Posts in Guest Contributors

Dear Patent Attorney, Please stop filing extremely short, overly broad patent claims. I recently conducted a study to measure the effectiveness of various prosecution strategies. The study covered over a hundred thousand patent assets pursued by software companies, and for this sample, I found that filing extremely short, overly broad patent claims is a bad strategy in just about every way imaginable.

User fees fund our patent system. The patent system turns ideas into assets. Those assets are used to secure financing and gain access to markets. Financing and market access fuel the rise of new industries, businesses, and jobs. Regrettably, however, those user fees are frequently diverted to fund other, unrelated government agencies and programs, which amounts to a tax on innovation.

On May 6, 2016, the U.S. Patent and Trademark Office released new life science examples on subject matter eligibility (Examples 28-32, consecutively numbered after the previously released USPTO examples). Examples 28 and 30 illustrate the application of the “markedly different” and “significantly more” analysis to nature-based products. Examples 29 and 31 illustrate the USPTO approach to the eligibility analysis of diagnostic claims, which has been much anticipated. Finally, Examples 32 and 33 illustrate the use of a streamlined eligibility analysis. At first glance, the new life science examples, which identify most of the presented hypothetical claims as patent-eligible, provide several teaching points for achieving patent-eligibility in commonly encountered situations in the life sciences area.

Inventors and investors demand a system that affords predictable and durable intellectual property rights in a timely manner. If the system that we implement for granting patent rights does not meet those criteria, inventors will not make use of the system, the public store of knowledge will suffer, and investment in innovative and entrepreneurial domestic enterprises will diminish. Perhaps more importantly, if those rights are not found here, the procurement of intellectual property rights and associated investment and commercialization will move to foreign lands. The result will be lower domestic economic output, fewer jobs, and a decline in American innovation.

Improving access to needed medicines for those suffering the ravages of disease in developing countries is a serious issue. There are many factors contributing to the problem including poor transportation systems, lack of available health care and education, endemic poverty, trade barriers, systematic corruption and, of course, the cost of drugs. Yet the U.N. Secretary General’s High-Level Panel on Access to Medicines is focusing on the patent system as the source of the problem. The report is due next month. The Panel is to “address the policy incoherence between intellectual property laws and access to medicines.”

When a standard faces competition, it is essential to be the first on the market with products and to establish the highest market share. The network effect will make it increasingly difficult for competing standards to get a foothold. Two competing standards will, therefore, be under pressure to gain market share in the early stages of adoption by getting to market first, with superior performance, and with the lowest price. In view of the network effect, getting to market first is usually the highest priority. But in the early stages of adoption, being a little bit later with superior performance is still viable.

The Court noted that decisions related to compliance with the Board’s procedures are reviewed for abuse of discretion. As far as the “reasonable expectation of success” requirement, the Court noted that the Board improperly looked to whether one would reasonably expect the references to operate as those references intended once combined. The Court held that this was the incorrect standard, and instead one must have the motivation to combine with the expectation of achieving what is claimed in the patent-at-issue. The Court held, however, that while the Board conflated the reasonable expectation of success standard and motivation to combine, it nonetheless made sufficient factual findings to support its judgment that the claims at issue were not invalid.

The DTSA amends the federal Economic Espionage Act of 1996 to create, for the first time, a federal civil remedy for the misappropriation of trade secrets. This new law provides a clear path to enforce trade secret rights in federal court. Proponents of the DTSA argue that this will lead to more uniformity and predictability in applicable standards. However, that remains to be seen. The DTSA does not preempt any existing state laws governing trade secret enforcement. Accordingly, to the extent that state laws differ from each other and the DTSA, the differences will likely persist despite the new federal scheme.

Addressing the issue of whether a famous mark can be diluted by the identical mark of a much smaller company, the US Court of Appeals for the Seventh Circuit decided that the district court rightly dismissed trademark infringement claims and cross-claims where neither party had been, or was likely to be, harmed by the other. Hugunin, et al. v. Land O’ Lakes, Inc., Case No. 15-2815 (7th Cir., Mar. 1, 2016) (Posner, J).

Industry self-regulation is the most efficient and least disruptive means for realizing the benefits of our patent system. It will bring greater certainty to IP-related transactions, and support collaboration to enhance the creation, development, and commercialization of new products and services. It will advance the Constitutional imperative of promoting the progress of the useful arts. By drawing upon the skills, insights, and resources of the diverse community of IP and business development experts, LES will ensure a fair and equitable system of standards that will benefit both society as a whole and the innovators who depend on that system.

Given the importance of intellectual property rights to economic growth and technological development, as well as the wider benefits of biopharmaceutical research, the provisions found in the recently negotiated Trans-Pacific Partnership (TPP) Agreement to protect biologic medicines are disappointing… As clinical trials become increasingly costly, these costs are increasingly born by the biopharmaceutical industry. A recent study from the Johns Hopkins Bloomberg School of Public Health calculates that the biopharmaceutical drug and medical device industry now funds six times more clinical trials than the federal government.

On April 27, 2016, Congress passed the Defend Trade Secrets Act (“DTSA”), which President Obama is scheduled to sign later today. The DTSA extends the current Economic Espionage Act of 1996 (“EEA), which criminalizes trade secret thefts, to the civil arena. This means for the first time, trade secret owners can now bring suits in federal district courts, without having to resort to another basis for jurisdiction, such as the ill-fitting Computer Fraud and Abuse Act. While not without critics, the DTSA is a major step forward in the protection of intellectual property in the United States, not least because federal law now fully recognizes four types of intellectual property (patents, copyrights, and trademarks). This article highlights five important things that every trade secret owner should know, which includes almost every company in the U.S.

The best patents are those that multiply an investment and actually generate money on their own… Standards essential patents are the holy grail of patents in today’s business landscape. Most startups are focused on getting a product to market quickly, getting validation, and starting a revenue stream. Once there, the startups begin to scale. If there is any chance that a startup’s technology – even a piece of it – could be incorporated into an industry standard, the patent needs to be investment-grade. In these situations, multiple patents would also be a good investment.

Regulators face a twofold challenge: First, they need to balance the legitimate interests of patent holders and licensees in order to determine which activities and contracts the law will enforce, or otherwise recognize as creating legal rights. Second, they need to establish rules that minimize both the costs of assessing a given case, and the costs of taking wrong decisions. One traditional approach has been to use antitrust law.

“Patent troll,” the term employed by leading newspapers, magazines and online publications to describe how some patents are owned and used, provides a prejudicial impression of patent licensing that unfairly influences attitudes towards disputes. This is among the findings of the research conducted by Illinois Institute of Technology – Chicago-Kent College of Law Professor, Edward Lee.