New Patent Law Challenges Legal Departments

The America Invents Act, passed in 2011, represents the most significant reform of U.S. patent law since 1952, and it will dramatically reshape the way companies handle their patents.

The American Invents Act overhauls the U.S. patent system, exchanging it for a more streamlined and global standard. Companies may end up spending unnecessary money on filing fees unless they understand the reform and its new procedures.

Perhaps the most meaningful change is the switch from first-to-invent patent-rights law to a first-to-file system for patents filed on or after March 16, 2013. The result will probably be a significant increase in the number of provisional applications that are filed immediately after receiving invention disclosures, in order to definitively preserve rights. According to some observers, the new law will generate a decline in the number of infringement lawsuits.

The new law also codifies an interpretation of the rules that will nearly end the practice of naming multiple defendants in infringement lawsuits. It will be impermissible to join several defendants into a single lawsuit based solely on allegations that each has infringed the same patent, which is a common practice today.

While the implications of this revision are yet to be determined, there is sure to be a shift in the traditional role of litigation support. Companies may want to build out their internal legal team to handle patent infringement activity or enlist knowledgeable partners to better prepare for a new way of handling litigation.