epi - European Patent Institute

86 Articles Information 3/2012
panies who choose to employ “virtual marking”
should retain proper records of any changes to patent
information on their website, and may wish to consider
use of a separate party to document such
changes.
– Deceptive Intent Will No Longer Provide an Automatic
Defense: Infringement actions can still be maintained
even with an invalid claim based on deceptive intent
because there is no statutory basis for invalidating the
remaining claims where the subject patent contains
an invalid claim and where “deceptive intent” has
been proven.
– Understand the Joinder and Venue Changes: The AIA
relieves certain unrelated defendants from having
infringement claims against them being automatically
joined in actions in distant court venues because now
only related parties may be joined as defendants in a
common suit. Other actions may require new venues
depending on the action at hand, such as venue
changes for actions under 35 U.S.C. §§ 32, 145, 146,
154 (b)(4)(A) and 293.
– Consider Whether a Prior Commercial Use Defense
Exists: Importantly the AIA expands the prior commercial
use defense to more than just business
method patents and is therefore more akin to many
national defences and exclusions in Europe. Where
commercial use existed more than one year prior to
the effective filing date or earliest publication of an
asserted patent, the defendant now has a defense.
Note that the scope of “commercial use” is quite
broad, and may even encompass activities such as
work in a non-profit research lab and pre-marketing
regulatory review.
– Litigation May Increase in New Areas: Expect uncertainty
in many of the definitions and rules present
herein. In the same vein, expect forthcoming litigation
to define a whole new set of patent statute terminology.
Conversely, while some litigation may decrease
given the new post-grant processes under the AIA,
such processes may represent a new form of “litigation”
and indeed, some of these proceedings may
involve appeals to the federal courts.
VII. CONCLUSION
Despite the numerous changes described herein, the
revisions in both prosecution practice and litigation
mechanics brought about through the AIA are ultimately
designed to result in positive results to the U.S. patenting
system. Such positive results include more transparent
patentability standards, objective criteria and simpler
tests for patentability, and more predictable assessments
of patentability. Notably, some aspects of these changes
may, instead, be seen as providing a new and unique
kind of patent system that exhibits characteristics of both
the FTI and FTF systems, rather than a truly harmonized
system. Nevertheless U.S. patent law will now follow
many of the international norms on a broad swath of
ancillary patenting practices, but patent holders and
in-house counsel will be well-served by thorough consultation
with their U.S. patent counsel regarding the
various particulars and exceptions contained therein.