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Looking ahead to 2020: Lawyers contemplate key US patent cases

Practitioners say that there could be significant IP shake-ups from the US Supreme Court, but that reform from Congress is unlikely

No one has 20/20 vision when it comes to the future, but with several Supreme Court cases granted certiorari, the rulings could have substantial implications for the IP space this year.

SCOTUS and patents

The Supreme Court ruling in Thryv v Click-To-Call Technologies is also expected to affect the patent space.

A provision of the America Invents Act (35 U.8.C. § 314(d)), states that inter partes review (IPR) may not be instituted if the petition requesting an IPR is filed more than one year after the petitioner receives a complaint alleging infringement. Another provision, says that the “determination by the director whether to institute an [IPR] under this section shall be final and non-appealable”.

According to the Supreme Court docket, the Federal Circuit held that a “PTAB decision to institute an IPR after finding that the … time bar [of one year] did not apply was appealable”.

The Supreme Court case is expected to rule on this decision and determine “whether 35 U.8.C. § 314(d) permits appeal of the PTAB's decision to institute an [IPR] upon finding that [the one-year] time bar did not apply”.

Section 101

In the coming year, lawyers will also keep their eyes on Congress to see if the legislative branch passes any IP reforms.

One of the most significant potential changes involves patent subject matter eligibility. Recent Supreme Court decisions have introduced judicial exceptions to patent eligibility, which limit the subject matters that can be patented.

Many in the IP community disagree with these decisions and argue that they have created uncertainty in the market. To address this, Senators Thom Tillis and Chris Coons have introduced draft legislation stipulating that “provisions of section 101 shall be construed in favour of eligibility”. Congress held hearings in 2019 to address section 101.  

Matthew Wagner, general counsel at PDC Brands, in Stamford, Connecticut, says that patent eligibility reforms are of interest to his company.

“We see that there are patents being applied for and granted on fairly limited ‘inventions’ which relate to techniques or beauty products that have been in existence for many, many years and decades, and parties asserting patent rights to which, upon examination, they’re not entitled,” says Wagner.

“That creates inefficiencies in the business because we have additional expense which we need to allocate towards new product development and defensive manoeuvres and the like.”

Still, many lawyers are sceptical that legislative change will actually happen this year. 

“I wish that I could say that legislation is forthcoming, but from what I’ve seen and from colleagues that I’ve had this conversation with, not many people are hopeful that we’re going to see anything in 2020,” says another source.

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Counsel at IBM, Novartis, BMS and four other companies delve into whether the new Section 101 bill addresses their concerns
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Italy is in pole position to replace London as a central division host but must weather a political storm first
The senator’s proposed Section 101 legislation would cut down on exceptions to patent eligibility in the US
Ken Korea, founder of Colev Law and former head of US IP at Samsung, sets out the problems with anti-suit injunctions and the problem of getting rid of them
Thom Tillis and Patrick Leahy introduced a bill that would evaluate the need for recording examiner interviews, among other measures
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