How New Rules Will Impact Intellectual Property

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How New Rules Will Impact Intellectual Property

By Paula Bernier, Executive Editor, TMC  |  November 12, 2012

This article originally appeared in the November 2012 issue of INTERNET TELEPHONY

Patent disputes have become a central theme of the high tech world of late. Several final rules of the American Invents Act, many of which have to do with resolving patent disputes, went into effect on Sept. 16. I recently interviewed Edmund J. Walsh, shareholder and co-chair of the post grant proceedings group, and John Strand, counsel, at Wolf, Greenfield & Sacks P.C. on what’s important to know about the new measures.

A key goal of patent reform is to reduce the time and cost of litigation by enabling the Patent Office to play a more active role in determining the validity of patents in contentious situations, notes Walsh.

“Frequently, the validity of an issued patent is challenged in court where many hotly contested issues, often of marginal relevance to the technical merits of the patent, get injected into the process,” he said. “Congress perceives that the Patent Office can bring to bear technical skills and provide more limited proceedings that will lead to a more predictable result faster and at lower cost. Tech companies concerned with a competitive patent or application will want to consider the full range of options in light of these new rules.”

He goes on to say that the rules provide for Pre-Issuance Submissions, “which allows those concerned that the Patent Office will grant a patent based on a troubling patent application filed by a competitor to provide the Patent Office information about the prior art and explain why the claims in the patent application are not inventive in light of this prior art.”

A second proceeding, called Supplemental Examination, allows a patent owner to ask the Patent Office to review information and certify that the information would not have changed the decision to grant the patent, he says. And if it might have altered that decision, it would allow for reexamination of the patent.

Meanwhile, inter partes review rules allow challenges to issued patents based on prior art patents and printed publications, explains Walsh.

I asked Strand for his thoughts on the intellectual property case Samsung recently lost to Apple (News - Alert), and he said it is probably good for the tech industry and IP at large.

“Some people put this victory up as an example of why the patent system is broken, but I don’t see it that way,” said Strand. “Samsung (News - Alert) was represented by some of the best attorneys in the world and put forth every effort into invalidating Apple’s patents and defeating Apple’s claims – it was unable to do so. That result doesn’t show that the patent system is broken for the technology industry, but shows that the technology industry can successfully use many types of IP – utility patents, design patents, and trade dress protection – to protect their technology. Such an investment makes business sense to compete in today’s marketplace.” 

“As for Samsung, now it will be forced to go back to the drawing board on its products – but those designs will likely only be better because they will be forced to come up with something new and different from Apple,” he added.

Other important IP cases now pending, he says, include the Monsanto v. DuPont one in Missouri. In August, DuPont was found to willfully infringe on Monsanto’s patent, and the jury awarded Monsanto more than $1 billion in damages, says Strand, “even though DuPont never sold a single seed that infringed Monsanto’s patent.” 

Strand goes on to say that patent damage awards have become an area of focus in the past five years. The new America Invents Act doesn’t really change how patent damage awards are made, as any changes will have to come from the courts.

What the act does do, he says, is it changes fundamental aspects of patent law including a modified “first to file” system vs. a “first to invent” system.

“The IP landscape will likely look much different five years from now because of the America Invents Act,” he said.

Edited by Braden Becker