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New patent law doesn't cause waves for Missouri IP attorneys [Missouri Lawyers Media](Missouri Lawyers Media Via Acquire Media NewsEdge) When he's not bending the ear of deep-pocketed venture capitalists, St. Louis biotech entrepreneur Bob Puskas is writing patents. Puskas won't reveal the protein at the center of a blood test he's developing to detect eight major cancers, including ovarian and pancreatic cancer. His innovation is patent-pending -- and he expects it could generate billions in revenue. A revamped patent law signed by President Obama last month aims to streamline and speed up the patent process for inventors like Puskas. But a faster system cuts both ways. For Puskas, it means that once the U.S. Patent and Trademark Office grants his patent, he faces the expensive prospect of the nine-month period where outsiders can challenge his invention. "It makes smaller companies vulnerable earlier, when they have less capital to defend themselves," Puskas said. Still, like many elements of the new patent law, titled the America Invents Act, the changes aren't dramatic and bring the U.S. in line with patent law around the globe, said Ed Hejlek, a Bryan Cave attorney who has advised Puskas on his patents. "For anyone who files outside the U.S., this is already their reality," Hejlek said. "It's usually two to three years into the process before you really could be in a position to have a patent awarded. By then, most people are in a position to know whether it's really worth the investment or not." Likewise, the much-discussed "first to file" provision is "much ado about nothing," Hejlek said. Even under the U.S.'s prior "first to invent" standard for interference proceedings, secondary filers rarely, if ever, contested another inventor's patent application. "In 30 years of practice, I've been involved with three [interferences]," Hejlek said. "They all get resolved pretty quickly, and it's rare that the second to file is the one who prevails." Even so, the new law hammers home the importance of inventors filing early, said Ben Volk Jr., a partner in Thompson Coburn's intellectual property practice. "There's a strong motivation under the first-to-invent system to file as soon as you can," Volk said. "Earlier is better." To that end, Volk said he may conduct his customary searches for similar innovations after his client files that first provisional patent application. Under the old system, attorneys typically would scour the U.S. Patent and Trademark Office's archives for "prior art" before filing a client's patent application. That way, the client could get a lay of the land before spending more money on his own technology. "Under the new system, there's an encouragement not to waste time," Volk said. Prior user defense The new patent law extends an added protection to companies under an expanded prior user defense. Companies sometimes develop a technology, such as a software program, and opt not to patent it but simply use it internally as a trade secret. Those companies risk patent infringement actions filed by entities that end up patenting the same technology. In the past, those companies could wage a prior user defense, but the use of the defense was limited to certain types of patents, such as patents for a particular process. Under the new law, Volk said, prior user defenses can extend to machines or manufacturing items, not just processes. Decrease in litigation? Another element of the America Invents Act raises the possibility of decreased patent litigation. That's because the new law opens up a new administrative avenue for patent challenges raised during that nine-month period following the granting of a patent. Instead of heading to court to challenge the validity of a patent, petitioners instead can knock on the door of the U.S. patent office, in the form of the newly created Patent Trial and Appeal Board. This additional option is an added benefit to patent challengers, Volk said, because the patent office requires a lower burden of proof than if the same challenge was filed in court. It's a "more likely than not" burden instead of a "clear and convincing evidence" burden. "It may shift some litigation to the patent office," Volk said. "But the nature of the dispute is still going to remain the same. The venue will be a little different. "It's a new choice on the menu." Russ Jones Jr., who leads Polsinelli Shughart's intellectual property practice, said he's not too concerned about losing litigation work as a result of the new administrative route. If anything, Jones said, the administrative option offers patent infringement defendants a helpful trial strategy: Request a stay of a federal proceeding to ask the patent office to review the patent on its own turf and, hopefully, invalidate the patent. "Assuming [the judge] will stay the case, you have time to duke it out at the patent office," Jones said. "Only once that's resolved do you go back to the court." Jones said the administrative route will be especially helpful to financial institutions sued over check imaging software or online security processes. "Those kind of patents will be subject to this one provision when it takes effect" in a year, Jones said. Tricky trolls Another much-heralded aspect of the new law is aimed at stemming the litigious weapons wielded by so-called patent trolls. A new "dis-joinder" provision in the law forbids plaintiffs from suing 20 defendants in the same infringement suit. Lawmakers hoped ratcheting up filing fees and forcing plaintiffs to sue defendants in dozens of courts would curb wide-ranging infringement suits, Jones said. But so far, he said, the trolls have continued unabated. "It's only been a week and so far I'm seeing the plaintiffs' bar saying, 'If that's the way it is, we'll do it anyway,'" Jones said. "Plaintiffs so far are simply deciding to file multiple individual lawsuits. "It actually remains to be seen whether [the new law] will be an effective reducer of the volume of patent infringement suits." (c) 2011 ProQuest Information and Learning Company; All Rights Reserved. |