IP WATCHDOG
JANUARY 1, 2024, 12:15 PM
On day one of the new year, we continue the IPWatchdog tradition of asking readers what they would like to see happen if their every IP wish could come true. Some commenters stuck with more realistic asks, such as for patent eligibility reform to move forward or that an extension of the waiver of IP rights under the Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPS) will be opposed. Others went out on a limb by pulling for a new central patent court based in Hawaii or that congress will get its act together, for instance. Of course, the most popular dream articulated below is once again that patent eligibility certainty will be restored, either by the courts or congress.
Add your own wildest dreams in the comments below, and remember to have a
HAPPY NEW YEAR!!!!
Alden Abbott
Mercatus Center
“My wildest dreams require new Executive Branch IP policy leadership. I would hope that such new IP policy leadership would: (1) restore as official antitrust enforcement policy the “New Madison Approach” to patent licensing, championed by former Assistant Attorney General for Antitrust Makan Delrahim; (2) oppose all World Trade Organization TRIPS waivers of intellectual property rights (see here for a critique of a TRIPS waiver for COVID-19 medicines); (3) disavow support for price-related exercises of march-in rights under the Bayh-Dole Act (see here and here); (4) restore the Trump Administration’s 2019 Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments (see here for description of 2022 withdrawal of the 2019 Statement); and (5) support In principle legislation that would eliminate judicial limitations on Section 101 patent subject matter eligibility (see here, for example) and that would restore the presumption favoring injunctions when a patent is infringed, statutorily overruling the Supreme Court’s eBay decision. Let us continue to “dream the impossible dream.”
These are some big specific changes, but more generally, the new IP policy leadership should restore an appreciation of the importance of strong patent rights to innovation and economic growth, rather than maintain the anti-patent mindset that has permeated Administration policy during the past three years.”
Robert Greenspoon
Dunlap Bennett & Ludwig
“The Supreme Court grants a patent subject matter eligibility cert petition, leading it to overrule Gottschalk v. Benson as wrongly decided. Benson was based on the overblown (and nonstatutory) belief in 1972 that the USPTO lacked institutional capacity to examine software inventions – a belief that subsequent decades proved wrong. The Court will declare (as it did in 1980) that the section 101 front door of the patent system is for “everything under the sun made by man,” and sections 102, 103 and 112 are for the real work of patent eligibility assessments. The Court will reflect on the early 1970s as an era of judicial activism, whereas the Court in the present day holds deeper respect for statutory text – and Congress wrote no ‘exceptions’ to eligibility into section 101.”
Efrat Kasznik
Foresight Valuation Group
“At the dawn of a new year, it is once again time to wish that better awareness of IP management and value creation emerges in the US corporate world. It is broadly agreed upon that in order to keep the lead on innovation, IP needs to be top of mind for US corporations. And yet, there are groups who control resources and strategies in the corporate world, who lack the basic understanding of how IP brings value, creates a strategic advantage or mitigates risk. It is incumbent upon boards of directors, VC investors, C-Suite executives, and similar groups to pay more attention to IP strategy, making it a regular part of their duties. It would also be nice if these groups improved their IP management protocol not because they have been burned by litigation or lost in competition, as is often the case, but because they understand and believe in the benefits of effective IP management. Proactive IP management as opposed to reactive IP damage control, that is the hope for 2024 and beyond.”
Blair Jacobs
McKool Smith
“Like many prior wishes concerning the patent system, my first wish would be that Scott McKeown’s wish of last year, that the U.S. District Court for the District of Hawaii becomes the central venue for all patent disputes in the U.S., was realized. But alas, like many patent dreams, this one seems about as likely to happen as consistent patent eligibility rulings from the Federal Circuit and district courts. So, my wildest patent dreams are instead things that are achievable, such as harmonization of estoppel implications when IPRs are filed during a litigation, obtaining a hard-earned damages verdict and knowing there is a good chance it will be upheld, global harmonization of FRAND policies concerning SEPs and a significant increase in gender and racial diversity in trial teams in cases involving high stakes patent claims. Finally, achieving parity and a proper balance of interests when it comes to incentivizing innovation is a wild dream that best serves the interests of everybody involved in intellectual property.”
Steve Kunin
Maier & Maier
“I would be pleasantly surprised and thrilled if Congress can resolve the patent subject matter eligibility problems that have been created by the Supreme Court and Federal Circuit. At this point I don’t see a solution coming from the federal courts or the USPTO. I hope that Senators Tillis and Coons will be able to overcome the roadblocks that are hampering a legislative solution that provides clarity in the law and promotes innovation.”
Edward Lanquist
Baker Donelson
“That Congress will get their act together (which they will not) on IP issues. Congress needs to clarify subject matter patentability as opposed to going forward with the flawed Alice analysis.”
