Are You Concerned About “Patent Trolls”?

According to Wikipedia, definitions for a “patent troll” include one or more of the following:

  • Purchases a patent, often from a bankrupt firm, and then sues another company by claiming that one of its products infringes on the purchased patent;
  • Enforces patents against purported infringers without itself intending to manufacture the patented product or supply the patented service;
  • Enforces patents but has no manufacturing or research base;
  • Focuses its efforts solely on enforcing patent rights;
  • Asserts patent infringement claims against non-copiers or against a large industry that is composed of non-copier.

Patent trolls are to patent law what ambulance chasing lawyers are to personal injury law. While patent enforcement has always been a big business, the recent wars between Apple and Samsung have brought a great deal of attention to this part of the law.

In a recent Forbes article written by Cheryl Milone, the founder and chief executive of Article One Partners, entitled A Powerful New Weapon Against Patent Trolls, relief may finally be on the way.  The America Invents Act patent reform law, which passed last year, contains a little-known feature that will soon give companies a lot more ammunition for shooting down patent troll lawsuits.

A critical determinant for patents is what is known as “prior art”. Prior art means any previous patent, technical paper, or public knowledge or use of an invention that makes it ineligible for a patent. Under the law, a patent may be issued only if an invention is useful, novel (i.e., not previously known or described), and nonobvious—meaning, not an obvious outgrowth of an existing technology. An examination of prior art determines whether an invention is novel and nonobvious.

As a result of the America Invents Act, after March 16, 2013, the following changes become affective which will redefine the application of prior art and have a dramatic impact on existing patents:

  • Unpublished patent applications: For the first time, unpublished patent applications, i.e., applications pending in the USPTO system for less than 18 months, can invalidate a later patent if these contain prior art that anticipates the invention.
  • Foreign patents and applications: For the first time, foreign applications and patents can also invalidate a later U.S. patent, if they contain prior art that anticipates the invention. According to Gene Quinn, of the influential IP Watchdog blog, “Foreign patents and  applications will now make it much easier to challenge issued U.S patents.
  • Public use anywhere in the world: The biggest new source of invalidating prior art involves “on sale” or “public use”—i.e., has an invention been previously used, offered for sale, or publicly disclosed?—which is being expanded from the U.S. to cover the entire globe. This means that even a seminar discussion about some interesting new technology at an engineering conference in Korea or China, presented in the Korean or Mandarin language, will be able to kill a U.S. patent on that technology acquired later.

Cheryl’s article provided some great insight into some of the most significant changes to hit the patent landscape in almost a century.  We will report further on the topic next year after the changes go into affect.  We anticipate a great  deal of creativity from the legal community in this area.