z. ARCHIVE – 2019 Institute Issues and Papers

The Issues discussed at the 2019 Leahy Institute of Advanced Patent Studies are set forth below.  Following each of the issues are papers accepted by The Naples Roundtable and posted to stimulate discussion and debate during the conference.  The papers posted here represent the views of the authors and do not necessarily reflect the views of  The Naples Roundtable, its officers and directors, its Advisory Board members, or any other participant in Naples Roundtable activities.  It is the responsibility of the authors to note on the first page whether any paper was prepared on behalf of a client or third person or organization.

Phoenix Issue I.  Has the value of US patents decreased over the last 10 years and are there ways to strengthen and improve the Patent System? What can and should be done to improve the process? Are the pending proposals in Congress needed and if so will they help? Do some of the AIA provisions need to be scrapped or modified? A recent Federal Register notice by the PTO sets forth proposed for the first time in the history of our patent system, a practitioner fee and CLE requirements; should these be imposed?

In the Quest to Strengthen and Improve the Patent System: The Imperative for Elevating Patent Examination Integrity by Robert A. Armitage

AIA’s Failure to Conform the Right to Claim Priority (35 U.S.C. §§ 119 and 120) with Assignee-Filing Authority (35 U.S.C § 118) May Jeopardize Thousands of Patents’ Priority Dates by Andrew Baluch

Phoenix Issue II. Is patent litigation being abusively utilized today or have unjustified actions been significantly curbed? Have IPRs, changes in venue selection and the more frequent award of attorneys’ fees helped? Are changes needed in the IPR process and what changes are in the works; will such changes help? What is the impact of recent and proposed changes — considering all claims and proposed grounds of invalidity and claim interpretation standards?

Proposal to Expedite Joinder in Inter Partes Review by Andrew S. Baluch and Teresa Stanek Rea

In the Quest to Strengthen Respect for Issued Patents: The Imperative for Further Administrative Reforms for IPRs by Robert A. Armitage

Phoenix Issue III. Is there a problem with Section 101 decisions and will there likely be any legislative fix? If not, then what if anything can be done? Is it easier in foreign countries to obtain patents on subject matter considered abstract and unpatentable in the US? What if any impact is this having on innovation in the US?

Section 101:  What’s Left To Patent In The Life Sciences After Myriad, Mayo, And Alice? by Warren D. Woessner and Robin A. Chadwick

In The Quest To Strengthen The U.S. Patent System: The Imperative For Addressing The “Implicit Exception” Administratively by Robert A. Armitage

Patent Eligibility and Experimental Use: An International Comparison by Andrew Baluch, Teresa Summers and Jason Weil

Phoenix Issue IV.  Should deference (under Chevron) be given to the PTAB decisions and to what extent? Should any change in deference also impact ITC decisions? What is the level of review that should be done by the Federal Circuit on various issues (e.g. claim construction and assignor estoppel)?

Phoenix Issue V. Is
 the current law of damages and injunctions adequate in protecting rights of patent holders? What is the impact of investing in and promoting innovation? How does the handling of damage and injunction issues in the US compare to countries in Europe and Asia?

Phoenix Issue V by Paul Cole

Phoenix Issue VI. Is there a current conflict between implementation of the patent laws and antitrust laws?

Antitrust Analysis Involving Intellectual Property and Standards: Implications from Economics by Jorge Padilla, Douglas H. Ginsburg, & Koren W. Wong-Ervin

“Excessive Royalty” Prohibitions and the Dangers of Punishing Vigorous Competition and Harming Incentives to Innovate by Douglas H. Ginsburg, Bruce H. Kobayashi, Koren W. Wong-Ervin, & Joshua D. Wright

Product Hopping and the Limits of Antitrust: The Danger of Micromanaging Innovation by Douglas H. Ginsburg, Koren W. Wong-Ervin, & Joshua D. Wright

Tying and Bundling Involving Standard-Essential Patents by Koren W. Wong-Ervin, Evan Hicks, & Ariel Slonim

Recommendations Following the FTC’s October 2018 Hearings on IP and Innovation by Koren W. Wong-Ervin & Dr. Georgios Effraimidis

The More Things Change: Improvement Patents, Drug Modifications, and the FDA by Dmitry Karshtedt

Phoenix Issue VII. 
To what extent is the patent system well-served by the extra-territorial enforcement of competition and intellectual property laws?

Phoenix Issue VIII. 
Is there a need to substantially revise the rules to bring the content of patent applications in line with modern precedent, new types of technologies (e.g. AI) and to impose reasonable limits on the size of specifications and the number of claims that should be allowed in an application? For example, should the requirement for a section entitled “Background of the Invention” be replaced by sections covering “The Scope and Content of the Prior Art’ and “The Level of Ordinary Skill in the Art?”  Should the USPTO resurrect its once prevalent use of “undue multiplicity” rejections? Should the Office require applicants to state whether they intend for the preamble of their claims to be construed as a limitation on the scope of the claims? Should the Office require applicants to state whether they intend for their claims to be interpreted as means-plus-function claims?

Access to Relevant Prior Art (postcard by USPTO)

Key Patent Harmonization Issues

Phoenix Issue IX. 
To protect against willful infringement allegations after Halo, should parties obtain opinions from counsel and what waiver issues arrive?

Phoenix Issue X. Understanding the conflict of positions in the SEP/FRAND issues both in the US and Internationally and can the conflicts be resolved?

Issue X:  Understanding The Conflict of Positions In the SEP / FRAND Issues – Latest US Views by Ken Adamo

The Sedona Conference Framework for Analysis of StandardEssential Patent (SEP) and Fair, Reasonable, and Non-Discriminatory (FRAND) Licensing and Royalty Issues (Stage One) A Project of The Sedona Conference Working Group on Patent Damages and Remedies (WG9)

Communication from the Commission to the European Parliament, the Council and the European Economic and Social Committee: Setting Out The EU Approach To Standard Essential Patents (Brussels, 29.11.2017)

Guide to Licensing Negotiations Involving Standard Essential Patents – Japan Patent Office June 5, 2018

Guidelines of Guangdong High People’s Court on Adjudicating Cases of Disputes Over Standard-Essential Patents (Trial)

Global Rate-Setting: A Solution for Standards-Essential Patents? by Jorge L. Contreas

FTC v. Qualcomm: Part One — Where is Denzel? (blog) by David Long

Understanding the Conflict of Positions on FRAND