IP Law Bulletin

The United States Patent and Trademark Office (USPTO) recently announced that the Expanded Collaborative Search Pilot (CSP) program, which was enacted in November 2017, has been extended to October 31, 2022. The Expanded CSP affords applicants the ability to get patent applications issued more quickly while enhancing the quality of the patent due to the more comprehensive nature of the patent search that results from the Expanded CSP. Under the Expanded CSP, patent applicants may request that multiple partner intellectual property (IP) offices (e.g., the Japanese or Korean IP offices) coordinate an exchange of prior art search results with each other prior to issuing an office action. The Expanded CSP built on the success of the Initial CSP, which facilitated sharing of search results of related counterpart applications between the USPTO and a single designated partner IP office (e.g., the Japanese or Korean IP office). The current partner IP offices are the JPO and KIPO, but the USPTO plans to announce future partner IP offices once they become designated.   

1. Why do entrepreneurs need to protect their technical and scientific innovations?

If you start a grocery store, you probably are not selling a technical or scientific innovation, so your goal is to execute better than the grocery store down the street. You likely will compete on price, quality, and service. Businesses that develop technical and scientific innovations, such as Tesla, Apple, and Novartis, as well as startups, spend enormous sums of time and capital developing the next big thing. These companies directly capitalize on that innovation. Ideally, nobody other than the entrepreneur who developed that innovation can commercialize it, giving the entrepreneur the exclusive right to own and potentially build the protected market/product. Think of it another way—why spend all this time and effort to move the market forward just to let a competitor use it…and reap the benefits of your hard work!

Indeed, parties looking to acquire an innovative company (or analysts for an IPO) take a hard look at whether the technical and scientific innovation of that company is adequately protected. Unfortunately, poorly protected innovation can kill enterprise value and even kill a deal. Venture capitalists, private equity, angel investors, and others will make similar analyses because they strive for a positive return on their investments through an acquisition or IPO.

Updated August 3, 2020

The coronavirus seems to be exerting itself upon all phases of life, and your intellectual property is not immune.  While you, your families, your friends, and your colleagues are getting comfortable with the new normal of social-distancing, intellectual property (IP) offices worldwide have also been grappling with how to handle the impact of coronavirus (also referred to as COVID-19).  Responses from IP offices around the world are varied and evolving, as the landscape changes in each individual country and on a global scale.  For example, some offices, such as the European Patent Office (EPO), India, and the United Kingdom, have automatically extended deadlines, while others have refrained from any extensions but permit, under certain circumstances, remedial action for rights lost due to effects of the coronavirus.  While the U.S. Patent and Trademark Office (USPTO) has not provided for automatic extensions, certain deadlines associated with patent and trademark filings and fees may be extended for small and micro entities provided the delay in filing or payment was due to the COVID-19 outbreak.  Additionally, the USPTO will waive the petition fee to revive certain lost rights resulting from a failure to take action due to effects of the coronavirus. 

Building upon our recent note concerning general international intellectual property protection considerations, this article describes how foreign IP expansion efforts might play out in a case study format. The company, a hair restoration lotion manufacturer named WonderFlo Tonight, is fictional, but the fact pattern is derived from real world situations encountered by businesses as they seek to establish and protect their intellectual property in foreign markets.

The importance of patent term, or the period of time during which the exclusive nature of a patent is in effect, cannot be overstated. The patent term for an issued patent, which is currently set at 20 years from the filing date of the earliest U.S. non-provisional application, can drive business and investment strategies, dictate allocation of technological resources, and impact financial valuations. 

Steve Saunders, co-chair of Nutter’s Intellectual Property Department, recently drafted a Nutter Insights on how patents should be drafted with an emphasis on technical problems and technical solutions delivered by the claims.

Invention disclosures made by an inventor to an attorney, or a review committee including attorney(s), often contain sensitive information that a client would prefer to keep confidential. It is important for both inventors and attorneys to appreciate the boundaries of the attorney-client privilege, as applied to inventor-attorney communications, to determine which communications can be privileged, and thus sheltered from discovery, and those that will remain discoverable. As in other areas of law, the attorney-client privilege attaches to confidential communications between a client and an attorney made for the purpose of seeking legal advice or services. The Court of Appeals for the Federal Circuit (CAFC) has applied this principle to patent law and found that the privilege attaches to confidential invention disclosure communications between an inventor and an attorney made for (1) seeking advice on patentability or (2) for obtaining legal services of preparing a patent application. See In re Spalding Sports Worldwide, Inc., (Fed. Cir. 2000). Thus, the attorney-client privilege attaches to invention disclosures submitted or communicated to an attorney to assist the attorney in evaluating patentability or in prosecuting a patent. Additional inventor-attorney communications which may fall within the attorney-client privilege include draft patent applications prepared for or received by an attorney and communications between a named inventor and a patent attorney about patent prosecution.

Taking into account what constitutes a disclosure, we can see the following guiding principles and trends emerging:

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.

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.