Kimberly Miller
Knobbe Martens
“For 2024, one wish would be for the USPTO to get rid of the duty of disclosure such that Information Disclosure Statements would no longer be required. Another wish would be that countries have a more unified approach to continuation/divisional practice. For example, some countries do not allow for divisional applications unless there was a finding of lack of unity in the parent application, while other countries allow divisional applications to be filed even though a finding of unity was found in the parent application. For applications that enter that national phase from a PCT application, a wish would be that Examiners would give deference to the findings of the International Searching Authority (ISA). An example would be that national patent offices give deference to the ISA’s finding of unity of invention. By giving deference to the findings of the ISA, the backlog of cases in patent offices could be reduced. A further wish would be that the Best Mode Requirement be removed as a requirement, as it seems to have lingered from pre-America Invents Act. A final wish would be that countries patent laws would anticipate the impact of AI, for example, with respect to inventorship and infringement.”
James Perkins
Cole Schotz
“On my wish list for 2024 is certainty.
Certainty can come in many forms.
Certainty can come from passing the PREVAIL Act and its provision that requires a party to choose between litigating invalidity at the PTAB or in District Court.
Certainty could also mean passing PERA and bringing some predictability to 101.
Certainty can come from other legislation so long as it is drafted with clear, bright line rules that do not leave their scope and application to the courts to resolve.
Certainty came come from the Federal Circuit reversing its policy to avoid resolving any issues that are not necessary to decide the immediate appeal. When the Federal Circuit punts on an issue, it can take years or decades for the issue to come back in front of the court. Congress created the Federal Circuit to promote predictability and uniformity in patent law. The Court’s narrow approach to resolving its cases undermines Congress’s purpose and creates uncertainty.
Certainty is good for innovation. And it is good for our clients’ time and resources no matter what side they are on in a dispute.
I hope for more certainty in 2024.”
Manita Rawat
Morgan Lewis
“My wish for 2024 is to see guidance from the USPTO on artificial intelligence (AI) related technologies. New software technologies implementing some form of AI are emerging. These inventions pose issues, such as whether AI can be an inventor and whether AI-assisted inventions meet the current eligibility requirements for patent protection. President Biden’s recent executive order (EO) on the safe, secure and trustworthy development and use of AI will require the USPTO Director to publish guidance for patent examiners and applicants in 2024. This guidance will, hopefully, provide examples of AI’s different roles in the inventorship process and how inventorship issues should be evaluated. The guidance will likely also clarify whether AI could eventually be listed as a co-inventor with a human, and if so, how ownership will be attributed. The Director will also be required to provide guidance on AI in the context of patentable subject matter. Of particular importance will be whether examination of certain types of AI-related patent applications could be treated differently than examination of other types of patent applications. The guidance will also likely identify whether any additional criteria needs to be met for AI related inventions to be patent eligible.”
Ahsan Shaikh
McDermott, Will & Emery
“My wish is for a concise articulation of what is considered subject matter eligible by the USPTO that follows in full alignment with a new US judiciary opinion (e.g., at the Supreme Court or Federal Circuit) on this issue. If that is not available as a stocking stuffer, then in its place I wish for effective US legislation that accomplishes this same goal.”
Joachim Steinberg
Crowell & Moring
“Investment in AI, both in startups and through established technology companies, is booming. And that investment is being seen across sectors, for enterprise technology, and for consumer-facing products. By all indications, we are in the middle of an explosion in innovation, as long as we can get out of our own way.
The concerns with AI are real and must be taken seriously. Questions over how we are going to protect consumer safety and privacy rights, and what intellectual property rights will look like need attention, time, and committed thought. So, my wish for 2024 is for everyone to slow down and take a breath.
As it stands, cases are already working their way through the federal courts. Agencies, including the Copyright Office, are releasing rules and guidelines, and Congress seems very keen to act. All of that is great, as long as it its tempered with an understanding that we are in the early days of a major shift in the way technology works. Rather than impose rules immediately, the best thing would be for our lawmakers to watch carefully and balance the need for guard rails against the potential for innovation.”
Gwendolyn Tawresey
Troutman Pepper
“I have two wishes for 2024: as with everyone, I hope 2024 is the year that section 101 finally sees some reform, either from Congress or from the Supreme Court. I suspect if it happens, it will come from one of the reform bills making their way through Congress. But I would be interested to see how Alice and its progeny fare under the Supreme Court’s professed textualist philosophy. My second wish is a long shot. I would like to see public sentiment toward the patent system change. Lobbyists and other interested parties have been effective in playing up the systems’ abuses on all sides over the last few years, leaving a lot of misunderstanding in the public on what the patent system is and does. It would be easier for Congress to make rational policy decisions if public sentiment was more neutral.”
Wendy Verlander
Verlander LLP
“Regardless of what side you find yourself on, I think we can all agree that the patent system has become very one-sided and that is not good for innovation in this country. For that reason, in my wildest dreams, PERA and PREVAIL will be enacted, along with a bill undoing the eBay requirements for an injunction. That trifecta would return the system to one that more appropriately values patents and provides the necessary incentives to promote innovation and investment.
Court-made exceptions to patent eligibility have significantly eroded the patentability of software and diagnostic inventions. IPRs, with their lower burden of proof and greater availability, have invalidated patents at a much greater rate than at district court and, unlike their stated purpose, have complicated – not simplified – determinations of patent validity. And, injunctions have been mostly nonexistent since eBay, even though patent owners are statutorily granted “the right to exclude others” from their inventions. That doesn’t exist without the right to an injunction.
The patent system needs to restore balance and, with that, the value of patents. In my wildest dreams, that happens in 2024!”
