Scandalous trademarks. Using Native American sovereign immunity to defend patents. And “art unit shopping” on Section 101 patent eligibility. For lawyers who practice at the U.S. Patent and Trademark Office, these are some of the hottest topics du jour.
Law.com intellectual property reporter Scott Graham sat down with Baker Botts IP partner Eliot Williams on October 12 at the American Bar Association’s recent IP West Conference for a quick explainer on each of these subjects.
Williams says the PTO still has some sorting out to do in the wake of the Supreme Court’s Lee v. Tam trademark decision, and the Federal Circuit’s Aqua Products decision on amending claims during IPRs. He explains how a federal district judge is throwing a potential wrench into Allergan’s $14 million bid to use a Native American tribe’s sovereign immunity as a shield against inter partes review. (The judge ruled a few days later.)
And you’ve heard about forum shopping at the Eastern District of Texas? Williams describes how patent prosecutors are using data analytics to direct patent applications toward examiners who are statistically less likely to reject claims based on Section 101 eligibility.