The issue of public disclosure is a frequent concern for inventors looking to obtain patent protection. While it may often be safest to wait until at least a provisional patent application is filed before having any discussion regarding the invention with a third party, it is often not practical. Is the idea of waiting to discuss with a third party until a patent application is filed an overly cautious practice? Consideration of what actually constitutes a public disclosure and the factors that courts take into account illustrate that avoiding any and all discussion of the invention may not be necessary.
On June 22, the Supreme Court issued its opinion in WesternGeco LLC v. ION GeoPhysical, which addresses the ability of a patent owner to collect lost profits from sales abroad for infringement under 35 U.S.C. § 271(f)(2). Under this subsection of the Patent Act, it is an act of infringement to supply components of an invention to be combined overseas in an infringing device. The Court—in a 7-to-2 decision—held that lost profits are available from foreign sales for a patent owner who proves such infringement.
Nutter lawyers Heather Repicky and Alison Casey recently contributed an article to IPWatchdog that addresses changes in Massachusetts local patent rules. In the article, “What You Need to Know About the District of Massachusetts’ New Local Patent Rules,” Heather and Alison discuss how the new set of rules aims to make the Commonwealth a more attractive venue for patent litigation by streamlining patent cases. Please contact the authors if you’d like to learn more about this topic.
The District of Massachusetts is poised to overhaul its local patent rules with the objective of making the Commonwealth a more attractive venue for patent litigation. The new proposed rules aim to streamline patent cases by focusing on efficiency, reaching outcomes more quickly, and achieving consistency across the entire bench. The prior version of Local Rule 16.6 acted more like a guide, suggesting issues that the parties should consider and offering a template for a schedule. That template, however, was not mandatory and resulted in a case-by-case approach by both the bench and the bar. In contrast, the proposed local patent rules require a schedule that, absent extraordinary circumstances, will apply. In addition, the proposed rules bring this district in line with several other courts around the country that have adopted patent-specific rules.
In a stinging decision that will impact its patent portfolio, Arthrex recently suffered a setback in a patent dispute over suture anchors with Smith & Nephew. The Federal Circuit upheld a PTAB judgment entering adverse judgment against claims 1-9 of Arthrex’s U.S. Pat. No. 8,821,541, which S&N challenged in a 2016 IPR. This decision will affect the related patent portfolio because of the estoppel provisions of 37 CFR 42.73.
Rory P. Pheiffer, a partner in Nutter’s Intellectual Property (IP) Department, has begun his term as President of the Boston Patent Law Association (BPLA), one of the oldest, continuously active IP-based law associations in the country. Founded in 1924, the BPLA is a nonprofit association that includes more than one thousand IP professionals across New England. The BPLA is dedicated to provide educational programs and a forum for the interchange of ideas and information concerning patent, trademark, and copyright laws. Rory has served on the BPLA Board of Governors for the past six years, including in the roles of Secretary, Treasurer, Vice President, and President-Elect. He has also served as co-chair of both the BPLA’s New Lawyers and Law Students Committee and the BPLA’s Invented Here! Committee.
Q: What are the central issues in Oil States Energy Services v. Greene’s Energy Group?
Rory P. Pheiffer: The central issue is whether inter partes reviews (IPRs) are constitutional as administrative proceedings or if patent invalidity necessarily must be decided in accordance with Article III of the Constitution, and thus must be decided by the judicial branch. The constitutionality inquiry extends further to the Seventh Amendment—whether questions of fact related to patent invalidity should be decided by a jury. An underlying central issue used to support the respective positions for and against IPRs is whether a patent constitutes a private or public right. Oil States, the patentee who is arguing against the constitutionality of IPRs, considers patents to be private property, leaving questions of law and fact for the judiciary and jury, respectively. Greene, on the other hand, considers patents to be a public right, meaning Congress has the power to authorize an administrative body, like the United States Patent and Trademark Office (PTO), to grant patents and conduct IPRs as a mechanism to correct any errors that may have occurred in granting patents.
Earlier this week, the United States Patent and Trademark Office (“PTO”) finalized a new rule, extending the attorney-client privilege to communications between clients and their non-attorney patent agents and foreign practitioners in proceedings before the Patent Trial and Appeal Board. The rule, which largely codifies the Federal Circuit’s 2016 decision in In re Queen’s University at Kingston, will go into effect on December 7, 2017.
In Part 1 of this post, I discussed various advantages of provisional patent applications, which are a growingly popular initial filing option for applicants seeking patent protection. These advantages include: establishing a filing date without starting the patent-term clock, obtaining additional time (e.g., to study the market, raise funds, etc.), delaying further costs associated with a regular application, delaying examination, and avoiding the need for immediate formalities, among others.
Yet, despite the numerous advantages of first filing provisional patent applications, there are also various disadvantages that companies and inventors should keep in mind when developing a patent filing strategy and deciding the role of provisional patent applications in that strategy. Some of these disadvantages are described below.
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.