Facing major legal developments, especially in the US and Europe, IP owners have to constantly work at the forefront of IP law to maintain competitiveness and protect their most valuable assets. New amendments to the America Invents Act (AIA), first outcomes of post-grant proceedings, an increasingly activist Supreme Court and major changes to the international tax system affecting your intangible assets pose incredibly dynamic and challenging problems.
With focus on litigation, licensing, patent protection and IP commercialisation in the US as well as the most important global developments, the MIP US Patent Forum 2014 is a learning opportunity for leaders managing IP portfolios in the US and abroad.
This forum took a close look at the most recent challenges to IP, which included: a guide to improve your company’s patent application process post-AIA; an evaluation of post-grant proceedings; new updates on the European unified patent court; and analysis of recent standard essential patent (SEP) litigation between Apple and Samsung.
Key take aways
Key note - Michelle Lee
- USPTO to improve patent system with help from industry and IP experts – it is a combined task
- Three executive orders are in place to guide future of USPTO:
1) Make it easiest for companies, experts and individuals to provide prior art. Examiners tare trained to crowd source prior art
2) Additional training for examiners - academics, in house and private practitioners are invited to come to USPTO to give pre-existing presentation on topic of their expertise – they will be streamed online for all USPTO staff to access.
3) Pro bono to be utilised more in order to improve patent system.
The total user experience: Improving the content and quality of your company's patent
application process post-AIA
- Don't limit yourself to patenting the final product. If there is any type of interaction with a user, it might be a good angle to patent the product this way.
- See: "Slide-to-unlock" invention
- The key to consumers loving a product is consumers understanding the product. You can include a set of instructions to users in your patent application.
Life science panel: How to deal with an increasingly "activist" Supreme Court
- Prevailing view on Supreme Court: Worrying
- "The ball is rolling down the hill" - Court decisions may have much broader impact on industry than anticipated.
- "Guidelines laid down by the PTO are horrifying to the industry" (Sherry Knowles, Knowles Intellectual Property Strategies)
ITC panel: Litigation and licensing
- Exclusion orders are only the beginning. Once you get one, you have to make sure it's enforced properly.
- Set up a meeting with CBT to assist them enforcing your exclusion order:
- bring materials, samples, presentations
- Exclusion orders are a lot of effort and work, but they are definitely worth it.
Litigation planning and forum shopping in Europe
- You have to think about UPC right now, no matter if it comes into effect 2015 or 2020
- Businesses plan 20 years ahead with (patent) strategy and investment, and UPC will have such a huge impact it needs to be incorporated in your strategy right now
- India is a regulatory minefield
- However, perception is much worse than reality
- India is a social democracy, and therefore public health concerns will remain of importance. Still, this is limited to pharma and other sectors do not have to worry
Perspectives from the bench: The Inter-relationship between the District Courts, the
Federal Circuit, and the Supreme Court
- Courts are not close enough – lack of understanding
- Clerks are a great way to bridge gaps between different courts
Post grant proceedings
- Very successful system so far
- PTAB publishes valuable data and statistics freely available on their website
- PTAB open to give advice and training on post-grant
Tackling the trolls: Legislative trends towards NPEs
- Discussion focused on self-interest of the parties and not on reality
- "Everyone who enforces a patent against me is a troll"
Legal developments in China
- Legal system is improving very quickly
- Plenty of opportunities out there
- 80% of foreign enforcement actions are successful