1. America Invents Act: Litigation Related Provisions

2. Litigation Related Provisions
Prior User Rights
Supplemental Examination
Joinder of Parties
Advice of Counsel
Marking

3. Prior User Rights – 35 U.S.C. § 273
Prior user rights are expanded to all technologies
No longer just business method claims
A defense to infringement based on earlier commercial use of a process or instrumentality used in a manufacturing or other commercial process
Applies to “internal commercial use” or “arm’s length sale” of the end result of the commercial use
Section 5

4. Prior User Rights (continued)
Accused infringer must prove, by clear and convincing evidence, that its earlier commercial use was in the U.S., in good faith, AND
Occurred at least 1 year before the earlier of:
effective filing date of claimed invention OR
date on which the claimed invention was disclosed to the public in a manner that qualified under §102(b)
Section 5

5. Prior User Rights (continued)
Defense can only be asserted by person who performed the prior commercial use
Cannot assert defense if:
Subject matter was derived from patentee
Claimed invention was, at the time the invention was made, owned or subject to an obligation of assignment to a university
An infringer who fails to show a reasonable basis for asserting the defense is liable for attorneys fees under Section 285 (exceptional case)
Applies to any patent issued on or after the date of enactment
Section 5

6. Supplemental Examination – 35 U.S.C. § 257
Allows a patent owner to eliminate potential grounds of inequitable conduct relating to an issued patent
Patent owner may request supplemental examination by USPTO to consider, reconsider or correct information believed to be relevant to the patent
Request must raise a substantial new question of patentability
Cannot be used:
With respect to information forming the basis for an inequitable conduct allegation pled in a civil action or an ANDA Notice Letter, before the date of the request for supplemental examination
Section 12

7. Supplemental Examination (continued)
If Director becomes aware that a material fraud on the PTO may have been committed in connection with the patent under supplemental examination, will refer the matter to the Attorney General
Effective Date – 1 year after enactment
Use of supplemental examination
Prior to bringing suit
Evaluation of key patents
Section 12

8. Supplemental Examination (continued)
Less litigation on inequitable conduct:
Supplemental examination
Exergen
Therasense
Use of declaratory judgment to preempt supplemental examination
Section 12

9. Joinder of Parties – 35 U.S.C. § 299
Limitations on Joinder of Accused Infringers
Joinder, or consolidation for trial, allowed only when right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of same transaction relating to the same accused product or process
AND
questions of fact common to all defendants will arise
Accused infringers cannot be joined, or be consolidated for trial, based solely on allegations that they each have infringed the same patent
Accused infringer may waive these limitations
Do not apply to Hatch-Waxman drug litigation
Section 19

10. Joinder of Parties (continued)
Effective date: actions commenced on or after the date of enactment
Many multiparty actions were filed shortly before September 16

11. Advice of Counsel – 35 U.S.C. § 298
Cannot be used to prove willful infringement or that the infringer intended to induce infringement:
failure to obtain legal advice with respect to any allegedly infringed patent OR
failure to present such advice to the court or jury
Codifies case law on willful infringement 
Extends the case law to preclude the use of these facts to prove the alleged infringer intended to induce infringement
Section 17

12. Marking – False Marking
Only United States may sue for the statutory penalty
$500 for each offense
A person who has suffered competitive injury can sue for recovery of damages adequate to compensate for the injury
Marking a product with the number of an expired patent is not a violation
Section 16

13. Marking – Virtual Marking
Mark product with “patent” or “pat.” and web address
Web address (free access) associates patented article with patent number(s)
Effective Date of marking provisions – apply to any case that is pending on, or commenced on or after, the date of enactment
Director to report to Congress within 3 years on experience with virtual marking
Section 16

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