Each December we ask a panel of industry experts to identify the biggest moments in IP for the previous year, and likewise ask them for their wishes for the new year. Each year I also attempt to do similar article on predictions for the year ahead, but I haven’t always been able to find enough industry insiders willing to go out on a limb and actually make predictions. Starting last year I took a slightly different approach. I asked the experts to identify specific topics of interest to watch as the year unfolds. That question not only produced a great response, but it also provoked a few experts to offer predictions. So with that in mind another series was born, and continues this year with Predictions and Thoughts for 2019.
Given that several industry insiders were willing to make their own predictions, I’ll go out on a limb and make my own predictions… First, I predict Congress will do nothing on patent reform in 2019. With a divided Congress and a House of Representatives that could well spent precious legislative time on impeachment and other investigations, intellectual property matters likely won’t register even a blip on the public radar inside the beltway. Second, I predict there will be much effort behind the scenes on Capitol Hill to position various legislative fixes to 35 U.S.C. 101 so that when attention does turn to patent eligibility the ground work will be laid and much of the heavy lifting already done. So, if you think you can sit out 2019 because nothing is happening you’d be incorrect. Those that want to influence the next round of patent reform have already been working and by the time it is rolled out publicly it will be too late. Third, I predict the United States Patent and Trademark Office will define the term “abstract idea”. This is hardly going out on a limb since Director Iancu has all but promised just that in a speech given at Georgetown on November 26, 2018. Since the courts refuse to define the term the USPTO will closely identify only those innovations that the Supreme Court has identified as representing an “abstract idea” and closely define the term to mean those things and only those things are abstract ideas, with everything else in the computer implemented universe not being directed to an abstract idea and, therefore, patent eligible under Step 2A of the Alice/Mayo framework.
Now, without further ado, the thoughts and predictions of our esteemed panel.
Chief Operating Officer
European Patent Office (EPO)
First of all, we have three new Vice Presidents taking up their posts at the EPO in January 2019. Their work will constitute a major contribution to the development of the patent system both internationally and at European level.
Second, we hope that there will be further progresson patent reform in Europe with greater clarity on the status of the Unitary Patent and Unified Patent Court. This new route to patent protection in Europe will certainly be of interest to US businesses, too, and we hope that the long-awaited reform will finally come to fly.
And third, a word on Brexit: It is worth recalling that whatever Brexit scenario will apply, it will not affect the UK’s membership of the European Patent Organisation. We are not an EU agency, but an independent, intergovernmental institution. This means that we will continue to grant European patents that are valid in the UK, and British businesses can continue to cover Europe through the EPO route as before.
Roberta Romano-Götsch is the Chief Operating Officer of Mobility and Mechatronics at the European Patent Office (EPO). As Chief Operating Officer of one of the three technical areas at the EPO, Ms. Romano-Götsch has responsibility for leading 1,600 patent examiners, managers and administrative staff members in Munich and The Hague. In addition to leading Mobility and Mechatronics, she is also chair of the EPO’s Operational Quality Committee.
Partner, Drinker Biddle
Presidential investigations and controversial issues in a divided Congress will consume the time from the Congressional calendar this year. And the Supreme Court will likewise be engaged in social concerns and assertions of executive privilege for much of their time, so I don’t expect significant action on the legislative or judicial front on IP this year. I do believe we will see Director Iancu continue to use rule-making to improve processes at the USPTO, but his abilities there are already limited by the courts and the statutes.
That is not to say nothing will be happening on IP during 2019. I believe it will be a building year!
I think the discussions surrounding patent subject matter eligibility will deepen and we will likely see more articles in the main-stream press decrying the harm to the economy the “Alice test” has conferred on our domestic emerging technologies. We may see more 101 legislative language that addresses concerns but meets the needs of those who resist the current language. At the same time, I think we will see savvy patent filers reevaluate their strategies. Innovative companies will more readily use trade secrets to protect those areas where patent protection is currently questionable. In some areas, diagnostic methods and algorithms may be candidates for trade secret protection. Also, as models change, we may see a wider embrace of open-source software.
As filings related to artificial intelligence, cyber security, 5G-related innovations, personalized medicine, cloud computing, processes manipulating big data and autonomous vehicles explode we may engage in discussions as to whether the current system adequately stimulates innovation in these areas or whether a sui generic right needs to be investigated to protect some of them.
In any event, I think it will be a very interesting year in IP where we investigate new ideas to stimulate innovation.
Robert L. Stoll has more than 40 years of experience in intellectual property prosecution. Bob retired from the USPTO as Commissioner for Patents at the end of 2011 after a distinguished 34-year government career. Bob serves as an expert on patent matters, and is known as a problem solver for cases with peculiar issues and problems. He is now Co-Chair of the Drinker Biddle Intellectual Property Group, and a member of the Patent Masters Faculty.
Partner, Maier & Maier
While I am pessimistic that we will see much action in Congress in 2019 on patent reform and little progress in the area of substantive patent law harmonization, I am hopeful that the U.S. will continue to work with its trading partners to enhance IPR protection globally. I do not see much in the way of new free trade agreements with strong IP sections in 2019 I remain hopeful that the Director will be a strong leader in intellectual property discussions with other U.S. agencies and foreign governments and offices on global patent work sharing and enhancing the respect for and protection of intellectual property rights worldwide.
Stephen Kunin is currently a partner with Maier & Maier. He serves as an expert witness and consultant on patent policy, practice and procedure. Mr. Kunin served three decades at the USPTO, including 10 years as Deputy Commissioner for Patent Examination Policy. Mr. Kunin is also a member of the Patent Masters faculty.
Patent and Trade Secret Litigator
Having in mind Yogi Berra’s admonition about predicting the future, I will venture only a couple of events in my wheelhouse that seem likely based on facts that we know.
First: Congress will clarify and strengthen the extraterritoriality provisions of the Defend Trade Secrets Act, to ensure domestic remedies for foreign misappropriation of U.S. trade secret assets.
Second: In the wake of the widely panned E.J. Brooks decision limiting the kinds of damages that can be recovered for trade secret misappropriation, New York, the only state without a version of the Uniform Trade Secrets Act, will finally enact it, replacing its reliance on the outmoded 1939 Restatement of Torts.
James Pooley has over 35 years experience as a successful Silicon Valley trial lawyer. Pooley possess deep knowledge of patents and trade secrets. In fact, Pooley has quite literally written the book on trade secret law, with his latest title “Secrets: Managing Information Assets in the Age of Cyberespionage”. Pooley is also a Member of the IP Hall of Fame, inducted in 2016, and he spent 5 years serving as a diplomat and manager of the international patent system (PCT) as Deputy Director of the World Intellectual Property Organization.
Image Source: Deposit Photos.