Recent months have produced profound changes in the global economic environment and delivered a rain of IP developments that have gathered into a racing stream carving a new course across the business landscape.
Intellectual property continues to grow as an exceedingly valuable and important asset to businesses around the globe. The shy scientists and engineers who stumbled into law school and then chose this backwater of the legal world 30 years ago continue to be surprised at what a lively area intellectual property practice has become. Businesses throughout the world continue to discover that intellectual property can create wealth that does not involve significant (if any) expenditure of natural resources.
Not surprisingly, the battle to create, protect, challenge and assert intellectual property feeds winds of change. Courts, legislators and government executives continue to struggle with what should and can be protected and how best to accomplish that protection, while preserving freedom of competition.
The late 1990s and early 2000s were boom times for acquisition of patents. For a while, patents were sought (and often granted) on every conceivable use of the Internet as well as other types of inventions not previously recognized as patentable. The pendulum has now swung in the opposite direction as some of the requirements for obtaining patents have tightened.
At the same time, the U.S. Patent and Trademark Office has struggled to keep up, both because of continued high demand for new patents and some have argued, because partisan bureaucrats, rather than career intellectual property attorneys, have been appointed to top positions. As the new administration prepares to take over, the departing management of the office leaves behind:
• Failed legislative initiatives that would have made a number of significant changes in both prosecution and litigation of patents. 2
• Failed proposals to shift some of the work of patent searching and analysis to applicants by requiring an examination support document where an application contained more than a specified number of claims. 3
• Significantly more “piecemeal” examinations 4 in which overcoming one rejection leads only to another rejection that could have been made earlier by the examiner (and addressed earlier by the applicant).
• Slow prosecution of patent applications. Recent figures show that the average interval between filing and the first office action on utility patent applications ranges between 1.7 years (in the manufacturing devices field) and 3.7 years (in fuel cells, batteries and solar power). 5
• A dramatically diminishing rate of allowance of patents. 6
Recent months have also produced significant patent case law developments with far-reaching consequences:
• McKesson established more demanding standards about what patent attorneys have to disclose to the patent office relative to other patenting efforts, significantly increasing the effort required to prosecute families of patent applications or multiple applications in a particular field. 8
• Seagate announced a new, purportedly less demanding but as-yet undeveloped standard, for determining whether infringement has been “willful,” such that a court may award increased damages. 9
• In re Bilski announced a new test for patentable subject matter, excluding some inventions that previously were considered patentable and clearly rendering some existing “business methods” patents invalid. 10 After Bilski, a claimed process is not patentable unless it is: (1) tied to a particular machine or apparatus, or (2) transforms a particular article into a different state or thing.
• Egyptian Goddess simplified the test for design patent infringement, making design patents easier to enforce and therefore more valuable. 11
