IP WATCHDOG
JANUARY 1, 2025 12:15 PM
Yesterday, we heard what our readers would like to see happen in their wildest IP dreams this year, but some wishes are more likely than others to come true. So we start the New Year off today with some educated predictions about the year to come in IP, based on what courts have said, prospects for new leadership under the next presidential administration, changes to practice due to new fees and rules enacted at the U.S. Patent and Trademark Office (USPTO) in the previous year, and more.
Dana Gross, Morgan Lewis
The year ahead, much like the year that is coming to an end, will see significant changes to the rules and regulations that govern the rights of student athletes to exploit their name, image and likeness (or “NIL”) rights. The NCAA’s rules that restrict the NIL rights of student athletes were challenged time and time again in 2024 by various stakeholders. These challenges took the form of newly enacted state laws and executive orders designed to ensure that student athletes could freely exploit their NIL rights, as well as injunctions issued by federal courts that barred the NCAA from enforcing its rules that restricted the right of student athletes to transfer and or negotiate compensation for their NIL rights.
Most notably, three separate class-actions brought by former and current student athletes against the NCAA and the Power Five conferences – i.e., House v. NCAA, Hubbard v. NCAA, and Carter v. NCAA – resulted in a blockbuster $2.8 billion settlement that should – if finalized – allow NCAA member institutions to directly pay their student athletes for the use of their NIL rights. Separately, it seems like Congress may finally be poised to codify the NIL rights of student athletes and provide protections to the NCAA from future litigation of this nature. In fact, it is possible – albeit perhaps unlikely – that by this time next year a wholly new and reimagined version of the NCAA will have taken shape, with student athletes receiving direct payments from their universities, as well as other revenue streams tied to their exploitation of their NIL rights, which will be protected under federal law. At the same time, artificial intelligence continues to be a major focus in every industry, and its role in areas such as NIL protection and licensing (where the threat of digital replicas created by AI loom large), digital branding, and content creation will undoubtedly evolve, presenting new opportunities and challenges for stakeholders. It will be interesting to see how this “plays” out. In the meantime, IP lawyers will continue to wrestle with the evolving world of NIL, advising student athletes, universities, and brands on how best to navigate this uncertain and complex legal landscape.
AI in other fields, including product and invention development, will also continue to evolve, and AI tools and systems will increase the pace of innovation in 2025 and beyond, testing existing legal and regulatory frameworks in ways that will challenge the courts and government regulators and demand legislative action.
Adam G. Kelly, Venable LLP
I anticipate that in 2025 we will continue to see district courts address issues involving party disclosures, damages apportionment, divided infringement, licensee standing, litigation misconduct, and patent venue statute. In turn, resolution of those issues by the district courts will begat guidance from the Federal Circuit and other Appellate Circuits later in 2025.
Patrick Kilbride, Kilbride Public Affairs
Community observers are watching the nomination process like hawks and for good reason: personnel is policy. The incoming administration’s choice for Director of the U.S. Patent & Trademark Office will be expected to set the trajectory of U.S. IP policy and have outsized influence on the international debate as well. Taking cues from the selection of former Director Iancu in the first Trump administration is merely wishful thinking, however. Absent specific direction from the top, this critical role could go in wildly divergent directions. Keep in mind, too, that the role has gone unfilled for long periods of time. Neither the Trump One nor the Biden administration confirmed a USPTO director within their first 18 months. Biden never filled the role of White House Intellectual Property Enforcement Coordinator (IPEC).
Prediction: In the early absence of a USPTO Director, other IP-relevant—and Oval Office-privileged—political appointees, including the National Security Advisor, National Economic Council Director, U.S. Trade Representative, and Director of the White House Office of Science and Technology Policy, will shape IP policy at a high level. The innovator and creator community should work early with these appointees to drive a re-set of America’s international IP policy agenda in favor of strong, enforceable rights, heading into the debates to come on the domestic policy front with momentum.
Ryan Malloy, Morrison Foerster
I am hopeful that the next Congress and Administration will enact legislation increasing the number of federal district court judges nationwide. There is little disagreement that the federal judiciary is overworked. IP litigators see this firsthand, as we routinely litigate in uncertainty as we await decisions on key motions and claim construction for several months at a time. The timing of new judicial appointments will never be ideal to folks of every political persuasion, but staggering the appointments over a ten-year period is a reasonable compromise. The right time to begin the process is now.
Scott McKeown, Wolf Greenfield
The USPTO will spend most (if not all) of 2025 under an Interim Director until a Senate confirmed appointee can take the seat. Given that eventuality, there will little in the way of new policy, guidance, or regulation coming out of the agency in 2025. Interim directors are little more than stewards tasked with keeping the ship afloat until the political appointee is in place. What will be more interesting is the potential candidates for the Director seat, their policy viewpoints, and what mandate they will plan to pursue.
Over the past two administrations we have seen a tug-of-war between pro-patent owner policies at the PTAB under Director Iancu and then a resetting of some of those same policies under Director Vidal. My expectation is that the Trump appointee will be more of the mold of Director Iancu than Vidal, and sometime in 2025 we will see a pendulum swing back to the stricter discretionary practices of the Iancu administration.
