February 20, 2012 Articles

Joinder Limitations in the America Invents Act: Big Change?

While section 299 does not change the standard for joining multiple defendants in one suit, its impact will be felt, given its prominent placement in the patent laws.

By Chandran B. Iyer and Ryan M. Corbett

The newly enacted America Invents Act (AIA) is the most radical change to U.S. patent laws in 60 years. One of the more significant aspects of this act is the addition of section 299, titled "Joinder of parties." This provision, which took effect immediately on the enactment of the AIA, sets forth the circumstances under which accused infringers may be joined in a single patent infringement suit and when they may not.

New Joinder Rule
Section 299(a), in relevant part, provides:

parties that are accused infringers may be joined in one action . . . only if

(1) any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process; and

(2) questions of fact common to all defendants or counterclaim defendants will arise in the action.

(emphasis added). In other words, section 299 delineates two conditions that must be satisfied before accused infringers may be joined in a single civil action. Specifically, different accused infringers can be joined in one case if the relevant questions of fact are common to all accused infringers and either the right to relief is asserted against the accused infringers jointly or severally or if one of the asserted causes of action is with respect to or arises out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process.

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