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America Invents Act proving to be good for trials and entrepreneurs

Mark Nikolsky is a registered patent attorney at McCarter & English.-(PHOTO BY AARON HOUSTON)

To hear Mark Nikolsky tell it, it sounds a bit like a John Grisham novel.
In fall 2012, on the eve of a costly trial in federal court over a patent dispute, Nikolsky used a provision of a then-days-old law called the America Invents Act to control the proceeding before it got out of hand.

The Newark-based patent attorney with McCarter & English filed a petition to argue the patent in question attempted to patent abstract concepts. Doing so sent the issue to a new streamlined procedure at the U.S. Patent and Trademark Office.

And when the patent office found Nikolsky and his client had a likelihood of prevailing, the case was settled — and a patent trial, which usually lasts three to five years and costs millions of dollars, was completed in a third of the time at a fraction of the cost.

Roughly two years after it was passed, the America Invents Act is working as intended — reducing the time and expense of patent disputes. Nikolsky is seeing this firsthand in several cases, including one in which he represented a Jersey City-based technology company.

The law is also proving to be of great benefit to entrepreneurial startups.

Dennis Bone, director of the Feliciano Center for Entrepreneurship at Montclair State University, sees this type of patent reform as a key to a growing technology community. He sees long and costly patent procedures as having a tremendous capability of stopping a new, innovative company or idea cold in its tracks.

“Usually a patent is at the heart of some innovative technology or new idea,” he said. “If an entrepreneur has to traverse this landscape, and it’s long, arduous and expensive, it could throw a wet blanket over their idea, innovation or invention.”

By minimizing these obstacles, Bone sees a better possibility for growth in the technology industry. And for New Jersey’s burgeoning tech community, that’s no small idea.

“Reforming that process, from a time and a resource point of view — it’s still a huge challenge, but not nearly as big as it was before,” he said “That will basically be a shot in the arm for the whole innovation economy.”

Nikolsky agrees. Giving more companies the ability to fight these patent claims can provide them with a fighting chance. A firm that is being challenged for infringement can effectively turn the tables, he said, by challenging the validity of the opposing party’s patent.

“Not only are you defending against the claim, you’re showing, ‘Hey, I’m putting you on the defensive now because I’m challenging an intellectual property asset of yours,’ ” Nikolsky said.

Andrew Sheldon
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