What should you know about the Patent Reform Act?
1. Rights to a patent will be determined by who filed first, not who first conceived the invention. To preserve patent rights inventors should consider filing one or more provisional patent applications very early.
2. Marking products with an expired patent is no longer a violation of the statute. Marking products not covered by a patent is still a violation, but only an injured competitor or the federal government can now bring suit.
3. It will be difficult for plaintiffs to sue multiple defendants in a single lawsuit. On the other hand, it will also be difficult for defendants to coordinate joint defenses.
4. Failure to disclose an invention’s best mode will no longer invalidate the patent.
5. Failure to obtain an infringement opinion of counsel cannot be used to prove willful infringement or an intent to induce infringement.
6. Third parties may challenge the validity of a patent in a Patent Office proceeding on any grounds.
7. The burden to prove invalidity in a Patent Office proceeding is by a preponderance of the evidence, rather than the higher burden used in courts.
8. No more “tax strategy” patents will be granted.
9. No patents will be granted on claims encompassing human organisms (but the Patent Office has long had this rule anyway.)
10. All patent fees will increase 15% immediately.
— Lawrence A. Husick, Esq.