Vermont passes controversial new law targeting patent trolls
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Vermont passes controversial new law targeting patent trolls

Vermont enacted a new law on Wednesday, believed to be the first of its kind in the US, in an effort to crack down on so-called patent trolls

The legislation, known as Bad Faith Assertions of Patent Infringements, was signed into law by Vermont Governor Peter Shumlin. It is unclear whether states have the authority to regulate patent activity, due to federal preemption doctrines.

The law allows parties who are threatened by trolls to sue for damages, even if the patent owner has filed no lawsuit against them.

It also enables the state’s Attorney General to pursue civil enforcement against parties believed to be asserting patents in bad faith.

In addition, the patent owner can be required to post a bond of up to $250,000 under the new law, to cover any attorneys’ fees a court may later award to an alleged infringer. The court can deny the bond if the defendant lacks “available assets” equivalent to the amount of the bond.

Rather than define bad faith assertions, the law lists factors to help judges separate legitimate claims from illegitimate ones.

Under the new law, factors that might lead a court to conclude that a claim is illegitimate would include:

  • Not identifying the patents in question, who owns the patent, and to precisely how the patent has been infringed;

  • Demanding an unreasonable amount of money, and/or demanding payment in an unreasonably short amount of time;

  • Making “deceptive” or “meritless” claims.

Factors that might lead a court to conclude that a claim is legitimate include:

  • The claim being made by the original inventor, an educational institution or someone who has commercialised the invention;

  • Having demonstrated “good faith business practices” in previous efforts to enforce the patent, or one that is “substantially similar”

  • Previous success in enforcing the patent through litigation.

The law also grants courts leeway to consider any other factors they believe to be relevant.

more from across site and ros bottom lb

More from across our site

Counsel reveal how a proposal to create separate briefings for discretionary denials at the USPTO could affect their PTAB strategies
The UK Supreme Court rejected the firm’s appeal against an earlier ruling because it did not raise an arguable point of law
Loes van den Winkel, attorney at Arnold & Siedsma, explains why clients' enthusiasm is contagious and why her job does not mean managing fashion models
Allen & Gledhill partner Jia Yi Toh shares her experience of representing the winning team in the first-ever case filed under Singapore’s new fast-track IP dispute resolution system
In-house lawyers reveal how they balance cost, quality, and other criteria to get the most from their relationships with external counsel
Dario Pietrantonio of Robic discusses growth opportunities for the firm and shares insights from his journey to managing director
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Law firms that pay close attention to their client relationships are more likely to win repeat work, according to a survey of nearly 29,000 in-house counsel
The EMEA research period is open until May 31
Practitioners analyse a survey on how law firms prove value to their clients and reflect on why the concept can be hard to pin down
Gift this article