On Sept. 16, President Barack Obama signed into law the Leahy-Smith America Invents Act. We asked several patent practitioners to weigh in on the new patent reform legislation, in praise or criticism.
ROBERT GREENE STERNE
Founding director of Sterne, Kessler, Goldstein & Fox
Only one thing is certain about the America Invents Act — it is definitely a new ballgame; but how the game will be played is uncertain until the new season starts on Sept. 16, 2012. The practical impact of the five new postissuance proceedings created by the AIA is of great concern to all patent community stakeholders. There is considerable uncertainty about the new standard to get an inter partes re-examination ordered. Many requestors are beefing up their requests to try to avoid a bounce as a precaution. When post-grant review, inter partes review and supplemental submissions become available in less than a year, it is likely that post-grant review will only be embraced by certain industries — pharma and biotech are the likely candidates. Accused infringers will be uncertain if they should seek an inter partes review because of the estoppel provisions measured against the one-year window of availability once suit is filed. And patent owners trying to purge possible inequitable conduct will need to decide whether to use the supplemental submission procedure before the patent is in litigation.
