When the America Invents Act was signed into law recently, the bill was portrayed as a significant step forward in revamping intellectual property protection. But one non-profit group claims the effort quietly included an unfair provision that benefits a few companies, in particular, because these will be protected retroactively from any challenge to its patent markings. One example? Johnson & Johnson.
Specifically, the law includes a provision that denies standing for anyone who files a claim that alleges false marking on a product, but cannot prove a competitive injury. And this provision offers retroactive status (here is the law; see section 16). The move came in response to a growing number of lawsuits that were being filed over false patent markings (see this).
As a result, the Public Patent Foundation is crying foul, since the group had filed a lawsuit in 2009 against J&J for selling various over-the-counter products with expired patent markings. In its suit, which you can read here, PubPat contends that various versions of Tylenol, which are sold by the J&J McNeil Consumer Healthcare unit, that the products are actually "unpatented", but display patent markings and, therefore, contain information that deceives the public.
Now, though, J&J is moving to dismiss the suit (see this). However, PubPat argues the provision reflects behind-the-scenes politicking by J&J and other companies that were seeking to quash lawsuits. "Without being overly cynical, the only honest explanation for the America Invents Act's retroactive elimination of (the) false marking suits is that it was the result of lobbying efforts by corporations like McNeil who wished to deliberately eliminate the rights of private parties liked PubPat to continue to pursue pending cases for false patent marking," the non-profit writes in arguing against dismissal.
And so the non-profit hopes to convince a federal court that the retroactive provision violates the Due Process Clause of the Fifth Amendment to the Constitution and did so without any legitimate legislative purpose. How so? PubPat argues this "does nothing but bestow a benefit on private defendants in pending cases...Applying those changes retroactively to current cases was vindictive and spiteful to parties...In short, to pull the rug out from under PubPat at this stage in the litigation would be fundamentally unfair," the non-profit writes in its brief (read here).