IP Law Bulletin

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.

Key Takeaway: Key business considerations relevant for choosing between patents and trade secrets include:  (1) Need for transfer of IP rights; (2) Life cycle of the product or service; (3) Cost of IP protection; and (4) Other business considerations.

Akin to the hype that surrounded the Internet during its early years in the 1990s, blockchain technologies and their associated cryptocurrencies have dominated the news cycle recently. Cryptocurrencies are a form of digital currency that use cryptography to enable financial transfers between two parties without an intermediary. By touting a new technology that could reshape the way transactions are performed, cryptocurrencies grew exponentially, attracting investors searching for “the next big thing.” The demand for cryptocurrencies has reached such a fever pitch in the past two years that cryptocurrency trading platforms have struggled to keep up with the demand for new accounts and trading services. Driven by media coverage of extravagant returns for investors in cryptocurrencies such as Bitcoin, Ethereum, and Ripple, among others, some of which have exhibited 100,000 percent or more annual growth in the last year alone, the cryptocurrency market, and the blockchain technologies by association, have received a tremendous amount of exposure for an industry that is still in its infancy. While the prevalence of the Internet and social media have greatly contributed to the explosive growth and popularity of blockchain technologies and cryptocurrencies, such growth so early in the lifecycle of a fledgling technology can have negative consequences, such as significantly impairing development despite an overwhelming number of new adopters entering the space daily. 

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.

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.

Key Takeaway: One critical question to ask when deciding whether to protect your invention using patents or trade secrets is how well the invention can be kept secret. Ease of reverse-engineering, risk of independent duplicate creation, and the ease of maintaining the invention secret in a commercial setting are factors that should be considered.

The Federal Circuit rejected the patent venue test recently established by Judge Rodney Gilstrap of the Eastern District of Texas, the judge who has been reported to preside over about one quarter of all patent infringement cases in America. The three judge panel held that Judge Gilstrap abused his discretion and applied an incorrect legal standard in Raytheon Co. v. Cray Inc. when he refused to transfer the patent suit after applying his own four-factor test and determined defendant Cray maintained “a regular and established place of business” in the district where only one of its employees worked from home. As a result of its findings, the Federal Circuit ordered the case to be transferred.

Written opinions of counsel are gaining renewed interest as a valuable tool for avoiding enhanced damages for willful patent infringement following the Halo decision. A written opinion may set forth the factual and legal basis for finding a third party patent not infringed, invalid, and/or unenforceable. However, to be effective, the timing of the opinion may be critical.

September 2017 marks the planned release of the first iteration of the eCommerce Modernization (eMod) Patent Center (“the Alpha Release”), as well as the introduction of new EFS-Web and PAIR features by the USPTO. Effective September 10, features of the recently concluded eMod Text Pilot Program will be rolled out to the public. EFS-Web and Private PAIR users will be able to file structured text via EFS-Web and access structured text submissions and Office Actions via Private PAIR. Additionally, the Alpha Release, which is the next phase of the USPTO’s eMod Project that seeks to improve “the electronic patent application process by modernizing USPTO’s application filing and viewing systems,” will be made available to Pilot Program enrollees. The Alpha Release will include a new user interface and introduce new functionality that the USPTO aims to roll into future iterations of the Patent Center.