Matthew Montgomery, Holland & Hart
One key thing to watch will be the strategic changes patent filers make in response to the USPTO’s fee increases. Among other increases, the USPTO introduced new fees for filing continuation applications 6–9 years after the priority date ($2,700), as well as for filing continuation applications 9+ years after the priority date ($4,000). These increases may accelerate filings ahead of the effective date of the fee increases and may affect budgets and continuation filing strategies for patent filers moving forward. Fee increases were also approved for trademark applications, which may similarly affect trademark filers.
Additionally, it is likely that AI will take on an increased role in patent drafting. While AI tools have been used in patent drafting and prosecution for some time, some law firms and patent filers have been reluctant to utilize these tools for various reasons. However, many AI tools have significantly improved to the point where, for those resistant to change, it might no longer make sense to refrain from using them, as these tools can provide value to both law firms and patent filers. From a law firm perspective, some AI tools offer enhanced efficiency and cost reduction, which is paramount in today’s economy. Such tools may also offer improved consistency across patent applications, which may minimize procedural rejections and otherwise improve the overall quality of patent filers’ portfolios. Overall, I foresee a significant uptick in the use of AI tools for patent searching, drafting, and prosecution in 2025.
Brad Pedersen, EnQuanta
The PREVAIL Act prevails and is enacted, and PERA continues to languish.
Kevin Schubert, McKool Smith
In 2025, we will continue to see debate over whether the recent uptick in large verdicts in patent cases – with an average of roughly a dozen nine-figure verdicts per year in the last few years – is the sign of a healthy patent system that is encouraging innovation and investment in research and development in the United States or if changes are needed. One of the key cases to keep an eye on will be how the Federal Circuit rules en banc in EcoFactor v. Google. If the Court rules in Google’s favor, it could have implications on the ability to establish damages based on portfolio licenses without sufficient proof that the value of those licenses can be attributed to the particular patent(s) in litigation.
Nick Schuneman, Partner at McDermott Will & Emery
Expect increasing globalization of standard-essential patent (SEP) disputes in 2025.
The European Unified Patent Court (UPC) could see a surge of SEP infringement suits. In Panasonic v. OPPO (November 2024)—the UPC’s first decision on SEP issues—the court adopted the patent owner-friendly fair, reasonable, and non-discriminatory (FRAND) royalty negotiations standard applied by German courts (over the more implementer-friendly approach advocated by the EU Commission) and recognized the availability of injunctions as a remedy for SEP infringement. This should further cement this fast, affordable, and geographically-strategic court as the forum of choice for SEP owner-plaintiffs.
On the flip side, we could see potential SEPs seek FRAND royalty determinations from UK, Chinese, and Indian courts, all of which have recently asserted their authority to determine such royalties on a global basis and are generally viewed as implementer-friendly.
We could also see further movement towards SEP regulation overseas. An expansive set of SEP regulations passed by the EU Parliament in February 2024 is still awaiting approval by the Council of the EU. And it remains to be seen how Chinese courts will apply the Anti-Monopoly Guidelines for SEPs released by the State Administration for Market Regulation in November 2024. Among other things, those Guidelines imply that common complaints from SEP implementers—e.g., SEP owners demanding above-market royalties or asserting invalid or expired patents—could indicate an abuse of dominant market position.
Wendy Verlander, Verlander LLP
2025 may usher in big changes. For one, there will be a new PTO director, who will be able to move the Patent Office in a very different direction. Which direction, though, is anyone’s guess. The PREVAIL bill will be heard by the senate and possibly pass, reversing more than a decade of fairly one-sided adjudications of patent validity. AI will play an even larger role in innovation but, given the complexities inherent in legal work, particularly in IP, will AI also play a larger role as a tool for the lawyers? The PTO and ITC could see its regulations set aside as the overturning of Chevron begins to have an effect. The UPC will become an even more important jurisdiction for litigating patent disputes. And, additional courts may demand the type of litigation funding disclosures required in Delaware, further upsetting the ability of patent owners to enforce their patents.
Jacob Wharton, Womble Bond Dickinson
AI will continue to dominate copyright law in 2025. Rights holders will continue to bring more infringement actions. Creators will continue to seek protection for works made in whole or in part by AI and run into resistance in the Copyright Office and courts. We will not likely get resolution of many AI-related issues in 2025. We hopefully will see Congress wade into these issues.
My clients are seeing an increase in copyright trolls, mainly with respect to photographs and images. There seems to be a growing cottage industry representing photographers seeking modest payouts for images that appear on social media, blogs, and websites. The images may have been used years ago and must be located using unique identifiers that the photographers embed in the images.
Something to keep an eye on will be the Copyright Claim Board (“CCB”). Started in 2022, there were, at first, few filings. The CCB should hit 1,000 claims filed in late 2024 or early 2025. For matters involving claims up to $30,000, this could be and should be a forum for lower cost resolution of claims. Both parties must consent to proceeding before the CCB so this keeps the number of claims filed low.
Lastly, while the SHOP SAFE Act has received much press, I think copyright owners will continue to use copyright claims in their efforts to hold online marketplaces more liable for counterfeit products.
Josephine Young, Groombridge, Wu, Baughman & Stone
It will be interesting to see what happens with the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. Given that it had a bipartisan majority coming out of the Senate Judiciary Committee, albeit a narrow one, it seems possible that PTAB-reform may be coming. In the pharma space, we’ll be watching to see how the law of inducement develops in “skinny label” cases, particularly considering the Federal Circuit’s Amarin v. Hikma decision this year denying Hikma’s attempt at early resolution.