The Effect of The Leahy-Smith America Invents Act on Patent Litigation：Focusing on The Defendant’s Defense Strategies

• Main Authors: Mu-Chi Huang, 黃睦琪
• Other Authors: Shin-Yi Huang
• Format: Others
• Language: zh-TW
• Published: 2014
• Online Access: http://ndltd.ncl.edu.tw/handle/56943607674482780202

碩士 === 東吳大學 === 法律學系 === 102 === With economic development and prosperity, intellectual property, particularly patents, copyrights, and trademarks, has become more and more important for an enterprise. 2011 was the year of substantial and profound changes in American intellectual property law, because the President Obama signed the Leahy-Smith America Invents Act, also known as AIA, into law AIA represents the most significant reform of United States patent law in nearly 60 years, since the 1952 Patent Act. The new law is causing major changes in significant areas such as moving a “First-to-invent” system to a “First-inventor-to-file” system; creating Post-Grant Review and Inter Partes Review to challenge patents before the USPTO; improving the process of preissuance submissions by third parties; allowing the USPTO to set or adjust all of its fees reasonably; defining micro entity; modifying the prior art sections; expansion of prior user rights defense; and constraining on joinder of defendants, etc. The original purpose of the patent right is to protect inventors’ rights. However, patent right have recently become an approach for enterprises to block the competitors from their market. With the rapid growth of the transnational businesses, the possibility of being filed litigation in the United States against infringement caused by Taiwanese enterprises increases day by day. As mentioned above, the signing into law of the AIA marks a new era of patent litigation, therefore understanding the key provisions of the AIA is critical to such enterprises, especially those has involved or might be involved in patent litigation. Accordingly, this study intends to find out some major changes affected by the AIA that will affect patent litigation and attempts to offer litigation strategies guidance from the defendant’s point of view. At First, this study introduces the legislative background and the purpose of AIA, and makes an overview of the key provisions of the AIA briefly. Second, this study analyzes the similarities and differences between current patent reexamination system and the new reexamination proceedings created under the AIA. Reexamination is an administrative mechanism for revocation of patent. It not only provides another cheap and effective way to challenge the validity of an issued patent instead of in court, but also influences other aspects of litigation in a defendant’s favor. While an issued patent is afforded a presumption of validity when challenged in court, the same patent takes no such advantage during reexamination. In this part, this study explores the inconsistent standard of review between patent litigation and patent reexamination, and then discusses how to use reexamination appropriately as a litigation strategy for potential infringers after AIA has been implemented. Moreover, this study discusses the important litigation changes, including the procedural and the substantive changes after the implementation of the AIA, such as re-defining the meaning of novelty; eliminating best mode failure as a litigation defense; expanding prior user rights as a defense to infringement to all technologies; the jurisdiction of patent litigation; restriction on joinder of non-cooperating defendants; and lessening effect of opinions of counsel, etc. By means of analyzing the changes, this study collects the related information that the defendant needs to notice and offers the defendant some effective defensive methods which could be used in patent infringement litigation and proposes some possible solutions and strategies which enterprises may utilize in internal management before the litigation.