Industry Insiders Make Patent Wishes for 2020

One of the longest running features on IPWatchdog is our Industry Insiders series, which started out many years ago with an annual “wishes” article. Each year, we continue to invite industry insiders to make patent wishes for the new year.

Unlike our Predictions and What Mattered roundups, this series allows our experts to get creative. We asked the panel to share their wildest IP dreams for 2020—they range from no more monkeys in courtrooms (no, not just figuratively) to the USPTO Director taking on the responsibility of instituting America Invents Act trials, to the government maintaining a database of patent ownership and transactions.

And without further delay, here they are!

 

Judge Theodore Essex
Hogan Lovells

I believe we should have meaningful reform and strengthening of the IP system in the United States, starting with the PTAB. With the high rate of patents being found invalid, we not only dilute the value of all IP, but we look foolish. I think a good start would be to see why “expert” examiners are getting overturned at such rates, and if the PTAB decisions are correct, then we need to improve examination and the process. I believe the PTAB should be examined, and perhaps the judge’s charter should be changed from getting rid of bad patents to ensuring value in the patents that are granted. In my wildest dreams, we would fix 101 so it actually meant something.

Judge Essex served as a U.S. International Trade Commission (ITC) judge for a decade, and is now Senior Counsel at Hogan Lovells in Washington, D.C. In addition to being admitted to the bars in the District of Columbia and Louisiana, he is also a registered solicitor in England and Wales.

 

Sherry Knowles
Knowles Intellectual Property Strategies

My wishes for 2020 are:

 

1. Athena Diagnostics is overturned and SCOTUS agrees rescind and never create a judicial exception to a patent law (or maybe any law?) again.
2. Despite the fact that 2020 is a national election year, we will not be overwhelmed with ill-conceived Congressional bills that have no hope of progressing but are used on the campaign trail.
3. The United States will be ranked Number 1 in Patents and Related Rights of the Global Innovation Policy Center Index.
4. Certain developing countries will start complying with TRIPS (for example, India and some countries in South America and Africa) on patent matters, or member countries will finally take action at the WTO.
5. Cancer will be converted from a disease you die from to a disease you are cured of or live with, like HIV.
6. The IPWatchDog  CON2020 is an extraordinary event that sets the bar for days of deep, well-informed conversation and debates about IP issues.
7. IPWatchDog readers in great numbers turn out to be mentors and friends to talented youth leaders in developing countries who need role models and advice. In 2016, I started a mentoring organization (kectil.com) for youth in remote and disadvantaged areas to help with leadership, entrepreneurship, innovation, good government, female roles in society, etc. Our 2020 class will have almost 700 youth from 72 countries. In additional to participating in the one-year program, these talented youth leaders born for greatness need your support and encouragement to change their future and the future of their communities. If you are willing to be a friend and mentor to one youth (aged 17-26) from a developing country, please send an email to [email protected]. If you have a country, gender or culture preference please let us know, and we will try to accommodate. Let’s show the world that the U.S. innovation community is ready to stand up and be role models for the next global generation! Let’s find and nurture those great youth in remote areas who can change the world! My biggest wish of 2020 is that IPWatchDog readers lead the way.

Ms. Knowles was formerly Senior Vice President and Chief Patent Counsel at GlaxoSmithKline, where she served as the worldwide head of patents for all litigation and transactional matters. She has been recognized as one of the most influential people in IP, and numerous times as one of the top IP strategists in the world.

Robert Greenspoon
Flachsbart & Greenspoon

Abolish Federal Circuit Rule 36. Of all its flaws, the worst is that it leads to bad judging. Rule 36 allows a rush to judgment in important yet complex IP cases. This means systematic over-affirmance (i.e., wrong affirmance decisions where there should be a reversal). The practice of issuing appellate judgments without opinion makes it impossible to have “vote fluidity” during the opinion writing process, because there is no opinion writing process. Vote fluidity is a recognized and important feature of appellate court decision making. The rule masks the true reasons for a decision, undermining the citizenry’s faith in the legal system itself. Quis custodiet ipsos custodes?

Robert Greenspoon is a founding member of Flachsbart & Greenspoon, LLC. He is a registered patent attorney who concentrates his practice in the litigation, trial and appeal of patent and other complex cases. Mr. Greenspoon has argued numerous cases before the Courts of Appeals for the Fourth, Eighth and Federal Circuits.

 

Stephen Kunin
Maier & Maier

My wishes for 2020 would be first to have Congress or the Supreme Court fix the section 101 problem by harmonizing patent subject matter eligibility in the U.S. to be no more strict than the standards applied by the other IP5 offices. Second, I would like to see America Invents Act trials become more fair and balanced by either legislative fixes, rule changes or decisional law that address concerns raised by the STRONGER Patents Act.

Mr. Kunin is a Partner with Maier & Maier, where he specializes in all areas of patent practice. He previously spent a 35 year career at the U.S. Patent and Trademark Office, rising to spend a decade as Deputy Commissioner for Patent Examination Policy. 

