Managing IP’s second annual US Patent Forum took place on March 19, 2013 and for the second year running hosted a most engaging set of panellists contributing insightfully to debates on the matters most pertinent to the US patent system and its practitioners. Yet again, the audience were treated to a highly prestigious line-up including, Chief Judge Rader, Judge Michel, Teresa Stanek Rea, James Pooley, Commissioner Lehman and James Crowne. One year on from the reforms, and a mere three days after the introduction of the first-to-file, there was plenty to be discussed and an array of opinions to be shared and contested.
Through looking at issues such as NPEs, IP monetization, eligible matter in bio-pharmaceuticals, and the role of the ITC in the litigation landscape the US patent system and market were put under scrutiny. Further to this delegates were delivered key updates from Europe regarding the unitary patent and unified courts as well as somewhat divided perspectives on China and opportunities and frustrations at hand.
Key TAKEAWAYS from the Forum are:
Keynote Address, Teresa Stanek Rea, Acting Director of the USPTO
- The AIA has encouraged innovation, work-sharing, reduced costs, efficiency and harmonisation. Change has taken place in a way that is both procedural and substantive
- Patent applications have been 3-4 times the normal number in the last week as it was the run up to first-to-file
- The USPTO hired 1505 patent examiners last year and they expect to have hired 500 more by June 2013 so as to keep up with implications of reforms
- The internet’s role in crowd sourcing for best capture of prior art is a matter of great anticipation
Opening Plenary: Where have we come in 12 months?
- ‘Developing and marketing products is a better driver of business than buying patents’
- ‘Patent quality’ needs rethinking. If it’s an incremental step, give it an incremental return
- In 2007 AIA was meant to be a litigation reform bill – but the litigation aspects were removed by 2012 – thus the NPE problem remains and thrives
- NPEs: Solve the problem at the source; don’t change the whole procedural system. Judges should be allowed to remedy the problem on a case by case basis. This would not require a change to legislation
- An expensive patent system results in the frequent use of blackmail: Is winning more expensive than losing?
AIA and NPEs: Impact or more of the same?
- Niro: the ongoing furore over NPEs manifests as an attack on individual inventors
- Critique of examination techniques; a greater emphasis on claim construction is vital. It needs to be done early and with minimal discovery
- In a troubled economy ROI in patent litigation is still very high and attracts investment; money is being poured into the market. Patent litigation is being commoditised: is this good for America?
- Cost of litigation should be deferred: Judges should be free to do so, based on the facts of each individual case
Monetization of Patents: Strategies for maximising return on investment
- The greatest challenge within tech transfer is communication: Conveying the need for inventors to plan their filing thoroughly and in advance
- US universities benefiting from Asia
- When developing a patent portfolio one must take into account the level of technology at the different corporations with whom you are working and also of the varying laws and levels of legal sophistication in different countries
- Investment banks are actually pouring money into all aspects of IP – not just litigation
- Emphasis on ‘patent mapping’ and competition analysis
Life Sciences Focus
- Some are questioning whether the Prometheus and AMP decisions truly represent a threat to a life science or pharmaceutical company’s business model
- A dynamic environment has changed the investment-terrain for life science companies
- An array of global IP changes are also impacting the industry and business
- Some companies are changing their views on the need for obtaining patents; they are also looking more deeply at alternative methods such as trade secrets. This has impacted due diligence both for buyers and sellers
- This environment has made it much more attractive for companies to challenge patents and to steer closer to the line than before. Some argue that pharmaceutical companies are becoming more aggressive in challenging patents than before
- Recent rules designed to streamline proceedings
- There has been a surge in recent activity
- The AIA and FRAND are impacting ITC proceedings
- The ITC is having notable affects on NPEs and the US litigation environment
Doing business in China: Ensure that your patented assets are making money for your company
- US companies are worried that Chinese government agencies are using market access and investment approvals to compel foreign firms to license or sell their IPR to domestic Chinese entities
- There is speculation that Chinese government is using certain policies intended to promote “indigenous innovation” to disadvantage foreign enterprises through measures or actions that effectively coerce the transfer of IPR from foreign rights holders to domestic entities
- China has a growing internal market in Patents
- China monetizes through patent market rather than through litigation
- In 2011, residents of China accounted for 79.9 % of the 526,417 patent applications filed at SIPO From 2009 through 2011, China accounted for 72.1% of the growth in worldwide patent applications