Dr. Marco Alemán is one of 10 candidates to succeed Francis Gurry as Director General of the World Intellectual Property Organization (WIPO). The WIPO Coordination Committee will nominate one candidate on March 5 and 6, before he or she is formally appointed by the WIPO General Assembly. Alemán currently holds the post of Director of the Patent Law Division. After acting as Director of the Colombian Industrial Property Office, he started his career in 1999 at WIPO as Principal Administrator of Cooperation Programs for the Development for Latin America and the Caribbean, then as Deputy Director of the Division of Public Policy and Development, and later as Deputy Director of the Patent Law Division.
Are you bullish or bearish on the 2020 patent market? That is the question I asked a panel of experts recently. Each of the experts surveyed will participate on the faculty at IPWatchdog CON2020, which will take place in Dallas, TX from March 15-18. All those industry insiders who responded are bullish, which is an interesting change after many years of insiders being bearish, or at best cautiously optimistic. Indeed, the sentiment expressed across the board by experts from both the monetization / licensing world and litigation world is surprising, at least at first glance. And, as you will read below, while at least several people cited the uncertainty around patent eligibility in the United States, there is real optimism because license deals are getting done and policy changes show evolutionary changes in the IP ecosystem.
You come up with a brilliant idea for an invention, pour your heart and soul into reducing it to practice and spend a great deal of time and money to get a patent. You receive the patent registration certificate, frame it and hang it on your wall. You think, “This is great! I’ve got a patent and now no one can copy my invention!” You form a company and start selling your new product online. A few months later, you log on to your Amazon.com account and see that some seller in some far away country is offering your exact product on amazon.com. Now what? This is the all too familiar story clients often face, and the exact situation one of my clients—we’ll call him Bill—brought to me a few months ago. Luckily, Amazon provides weapons for patent owners like Bill to deploy in order to combat patent infringement on Amazon. Amazon’s latest tool offered to its authorized sellers is called the “Neutral Patent Evaluation Process.” In part one of this series of articles, I will outline the preliminary steps I took to initiate Amazon’s “Neutral Patent Evaluation Process.”
Climate activist Greta Thunberg is reportedly planning to register her name as a trademark based on her fears that third parties will exploit her identity for commercial gain. While registering a trademark has many advantages under U.S. law, she can likely accomplish her goal of protecting her name without the cost, delay, and uncertainty associated with the trademark registration process. As an initial matter, a trademark does not exist in the abstract. It is only protectable in connection with particular identified goods and services. Consequently, her trademark (or service mark) application would need to identify the goods or services she offers or intends to offer under the mark. To obtain registration, she would ultimately need to provide specimens showing technical trademark (or service mark) use. 15 U.S.C. § 1051.
Open innovation is a key ingredient to the development of valuable intellectual property. Research institutions, universities, and private businesses work in close collaboration with one another, sharing confidential business information, processes, and trade secrets in order to create content. But while open innovation is a boon to creativity it is also a vulnerable entry point for bad actors to exploit the open and collaborative mindset of research-focused institutions (like universities) or the faith in contractual confidentiality obligations that many companies rely upon to conduct business. Several recent U.S. government findings have placed the blame for some of the most significant threats to domestic intellectual property at bad actors in the People’s Republic of China. A report by U.S. Trade Representative Robert Lighthizer found that Chinese sponsorship of hacking into American businesses and commercial networks has been taking place for more than a decade and posed a significant threat to our nation’s economic prosperity and competitiveness.
As you’ve most likely heard, Prince Harry and Meghan Markle have decided to become financially independent of the Crown. No small task when your security costs are reported to be $1.3 to more than $7 million per year. Ouch! So, what are they planning to do? One hint can be found in the trademark application for “Sussex Royal” that they filed in England on June 21, 2019. This trademark filing provides the opportunity for many lessons to be learned.
With cannabis now legal in some form across more than 30 states, the cannabis industry is on the rise and expected to achieve a market size of more than $60 billion by the end of 2025. As with any new and growing industry, intellectual property protection will be central to innovation and investment. Several unique challenges emerge at the intersection of cannabis and intellectual property law, the first of which is obtaining protection for a cannabis-related business or invention. Two characteristics of cannabis make intellectual property protection challenging—its status as a Schedule I drug under the Controlled Substances Act and the fact that many cannabis species are naturally-occurring. Applications for cannabis trademarks, for instance, have encountered resistance at the U.S. Patent and Trademark Office (USPTO) due to cannabis’s illegal status under federal law. Unlike trademarks, however, a patent does not require an applicant to show that the product is lawfully used in interstate commerce. Rather, a patent provides the right to exclude others from the invention, and there is nothing unlawful about obtaining such a right.
