Posts in Interviews & Conversations

On IPWatchdog Unleashed this week, we had a wide ranging conversation on patent strategy, including working with patent examiners—for example, what to do when you are assigned to a difficult patent examiner with a low allowance rate—the importance of interviews, tips for getting past 112 rejections, and how outside counsel can build solid, working relationships with in-house counsel, and much more.

Last week we hosted our first annual Women’s IP Forum, which was a huge success. During early planning for the program USPTO Director Kathi Vidal was immediately enthusiastic and supportive. We were honored to have Director Vidal join us to kick off the program—a program that featured 100% women. In speaking with Renee Quinn at the program, Director Vidal would go on to discuss how she started down the STEM path and ultimately found herself with a career in law and specifically in the IP field. She also spoke of the advice she would give to her younger self, how women can elevate themselves within the industry, and took questions from the audience.

We also spent a good deal of time discussing obviousness, KSR, and how at least sometimes, perhaps even often depending on the wording of the rejection from the examiner, you really only need to argue a lack of teaching, suggestion and motivation to persuade examiners that the claims you seek are nonobvious and allowable. “Evidence is still a requirement for motivation to combine,” Rogitz said. “On some level the TSM test is still the controlling test because… if you need evidence for a suggestion or motivation… that’s the TSM test still.”

What makes the ITC such an important venue for intellectual property rights owners is the ability to rather quickly obtain injunctive relief in the form of an exclusion order. This is an important tool for patent owners because since the Supreme Court issued its landmark decision in eBay v. MercExchange in 2006, it is has been increasingly difficult, in fact absolutely impossible for many patent owners to obtain any form of injunctive relieve against infringers even after the infringer has been adjudicated as being liable as an infringer and the patent in question has withstood all challenges in all forums.

During our conversation we explore much of what is happening in DC relating to patents and innovation, and specifically discuss matters ranging from proposed guidelines from the National Institute of Standards and Technology relating to use of march-in rights to control drug prices, to the recently introduced RESTORE Act, which is little more than one-page would largely if not completely overrule the Supreme Court’s eBay decision and create a presumption that victorious patent owners who have proved infringement and withstood all invalidity challenges would be presumed to be entitled to injunctive relief.

If you are an inventor of a consumer product there are reputable companies looking for inventions and ideas to bring to market, and their business model is built on taking products to market over and over again, and they are in constant need of new products and improvements. They also realize litigation is wasteful when you are dealing with products that often have a 1-, 2- or 3-year shelf life, so they are willing to do deals that allow them to quickly get products onto shelves and into the stream of commerce, and inventors get paid.

This week our conversation is with Patrick Kilbride, who is a public policy expert with significant expertise at the intersection between market economics, innovation and intellectual property. At the beginning of our conversation Kilbride explains that “one of the most remarkable things about the American economy is that what we have done historically does seem to be so unique.” He then pointed to five distinguishing features, which we spend the rest of our conversation discussing. According to Kilbride, what makes the U.S. unique is that the American economic approach enables risk taking and failure, fosters competition and ensures goods and services can cross state lines, provides property rights, is based on the rule of law, and establishes markets.

Pharmacy benefit managers, or simply PBMs, are often owned by either the pharmacies themselves or sometimes by insurers, which creates a lot of self-dealing to say the least. These PBMs are middlemen who receive 50% of the value of the drug, significantly raising drug prices. This has nothing to do with IP whatsoever.

This week on IPWatchdog Unleashed, we turn our attention to patent policy and the Biden Administration, particularly the Adminstration’s efforts to make it more difficult for pharmaceutical companies to obtain and keep patent rights. For this episode, I spoke with Brad Watts, who is Vice President for Patents and Innovation Policy at the Global Innovation Policy Center at the U.S. Chamber of Commerce. Prior to joining the Chamber, Brad spent eight years working in the U.S. Senate, his last several years as Republican Chief Counsel on the Senate Judiciary Subcommittee on Intellectual property, where he was responsible for planning and implementing Senator Thom Tillis’ (R-NC) and the Republican party’s legislative agenda on all aspects of intellectual property.

Ordinarily, patent practitioners do not need to really think about prosecution laches, but laches has become a rather hot topic as the United States Patent and Trademark Office (USPTO) and courts have initiated what can only be characterized as an assault on an applicant’s statutory right to seek and file additional claims if those claims are supported by the initial disclosure.

The remarkable story that inventor Alan Nelson shared last week at the 7th Annual Intellectual Property Awareness Summit held by CIPU at Northwestern University was revealing in many ways. Dr. Nelson related how he overcame numerous obstacles to commercialize a landmark technology for detecting cervical cancer in the 1990s. Using artificial intelligence (AI) while at the University of Washington, Dr. Nelson automated and vastly improved how early and accurately cervical cancer is identified — he and his team invented a machine to read Pap smears. 

Last month, the U.S. Chamber of Commerce’s Global Innovation Policy Center (GIPC) announced that it had joined with 30 other signatories to publish a framework of intellectual property principles designed to reshape the narrative around intellectual property (IP) rights and maintain America’s global lead in innovation. Broadly speaking, the principles focus on five primary goals to be achieved by American lawmakers and policymakers: 1) national security, 2) technological leadership, 3) fostering creative expression, 4) enforcing the rule of law, and 5) ensuring full access to the innovation ecosystem for all.

This year’s IPWatchdog LIVE meeting featured more than 30 panels and keynote or featured luncheon speakers, several of which we reported on here. But as the name implies, much of the action at IPWatchdog LIVE is meant only for the eyes and ears of those who attend in person, and that was the case with the judges’ panel, which included several high-profile retired and sitting judges responsible for hearing intellectual property cases across a range of venues. While their substantive discussion was off the record, some of the judges agreed to share their thoughts on the most irritating behaviors that parties have displayed in their courtrooms—along with their advice on how to avoid grinding their gears. Here is what they had to say.

Clarity, transparency and integrity were themes consistently referenced by U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal during a lunchtime fireside chat with IPWatchdog Founder and CEO Gene Quinn on Day 3 of IPWatchdog LIVE 2023. Throughout the discussion, which ran the gamut from the agency’s current rulemaking to potential issues with emerging technologies, Director Vidal strongly encouraged public participation from stakeholders to improve the functioning of the nation’s patent and trademark-granting agency.

Scott McKeown is one of the preeminent Patent Trial and Appeal Board (PTAB) practitioners in the country, founder and author of PatentsPostGrant.com, Co-Chair of the IPWatchdog PTAB Masters program, and a good friend. Recently, Scott decided to make a change, leaving Ropes & Gray and joining Wolf Greenfield & Sacks and becoming the first partner resident in Wolf’s new Washington, DC, offices. Given the news, I took the opportunity to invite Scott to IPWatchdog headquarters for an interview.