Inter partes review survives constitutional challenge Patent trolls are a significant nuisance to a range of industries. But the U.S. Supreme Court recently upheld a procedure that makes it easier for patent trolls’ potential victims to avoid prolonged litigation or costly settlements.
Former Director of the USPTO, David Kappos, gave an excellent review of Patents After the AIA, a patent law treatise co-authored by Patterson Thuente IP partner Brad Pedersen. The review was published by IP Watchdog. Read it here.
Implications for Universities and Technology Transfer Offices One of the changes in patent law that went into effect in March of 2013 is the establishment of micro entity status for patent applicants. Under the America Invents Act (AIA), the United States Patent and Trademark Office fees for micro entities are reduced by 75% as compared to large entity fees. The micro entity rules set forth three independent bases for university-related patent applications to qualify for micro entity status: Based on the source of income of each applicant Based one each applicant’s employer being an “institution of higher education” Based on each applicant having assigned or licensed the application to an “institution of higher education”
Patent law has recently undergone significant reform with the enactment of the America Invents Act (AIA). One such reform improves the value proposition of trade secrets. Before the AIA, an accused infringer who had practiced a patented invention in secret for many years prior to the patentee’s filing date could not rely on a so-called “prior user right,” unless the patent was for a so-called “business method.” Under the AIA, prior user rights have been extended to any technology. Having a robust trade secret, and practicing that trade secret prior to later patenting by another can provide an invaluable affirmative defense to patent infringement charges through prior user rights.
In the world of research institutions, whose primary mission is to further scientific knowledge by conducting fundamental research and disclosing the results to the public, the first-to-publish grace period between publishing and patent filing established by the America Invents Act is significant.
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