 

Jeffrey I.D. Lewis
Norton Rose Fulbright

Certainty will return to patents. No longer will section 101 be an eligibility gatekeeper, but instead an introduction to applying statutory tests for novelty (102), nonobviousness (103), and specification disclosure (112).

The worlds of antitrust and patents will come into balance both internally and with each other, such that each spurs innovation in a complementary but consistent way.

Piracy, counterfeits, and fakes will no longer be seen on the street corners of big cities or in normal supply chains – funding nefarious financial circles – but instead IP creators will be fairly compensated for their work without fear of diversion.

Monkeys will no longer be subjected to court cases over their selfies in an attempt by humans to create financial trusts “for the monkey’s benefit,” and no longer will humans stop in the middle of sidewalks to take selfies!

Mr. Lewis is a partner at Norton Rose Fulbright, and is a past President of the AIPLA.  He concentrates on patent and trademark litigation, counseling, and licensing, as well as other intellectual property and general litigation.

 

Daryl Lim
Center for Intellectual Property, Information & Privacy Law John Marshall Law School

That past accomplishments will inspire today’s IP leaders to do even better – IP leaders should draw inspiration from the wisdom and aplomb of those who made achievements like WIPO, the Court of Appeals for the Federal Circuit, and the Hatch-Waxman Act possible. Many, if not all, of today’s most pressing IP challenges are human challenges, not legal ones.

That IP Offices will continue to evolve – IP offices like the EU IP Office and IP Office of Singapore have evolved from registries to become innovation agencies that empower their customers with boundary-pushing tools and services, actively engage stakeholders in dialogue and educate, support business development. Others should do the same. A rising tide lifts all boats.

That stakeholders will learn to think, both fast and slow  – Public and private sector IP professionals can be slow in incorporating new learning and tools when compared with other industries. For instance, while the USPTO introduced economic analysis to guide C-suite level decision-making only in 2010, the FTC has benefitted from economic analysis since 1915, so it was encouraging to see that the USPTO announced in October that it would hire a senior level AI technical expert to help operationalize AI within the agency. One largely untapped resource is behavioral economics, which provides the tools to better understand how stakeholders decide as well as how they can be “nudged” to reach more socially beneficial outcomes from themselves and others.

Daryl Lim is Professor of Law and the Director of the Center for Intellectual Property (IP), Information & Privacy Law at the University of Illinois at Chicago John Marshall Law School. He is a multi-award winning author, observer, and commentator of IP trends and how they influence and are influenced by law, technology, economics, and politics.

 

Eli Mazour
Harrity & Harrity

After the impeachment saga, Reps. Jerry Nadler and Doug Collins successfully work together to push through legislation that eliminates Section 101 of the Patent Act altogether.  They decide to take this approach after watching the Senate IP Subcommittee’s extraordinary efforts to find a consensus position on Section 101 only lead to further calls for delay.

Eli Mazour is a patent attorney at Harrity & Harrity, LLP, and the host of the Clause 8 Podcast. 

 

Efrat Kasznik
Foresight Valuation Group

My “IP dream” is a simple one: I dream of pricing transparency in patent transactions;  transparency around patent prices, royalty rates and licensing terms.  Sadly, I have had the same dream over the last 20 years of valuing IP assets, and it is not any closer to materializing now than it has been 20 years ago. I dream of not having to sort through incomplete and random data sets or redacted SEC filings, that happen to be in the public domain, when looking for a royalty rate to apply in a valuation assignment or in a licensing deal. Nothing that exists in the market today fills that gap, because there is no requirement of systematic reporting of IP deals by companies, nor is there systematic valuation on the balance sheet due to the lack of such requirement by the accounting rules. Without this type of transparency, patents will never be managed as the business assets that they are.  Let’s hope that the next decade brings some change in this area.

Efrat Kasznik the President of Foresight Valuation Group, and a lecturer at the Stanford Graduate School of Business. She is a valuation and intellectual property (IP) expert, with 20 years of consulting experience, focusing on assisting clients with the creation, commercialization and protection of their intangible assets.

Manny Schecter
IBM

I wish federal policymakers and judges would shed more positive light on the value of intellectual property (IP). During the last decade or so, many members of the IP community have engaged in rhetoric causing damage to the public perception of IP. Our leaders could help restore confidence in IP by discussing how IP promotes innovation, aids small business, and fosters global competitiveness in key emerging fields – the objectives of IP that nearly all (including our founding fathers) agree on.  USPTO Director Iancu has been exemplary in his efforts to restore the tone and proper balance to the public debate around IP policy to one that champions the value of IP, while constructively addressing challenges. Setting the right tone will be even more important with the emergence of artificial intelligence and other new technologies, and the harnessing of these technologies to preserve and enhance U.S. global competitiveness. Discussing these emerging technologies and how they intersect with IP provides a valuable opportunity – that we should not waste – to enhance public understanding about the crucial value of IP to the economy and the general welfare.

