Chris Gegg was quoted in a Law 360 article discussing a potentially precarious issue facing some business method patents in the wake of the passage of the America Invents Act. The new law “gives defendants one additional very useful tool,” allowing defendants accused of infringement to ask the U.S. Patent and Trademark Office to review the patents in question, regardless of when they were issued, using prior art that is not available in other proceedings. “Every defendant or threatened defendant can consider bringing certain art back to the patent office,” Gegg said. The program also is potentially attractive because it limits its estoppel effect of the review, which “will allow defendants to strategically decide which issues they want to present to the patent office and which ones they want to raise in court.”
However, the program is limited only to financial business methods in active litigation, and even crafted with certain cases and plaintiffs in mind. The new program may not be as far-reaching as some might think. “Anyone who has a valid patent that is novel and nonobvious now should not be concerned about this,” Gegg stated.