I’ve pulled together a list of each change, and categorized it in terms of timing. I highlighted those items that will likely change the way we practice.
Effective immediately
- Prior commercial use defense (any patent issued on or after date of enactment)
- Venue moved to District Court for Eastern District of Virginia
- Funding agreements of government with non-profit organizations
- Tax strategies are part of the prior art (all patents issued after the effective date)
- Best mode may not be the basis for canceling or holding invalid a patent (all proceedings commenced on or after date)
- Marking statutory damages only available to US, actual damages suits available to competitors. (to all cases, including those pending)
- Joinder: Restriction of joint litigation only if it’s the same product (all civil actions commenced after date)
- Prohibition against human organism patents (for all pending or later filed applications)
- +1 day for extension of patent term (Wilmer-Hale Act, for applications for extension of time pending, filed after, or subject to judicial review)
- Inter partes review update (applicable to all patents, regardless of filing date)
Effective one year from the enactment
- Post-grant review (applies to all patents, regardless of filing date)
- Pre-issuance submissions to the patent office (applies to all patent applications)
- Supplemental Examination (applies to all patents)
- Lack of Advice of Counsel cannot be used to prove willfulness
- Business Method patents available for post-grant review (valid for 8 years only)
Effective 18 months from the enactment
- First inventor to file
- Change in grace period (requires inventor disclosure)
- Inventor’s oath and declaration changes, changes allowing entity having sufficient proprietary interest to file without inventor
- Derivation proceedings
- Repeal of statutory invention registration
If you see any mistakes, or items missing, please let me know so I can correct it.