The AIA's Extra-Judicial Review Kicks In

As reported in this column a year ago,¹ the Leahy-Smith America Invents Act (AIA) provided the most comprehensive overhaul of the U.S. patent statute since it was enacted in 1952. Just last week, however, on Sept. 16, several provisions of the AIA became effective, with certain parties already taking advantage of the act’s extra-judicial review options. This article addresses these provisions, and the new regulations issued recently (in August 2012) for implementing them. This article also addresses recent U.S. Court of Appeals for the Federal Circuit case law, and specifically Akamai Technologies v. Limelight Networks,² which changed the law related to induced infringement.

The AIA

The AIA essentially provided for three effective dates for its various provisions: Sept. 16, 2011, Sept. 16, 2012, and March 16, 2013. On Sept. 16, 2011, the date the act was signed, the law was changed: (1) to eliminate the best mode defense in litigations commenced on or after that date (35 U.S.C. §282(3)(A)); (2) to allow for virtual marking enabling companies to “mark” their products by referencing their websites (35 U.S.C. §287); (3) to prohibit suit against multiple defendants unless the claim arises out of the same transaction or occurrence and questions of fact common to all will arise in the action (allegations of infringing the same patent is insufficient) (35 U.S.C. §299); and (4) to expand availability of the prior use defense (except against universities).