Managing IP: patents

Is the recent Federal Circuit decision in CLS Bank v Alice the death of thousands of US patents? Our panel will discuss the judges' opinions, what the ruling means for patent applicants and whether the US Supreme Court will have to take up the case

Part 2: Judge Paul Michel Speaks Out on Patents, Congress and the Supreme Court

The Shield Act is “entirely unnecessary”; the America Invents Act was a missed opportunity; and two recent US Supreme Court decisions were “extremely poorly reasoned and very harmful to a well-functioning system”

Judge Michel speaks candidly about some of the frustrations he has experienced since stepping down from the bench in order to be free to engage fully in patent debates. In particular, he describes how he testified before a Congressional subcommittee – and the members seemed not to care that he was (perhaps uniquely) a neutral witness, with no axe to grind.

Now legislators are talking about further changes to the patent system, with specific proposals in the so-called Shield Act. But Michel says the Act proposed “would do vastly more harm than good and is entirely unnecessary”. Interfering with judges in the ways proposed in the Act would be a “threat to justice” says Michel, adding that the problems with the patent system are that it is too slow, too unpredictable, too expensive and too disruptive – and solving them means investing in the USPTO (probably by paying examiners more).

As he says in the video, Michel is at liberty to speak out now he is retired, but I suspect his concerns are widely shared in the judiciary. During the Forum, I moderated a panel that included Michel’s successor as Chief Judge, Randall Rader: when I asked him directly if new legislation (such as the Shield Act) were needed, he said emphatically “No” and argued that parties and judges already have the tools they need to deal with abusive and expensive litigation.

I suspect the response from those who feel they have been victims of patent trolls will be: if district court and appeal judges really can deal with abusive litigation, then they should do so. This might involve acting tougher with vexatious plaintiffs and being more willing to award costs in appropriate cases. Maybe we need to see a bit more judicial activity here?

This webinar will examine potential pitfalls arising from the new first-to-file rules, focusing on how in-house and outside counsel can work together to ensure that priority of applications is maintained. This includes in-house tips for implementing practices to ensure priority is obtained, potential consequences for outside counsel if they don't get to the office first, and what new practices must be put in place to ensure deadlines are met.

On the agenda:
•Brief overview of priority under the AIA
•Implications for public disclosures and private disclosures
•Role of provisional filings under AIA
•Role of ndas under AIA
•Recommended procedures

Speakers:
•Eileen McDermott, Americas Editor, Managing IP
•Alexander Franco, Intellectual Property Legal Counsel, Accenture
•Charles R. Macedo, Partner with Amster, Rothstein and Ebenstein LLP
•Benjamin Carlsen,IP Attorney at Ecolab USA Inc
•Christopher Hilberg,Senior Patent Attorney, Best Buy

This webinar, sponsored by Wolters Kluwer Law & Business, will address different aspects of drafting license agreements, which are crucial in increasing IP licensing revenue and decreasing the risk of loss and liability. Speakers will cover topics including:

Pitfalls in drafting “standard” IP license provisions, such as recitals, grant terminology, representations and warranties, governing law, venue and dispute resolution
Leveraging trademark assets through the franchise license agreement
Bankruptcy and the enforcement of the license agreement


Speakers:

Eileen McDermott, Americas Editor, Managing IP (Moderator)

Roger M Milgrim, IP Attorney and Author

Eric E Bensen, IP Attorney and Author

J Michael Dady, Licensee/Franchise Attorney, Dady & Gardner

Your company invests significant resources in developing its trade secret information, technologies, and processes. These trade secrets are more vulnerable than ever in light of advances in technology, globalization of business endeavors, and an increase in collaborations and business partnerships. This diverse panel, including outside and in-house counsel, will discuss:

•The importance of trade secret protection as a strategic part of your overall IP portfolio

•Protecting trade secrets and preventing loss of rights in your collaborations and collaboration agreements.

The panel will also provide practice and contract pointers and address issues specific to webinar attendees.

Speakers
Krista Carter, Partner, Intellectual Property, Dickstein Shapiro LLP
Thomas C. Feix, The Director of Patents, The Clorox Company
Ann Lee, Corporate Counsel, The Clorox Company
Deborah E. Fishman, Partner, Intellectual Property, Dickstein Shapiro LLP

After the Supreme Court’s decision in Prometheus and its vacatur and remand of the Myriad decision, the question of what constitutes patent eligible subject matter continues to pose a challenge to courts, the PTO and practitioners. This webinar will address the impact of the Prometheus decision on the eligibility question including what guidance it may provide with respect to the eligibility of gene patents, how the PTO is likely to react to the decision and the impact the decision will have on the medical field.

16.00 First-to-file system: Implications of a significant change in the law
• Untangling the complexities of discussing the impact of the first-to-file approach in the context of new definitions of ‘prior art’ and ‘prior use’
• Prior Art: Do pre-issuance submissions by third parties lead to higher quality patents?
• What are the exceptions to the first-to-file approach under AIA?
• Forecasts for the long term and global impact of this reform

17.00 AIA and NPEs: Impact or more of the same?
• What’s the future for NPEs under the reformed legislation?
• Will the Joinder Provision level the playing field and what does the playing field really look like?
• Patent Troll or ‘Skeptisaurus’? Is there a possibility of a more positive perspective?

14.20 Keynote address: Bob Stoll, former commissioner, USPTO

14.40 In focus: Post Grant Review and litigation strategies under AIA
• Scrutinising the requirements of the new PGR system
• Which patents are vulnerable to a PGR and how are such vulnerabilities defended?
• How to utilise the new prior-use defence
• Elimination of the best mode defence
• Patent portfolio management: Budgeting for increased fees

10.50am An Industry Perspective: We lobbied the cause; the act was passed – where did we land?

• Case notes from the pharmaceuticals and life science industry perspective
• Comparative reflections from the IT and software industry
• Discussions on implications of AIA for the future of patenting
• Advantages of trade secrets in the light of AIA: Considering recent trade secrets case law
and developments

11.50 Key considerations: The Joinder Provision; ITC proceedings and the new rules on false marking
• Will the Joinder Provision of AIA result in more ITC filings?
• Analysisng the relationship between post-grant procedures, litigation and ITC investigations
• Pros and cons of ITC under AIA
• Is this the end of false marking litigation and how will or should ‘Competitive Injuries’ be
defined?
• A look at the opportunities and risks in the new enforcement landscape

12.50pm Keynote address: David Kappos, undersecretary of commerce for intellectual property and director of the USPTO