What Scares You? A Few of the Most Frightening Developments in IP Law

https://depositphotos.com/4039403/stock-photo-cemetery-with-old-gravestones-and.htmlIntellectual property (IP) law developments may not be high up on most people’s list of worst nightmares this Halloween, but for IP owners and lawyers, they can cause a fright.

During IPWatchdog’s recent Life Sciences Masters 2022, for example, panelist Robert Sahr of Wolf Greenfield commented that obviousness-type double patenting (OTDP) law “is dark and full of terrors” for life science patent holders. Sahr recounted the evolution of this issue, starting in April 2014 with the U.S. Court of Appeals for the Federal Circuit (CAFC) case, Gilead v. Natco, which suggested that “any patent could be used as a reference against any other patent for purposes of double patenting,” including children in a patent family where the parent has a different amount of Patent Term Adjustment (PTA) than the children. In the Gilead case, the CAFC said it’s the expiration date of a patent that should control the analysis, rather than the date of issuance. By the end of the afternoon [on the day the Gilead decision came out], I sent out an email and the subject line was ‘the sky is falling,’” Sahr said. While the law has taken some twists and turns since then, a recent Patent Trial and Appeal Board (PTAB) ruling, Ex parte Cellect, reiterated this interpretation, and so OTDP issues continue to plague life science patent owners and IP attorneys. “Eight years [after I first] wondered if the sky is falling, I’m still wondering” Sahr said.

From patent eligibility to the economy, here are a few more thoughts on the scariest IP issues out there; add yours in the comments below—if you dare.

Andrew Coffman, Phelps Dunbar

I’m afraid that companies will be so distracted by all the cool web3, non-fungible token (NFT) and the metaverse toys that they will forget that brand and business protection starts with boring trademark registrations, non-disclosure agreements, and trade secret confidentiality policies. I believe in web3, but failure to protect your company and police your brand in the metaverse will destine your company for failure in the metaverse. Every time somebody in the C-suite gets excited about web3, make sure you tell them they first have to spend the time and money to get the physical world and web2.0 house in order.

Francesca L. LaMontagne, Tucker Ellis LLP

A scary development in patent law is the consistently fluctuating unknowns surrounding Section 101. Recently, in American Axle v. Neapco (Fed. Cir. 2020), a patent was invalidated under 101, despite having what many people may view as concrete claims in the mechanical arts. The Court ruled the claims were directed to a judicial exception-natural law because Hooke’s law (spring-force equation), while not directly recited in the claims, was inherently present. The court applied a new test dubbed the “Nothing More” test. If the claim is an application of the natural law and “nothing more,” then it is not patent eligible subject matter. The court stated that the claimed method did not have the requisite physical structure, nor were the claims directed to achieving a result based on the application of Hooke’s law rather than on how Hooke’s law was applied. It seems no patent is affirmatively safe from potential invalidation regardless of its field of invention. Ironically, it was in a letter from Sir Isaac Newton to Robert Hooke that Newton wrote, “If I have seen further, it is by standing on the shoulders of Giants.”

Molly Metz, JumpNrope

What scares me most is the USPTO is pushing for women innovators to get patents, but meanwhile they are taking patents away from women [and other] innovators. I am scared for what these women might face, like I did. My patents didn’t protect me. Basically, I’m scared because the USPTO is giving a false promise of protection for our life’s work.

Austin Padgett, Troutman Pepper

Like the suspense of the next scare sequence in a horror movie, we are alert to the monsters around the corner that flow from a weakening economy.

We can hold onto the edge of our seats and anticipate that any layoffs or downsizings can expose a business’s intellectual property to challenges from former employees or jilted contractors. The economic conditions, particularly where a former employee does not find a new position, can drive once-sensible allies to madness. Locking the proverbial doors to the house through strong and consistent agreement practices is, of course, an important step. But taking practical steps—like cleaning up domain name registration records—can keep the zombies from creeping up the basement stairs.

