STLR Link Roundup – Nov. 10, 2015

Laches still a valid defense in patent infringement cases

In 2014, in Petrella v. Metro-Goldwyn-Mayer, Inc., the Supreme Court held that laches was no longer a defense to copyright infringement, causing concern as to whether laches could still be used in the patent context. Recently, the Federal Circuit met en banc and held that Petrella does not extend to patent infringement; laches is still a valid defense in the patent context. To arrive at this conclusion, the Federal Circuit relies on the explicit codification of a laches defense in a patent-specific statute (35 U.S.C. §282(b)(1)), as distinguishing patent law from copyright, with regards to laches. The Federal Circuit also upheld laches in the patent context to limit damages where a defendant may not have known he or she was infringing, thereby further distinguishing patent cases from copyright cases; the Federal Circuit notes that in copyright cases, a potential defendant is generally aware of their infringing action and can therefore anticipate liability, because copyright infringement (unlike patent infringement) requires actual copying.

USPTO proposes to increase fees for patent prosecution

The USPTO recently published proposed increases to filing, search, examination, issue, RCE, and appeal fees. The most controversial of the proposed changes involves a restructuring of the fee structure for filing post-issuance reviews at the PTAB. If the proposed changes are implemented, the cost of filing an IPR will increase from $9,000 to $14,000, plus an additional $16,500 if the review is actually instituted. The proposed changes will be considered by the Public Patent Advisory Committee later in November, and if approved, will come into effect in October, 2017.

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