PLI Talks - Denise Loring on Patent Litigation

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Laurie: Hi, I'm Laurie Gilbertson with PLI Talks. I'm here with Denise Loring of Ropes and Gray. Thanks, so much for speaking with us here today.

Denise: Oh, my pleasure.

Laurie: So there are some really interesting developments going on with patent litigation, especially the America Invents Act. What are some of the significant changes you see coming about as a part of this act?

Denise: Well, there were some really fundamental changes that were created as a result of the America Invents Act, for example, our entire system has switched from a first to invent system, where the first person to invent is entitled to a patent, to a first-to-file system, and this has tremendous ramifications for who is entitled to a patent and when the effect of filing date of that patent occurs. The second major change is the implementation of third party intervention proceedings where, similar to European opposition proceedings, a post issuance review proceeding is now available or will be available to challenge the validity of patents in the patent office after issuance. And then finally, there's been a change in what actually constitutes prior art. For example, foreign sales or uses outside of the United States which were not prior art previously now are.

Laurie: What was effective as of the data the passage of the act, and what do you see coming on in the horizon in the next few years?

Denise: Some of the provisions became effective immediately. For example, the statute did away with the best mode defense, the ability to challenge the validity based on the failure to disclose the best mode of making or using the invention. Also, there were changes limiting false patent marking defenses or claims, those are all effective immediately. Most of the provisions are effective within a year of enactment with the exception of the first-to-file provision which will be effective in eighteen months.

Laurie: Do you see any major one significant thing coming out of the act?

Denise: Well, I guess I think there are two actually. First-to-file, which really does change what constitutes prior art and will have, I think, a large impact on litigation, and also the third party post issuance review will give accused infringers a choice of whether to litigate the validity of a patent in the patent office or in the courts.

Laurie: So a lot of interesting things for litigators to be dealing with in the years to come.

Denise: Oh, I think it will take years before the full implication of this statute is sorted out.

Laurie: Denise, thank you so much for speaking with us here today.

Denise: Thank you.

Laurie: I'm Laurie Gilbertson with PLI Talks.

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• patent law
• patent litigation
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