Manny Schecter is Chief Patent Counsel and Associate General Counsel at IBM. 

Stuart Duncan Smith
Wolf Greenfield

Stronger protections for U.S. intellectual property in China.  Whether that might come about through the trade negotiations with China, or through other reforms, is unclear.  Also remaining on many people’s wish list from last year is greater clarity about Section 101, including its impact on medical diagnostic tests and computer-implemented inventions.  Whether that will occur, and whether that will come from the Supreme Court in cases like HP Inc. v. Berkheimer or Athena Diagnostics Inc. v. Mayo Collaborative Services, LLC, both of which are in the cert. stage, or through legislation, remains to be seen.

Stuart Duncan Smith focuses his practice on patent, trademark, trade secret, and copyright litigation, as well as patent post-grant proceedings.

Jonathan Stroud,
Unified Patents

My wildest IP dream has always been that the U.S. government would maintain a mandatory private database of all patent ownership, sale, and transfer. Too often, patent owners and defendants alike get tripped up in complex private licenses and hidden transactions that no governmental body has insight into, which increases transaction cost waste and is a net drain on U.S. businesses. It has led to entire ITC or District Court complaints (and even Federal Circuit appeals) being dismissed based on technicalities that need not have been filed in error. Such a database need not be public, but like land deeds, motorcycle registries, and other recognized assets, I never understood why ownership in patents is so prone to error, and why the government granting the patents has little insight into who owns them.

Mr. Stroud is Chief IP Counsel for Unified Patents, where he manages Unified Patents intellectual property work, focusing on Patent Trial and Appeal Board (PTAB), district court, and appellate litigation, licensing, and settlement negotiations.

 

Gene Quinn
IPWatchdog, Inc.

As long as the question presented asks for me for my wildest dreams, I’m going to think big, of course realizing that none of these are obtainable, although each is an objectively good idea and would result in a better, stronger U.S. patent system.

First, I wish for passage of the STRONGER Patents Act, which would overnight bring the U.S. patent system back into equilibrium. If I could get only one piece of the STRONGER Act it would be to resurrect the possibility of an injunction for a victorious patent owner after a patent infringement litigation, thereby overruling eBay v. MercExchange. Of course, that is the least likely piece of STRONGER to get enacted, and currently is politically not feasible.

Second, I wish for the USPTO to use its authority under Arthrex to terminate the employees at will on the Patent Trial and Appeal Board (PTAB) who are not following Patent Office regulations and guidance. This would right size the workforce and require the PTAB to institute fewer petitions, which is what we were told they would do when the PTAB was being debated leading up to passage of the America Invents Act (AIA).

Third, I wish for Director Iancu to determine that the delegation by the Director to the PTAB to make decisions on institution of inter partes review, post grant review and covered business method challenges was a mistake and to immediately reclaim his statutory authority to initiate. Obviously, Director Iancu cannot himself single handedly decide every petition to institute but delegating the decision to institute to those PTAB employees at will that will ultimately determine the petition has been a disaster. It provides the wrong incentive for employees at will who otherwise would not have enough work to justify their positions.

Finally, I wish for patent eligibility reform and world peace, both of which seem about as likely in 2020.

Mr. Quinn is a patent attorney and a leading commentator on patent law and innovation policy. He is one of the 50 most influential people in IP and one of the top 300 IP strategists in the world.

Robert Plotkin
Blueshift IP

Sanity will return to patent-eligibility determinations for software inventions, in patent offices and courts around the world. Innovations in software will be treated just like any other kind of innovation, without applying convoluted special rules that stifle innovation and bear no connection to the reality of how software works or is designed.  Inventors and high-tech companies will be able to file patent applications for software with confidence that the law will be applied consistently, reliably, and efficiently, regardless of which examiner is assigned to the case.  The U.S. will regain its position as the most favorable jurisdiction in which to file software patent applications as a result, and innovation will flourish.

Robert Plotkin is an MIT-educated computer scientist, engineer, patent attorney and author. He has been a leader in obtaining software patents for two decades.

 

Jeff Whittle
Womble Bond Dickinson

Passage and enactment of stronger patent laws to further bolster defined lines for patent eligible subject matter, and other steps to strengthen the U.S. patent system as a whole definitely should be on a “wish” list for 2020. Draft legislation has been percolating around Congress, e.g., initiated by both chambers, but there have been many other legislative attention-getting priorities where Congressional leadership has been focused and which have drawn attention away from what otherwise could be significant and impactful legislation in the patent/IP space.

Mr. Whittle leads Womble Bond Dickinson’s International IP Energy Group and serves as Managing Partner of the firm’s Houston office. He is also a past president and chair of the Licensing Executives Society (LES) for the USA and Canada (2015-2016) and served on the LES Board for over seven years. He currently serves as the Co-Chair of the Americas Committee for Licensing Executives Society International (LESI).

An earlier version of this article accidentally omitted Jonathan Stroud’s name and company, merging his comment with another. We regret the error.

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