Prior to the Supreme Court’s decision in eBay v. MercExchange, 547 US 388 (2006), it was fairly routine for a victorious patent owner who prevailed on a finding of infringement in a federal district court litigation to assume that a permanent injunction would issue to prevent ongoing infringement. Despite the STRONGER Patents Act seeking to overturn eBay, Congress at large has no desire to disturb this Supreme Court decision and any bill that contains a provision overruling eBay cannot be enacted. In light of eBay, the U.S. International Trade Commission (ITC), which has always played a large role in patent litigation and enforcement strategies because of its statutory authority to issue exclusion orders and cease and desist orders, emerged as an important forum for patent owners.
I recently became frustrated after reading an essay in the AIPLA newsletter by an attorney with Taft Stettinius & Hollister LLP on the topic of the new USPTO-DOJ-NIST Joint Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments. I have seldom seen a writing where I disagree with everything a man writes, with the exception of a joke and his name. I took it apart paragraph by paragraph; my comments follow in red, while the author’s original text is in black.
Severing the Link Between IP and Biomedical Innovation Isn’t the Answer to Global Health Care Challenges
The cost of medicines is on the agenda this week at the World Health Organization’s annual executive board meeting in Geneva. Nongovernmental organizations and certain middle-income countries argue that market-based drug development—reliant on intellectual property rights (IPRs) as its primary incentive—makes medicines too expensive. It fails, they say, to provide cures for those most in need but least able to pay. On the fringes of meetings such as the one happening this week, nongovernmental organizations talk excitedly about a new model for drug development, in which research and development (R&D) costs are “delinked” from the final prices of drugs. They join notables such as U.S. Senator Bernie Sanders and Nobel prize-winning economist Joseph Stiglitz. One of the main “delinkage” proposals is to replace the patent system with government-managed prizes.
For the past several years, the patent offices in the United States and Mexico have operated under a type of patent examination fast-tracking and work-sharing agreement known as a Patent Prosecution Highway (PPH). This agreement between the United States Patent and Trademark Office (USPTO) and the Mexican Institute of Industrial Property (IMPI) was set to expire in June of this year, and the status of the program going forward was uncertain. But on January 28, the Offices announced a new agreement that promises to improve upon the PPH system by creating an even “more streamlined approach” to obtaining a Mexican patent once a corresponding U.S. patent is granted than that presently offered under the PPH.
An IPR petition must be based “only on a ground that could be raised under [35 U.S.C. §§] 102 [anticipation] or 103 [obviousness] and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). The “printed publication” basis for IPRs seems as fundamental an issue as one can imagine. But until late December 2019, the Patent Trial and Appeal Board (PTAB) offered no precedential decision explaining “[w]hat is required for a petitioner to establish that an asserted reference qualifies as [a] ‘printed publication’ at the institution stage.” The Board presented that broad question in an April 2019 order announcing it would answer that question through its Precedential Opinion Panel (POP). Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 15 (PTAB Apr. 1, 2019).
On Claim Construction, Predictability, and Patent Law Consistency: The Federal Circuit Needs to Vote En Banc
The Federal Circuit needs to go en banc more often. That is the unmistakable lesson not just in light of the Supreme Court’s recent denials of certiorari on the hot questions of patent law, such as Section 101 and its application to diagnostic testing, or to whether Section 101 involves underlying factual questions. It is also tied into the very reason that Congress created the court in 1982: to provide predictability, stability, and clarity for the U.S. patent laws and system. Without these attributes, the patent system suffers—who, after all, wants to invest in patents where the governing rules are unclear or unpredictable?
Much has been written about how artificial intelligence (AI) and machine learning (ML) are about to transform the global productivity, working patterns and lifestyles and create enormous wealth. Gartner projects that by 2021, AI augmentation will create $2.9 trillion of business value and $6.2 billion hours of worker productivity globally. McKinsey forecasts AI potentially could deliver additional economic output of around $13 trillion by 2030, boosting global GDP by about 1.2 percent a year. Companies around the globe are all racing to adopt and innovate AI and ML technologies. Indeed, by any account, much progress has been made and the adoption and innovation rates are quickening. But who is winning or leading in the race? A quick review of U.S. patent data may provide a glimpse into the state of the race.
In the increasingly global environment, our creators, inventors and innovators have continued to lean on the shoulders of the of intellectual property (IP) system as the core of the emergent global knowledge economy and a guarantee for private reward and public welfare. The products of intellect have continued to face opportunities and challenges presented by […]