA provision related to third party submission of prior art for issued patents, the AIA does not provide that third party submission of prior art for pending patent applications can be made anonymously.

This article strives to provide an overview of various AIA provisions. For a complete understanding of these and other provisions of the AIA, and how they may affect your patent prosecution and litigation strategies, consult the text of the AIA and your legal counsel.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.