We are also looking out for the mutations arising from lower sales and performance across industries, specifically in claims of false advertising and unfair business practices.  These conditions can create a two-headed monster. On the one side, when the industry is down as a whole, the unbridled or rogue sales team might develop more aggressive pitches and comparisons to competitors. On the other, competitors become more hostile to perceived slights, disadvantages, and industry newcomers. If left unmanaged, the result can be a true thrasher flick.

 

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8 comments so far.

  • [Avatar for Eileen McDermott]
    Eileen McDermott
    November 3, 2022 04:05 pm

    We had to move our entire site to a new server this week – things have been out of whack all around but should be back to normal now.

  • [Avatar for Anon]
    Anon
    November 3, 2022 10:47 am

    I will note that the e2e hyperlink provided by the Office did automatically initiate the new P-Tacts link.

    This may be merely a temporary thing though.

  • [Avatar for Anon]
    Anon
    November 3, 2022 10:45 am

    Apologies for the numerous “please check filter” messages – but the posting from thread to thread has been very inconsistent.

  • [Avatar for Anon]
    Anon
    November 3, 2022 10:43 am

    Pro Se

    Thanks for the link – surprisingly it is still good (e2e having been retired recently).

    Would you suggest any of the 114 documents in particular?

  • [Avatar for Pro Se]
    Pro Se
    November 2, 2022 11:31 am

    @Anon – The only way I know how to access it is:

    https://www.uspto.gov/patents/ptab/trials/patent-trial-and-appeal-board-end

    Search for case: PGR2022-00031

    Enjoy the illegal show.

    I will depart with an original “short story”, I call this piece:

    “A FinTech Dramatization”

    Status-Quo CEO: “Well, what do you mean we’re frozen, we are ##$(%*@ and we can do what we want”

    Status-Quo GC: “We’ve hit a scenario no one has ever seen before, no one knows what to do about it”

    Status-Quo CEO: “I gave you an unlimited budget to burry this guy, “those people” are not too smart, we’re buying the best legal talent to destroy this guy”

    Status-Quo GC: “Well, he’s actually Je..”

    Status-Quo CEO: “Ok, look, we can’t push out marketing and promo for over a year now, you said everyone was on-board with the plan, what the #$%# happened?!?”

    Status-Quo GC: “Well, no one saw the possibility of the guy killing his own patent claim days before the planned Institution, we had our inside guys try everything to get him to sign but he fired them and we don’t know how to approached him now after what we did and now that he’s revealed his new play..”

    Status-Quo CEO: “I don’t give a $#$#4 we are #$$$%*^% we can just buy it a shelf it, charge it to the business insurance like we always do…”

    Status-Quo GC: “Uh.. sir, have you actually seen this thing? I don’t think its affordable to execute that strategy.. and I think he’s just trumped the world in revealing a serious contender for the U.S. Fed CBDC format…”

    Status-Quo CEO: “Everyone has a price, just keep him in litigation until he can’t afford to buy a cup of coffee and..”

    Status-Quo GC: “Not to cut you off sir, but we’ve already burned 10x in legal spending and market losses over what we was willing to take 5 years ago”

    Status-Quo CEO: “What? Ok, let’s keep this quiet around the board until we can figure out what to do next, call our people in Washington and see if we can get some new laws around this thing…”

    -The saga continues… but not with me a part of it… Bye Bye… Blastoff!

    2022 Copyright “Digitaldruglord”, a 17 USC 101 “pseudonymous” name.

  • [Avatar for Anon]
    Anon
    November 2, 2022 11:02 am

    Pro Se – do you have an actual link?

    Thanks,

  • [Avatar for Pro Se]
    Pro Se
    November 2, 2022 10:49 am

    On October 7, 2022, the PTAB established a precedent that eliminated 37 C.F.R. § 42.107(e) – see: Early Warning Services LLC v Wepay Global Payments LLC

    Institution on non-existent claim previously Disclaimed.

    The new USPTO is now in order.

  • [Avatar for Pro Say]
    Pro Say
    November 1, 2022 08:46 pm

    The Four Horsemen of the American Innovation Apocalypse:

    1. SCOTUS. 2.Congress. 3.CAFC. 4.PTAB.

    They live. Oh, do they live.

    And thanks to them, American innovation leadership is no more.

    Scary indeed.