With Patent Reform Going into Effect, What Should Patent Holders Do Now?

As the first major revision to the U.S. patent law in more than 50 years begins to take effect, there is a lot that companies that own patents and that create patentable inventions should keep in mind.

First, it is important to prepare for the significant changes to patent law and practice that already have gone into effect (such as the ability to accelerate the patent application review process with an additional payment to the Patent and Trademark Office) and that will soon be going into effect. Among the upcoming changes: beginning on September 16, third parties will have the right to make "prior art" submissions during a patent's prosecution; that will require extra thought and work by applicants as well as by third parties seeking to challenge the grant of a patent.

Similarly, when the patent system changes from a "first-to-invent" to "first-to-file" system on March 16, 2013, applicants will need to be ready with their provisional filings - and will need to be aware of prior art.

Patent-Defense Litigators

Changes to the patent law are generating only some of the issues that patent owners must consider. Another big factor is that the patent bar itself is changing.

The Wall Street Journal recently highlighted this development in an article pointing out that a number of patent-defense litigators have left their law firms to work for companies that some have characterized as "patent trolls." Instead of defending patents, these attorneys now represent patent-holding plaintiffs known as "nonpracticing entities" that own numbers of old patents or patents that have not been used. The lawyers, on behalf of these companies, seek out infringing - or potentially infringing - entities with which they try to negotiate licenses or against which they bring infringement actions.

The rise of patent trolls is significant, of course, for companies that own patents as well as for companies that may be cited for infringement. It also makes it all the more important, however, for patent holders to retain law firms that have their interests in mind. As the Journal pointed out, some experts believe that the practice of patent law will be "going the way of others, such as employment and securities, in which lawyers represent either defendants or plaintiffs, but not both."