Recent Patent Legislation and Court Decisions in the United States: Impact on Validity of Patents and on Obtaining, Licensing, and Enforcing Patents

Chris Paschall, Licensing Manager, University of Virginia Licensing & Ventures Group
Rodney Sparks, Senior Biotechnology Patent Counsel, University of Virginia Licensing & Ventures Group

The United States (US) Congress passed the America Invents Act (AIA) in 2011, enacting the broadest changes in US patent law in over six decades. The US Supreme Court has also been unusually active in recent years with decisions relating to patent law and patent litigation. The AIA and Supreme Court decisions include changing to a modified first inventor to file patent application system, new proceedings for challenging existing patents at the US patent office, more and stricter rules for patent litigation, changing the types of invention that are eligible for patent protection, narrowing the scope of eligibility for others, changing how inducement of infringement is evaluated, making it easier to force losers to pay for attorney costs, and changing the standards for indefiniteness of patent claims. The full impact of the new legislation and case law has not been determined, creating uncertainty and a reluctance on the part of some investors and companies to invest in technology or to go forward with licensing, mergers, or acquisitions where technology is the primary or major source of value in the transaction.