Exclusive Q&A On Intellectual Property

With Steven E. Warner

Posted: 22nd July 2015 09:19

1. Is the era of Patent Trolls now behind us with the shifting political mood toward aggressive patent enforcement?

While the number of new patent troll lawsuits was down in the past year, I think that it is still too early to say that the era of the patent troll is over.  Nevertheless, the political mood is certainly trending against patent trolls.  Our U.S. Congress, for example, has proposed legislation aimed at curbing patent troll abuses.  That legislation, however, has not yet been enacted, and it remains to be seen what effect the legislation would ultimately have on patent trolls.

2. In your opinion, what are the biggest and most interesting cases to follow in 2015?

In the wake of the our U.S. Supreme Court’s decisions in Mayo v. Prometheus and Alice Corporation Pty. Ltd. v. CLS Bank Int’l, the Court of Appeals for the Federal Circuit, district courts, and the U.S. Patent and Trademark Office continue to wrestle with the boundaries of what constitutes an unpatentable abstract idea.  This is especially true in the context of software patents.  We are carefully watching each case, particularly at the Federal Circuit level, that considers whether a claimed invention is directed towards an abstract idea.
 
3. Are you witnessing any prominent trends or strategies?

One prominent trend is the increasing use of prioritized examination for patent applications filed in the U.S. Patent & Trademark Office (USPTO).  Prioritized examination can be simply requested with the payment of an additional fee when a patent application is filed, and the USPTO guarantees that a prioritized application will reach a final disposition (i.e., either an allowance or final Office Action) within twelve months of the filing date of the application.  This is much quicker than most standard, i.e., non-prioritized examinations.  USPTO statistics indicate that the number of requests for prioritized examination was up 35% in the 2014 fiscal year.  And, I would expect that the number of prioritized requests will continue to increase in the future.
  
4. What problems do you foresee relating to wearable tech, 3D printing and other new technologies?

Wearable technology and 3D printing may pose challenges in patent prosecution and/or patent enforcement.  With wearable tech, patent attorneys may face potential challenges in view of our U.S. Supreme Court’s Alice decision, regarding patentable subject matter under 35 U.S.C. § 101, as many of these devices involve applying abstract ideas and/or software claims to well-known objects, e.g., glasses, watches, etc.  3D printing, on the other hand, allows for individuals to easily create products that may infringe design and utility patents.  It could be logistically challenging, however, for patent holders to enforce these patents against the multitude of 3D printers available today.
 
5. About 70% of all infringement actions in patent litigation in Europe are brought before German Courts. How do you determine which jurisdiction patent litigation should be filed in?
 
As an initial matter, a defendant typically must either be a citizen of, or commit an infringing act within or directed toward a jurisdiction in order to be sued in that jurisdiction.  Before filing infringement lawsuits, plaintiffs may investigate which jurisdictions may constitute a favorable forum, looking, for example, for jurisdictions having the lowest average time from filing to disposition, jury pools that favor intellectual property rights, and their own set of patent rules that provide more streamlined procedures. The U.S. District Court for the Eastern District of Texas, for example, is an attractive venue for plaintiffs for at least these reasons. 

6. How has big pharma diversified strategies in order to combat the effects of the patent cliff?

The pharmaceutical “patent cliff” relates to the potential sharp decline in revenues for a pharmaceutical company upon patent expiration of patented pharmaceuticals of one or more leading products of the pharmaceutical company.  In the current marketplace, several noted pharmaceutical companies have taken or will be taking large hits in revenues as they lose patent protection for their blockbuster drugs.  This drop off in revenue has encouraged larger players in the pharmaceutical industry to explore new avenues for growth, for example, through the acquisition of smaller companies with promising drug pipelines.

7. With the increase in legalized marijuana in the USA, how can companies protect their brands without trademarks?

Four U.S. states and the District of Columbia have legalized recreational marijuana, with nineteen additional states either decriminalizing marijuana or legalizing medical marijuana.  Companies in these jurisdictions can protect their intellectual property with unregistered common law rights through use in commerce, although these rights are limited to the geographical area of use.  Companies potentially can also apply for state registered trademarks, limiting rights to the individual states in which they are able to register.  Our federal law still generally bars patent and trademark protection of marijuana.  Federal registration may be available, however, for ancillary goods and services that are not illegal under federal law, especially when not specifically identified for use with marijuana.

8. Following Taylor Swift’s attempt to trademark lyrics, how far do you think it is reasonable for artists to go to protect their intellectual property rights?

It is appropriate for artists, like Taylor Swift, to be “fearless” and to use all available intellectual property tools to prevent others from trading off their good name, creativity, and ingenuity.  In the U.S., unlike in some other countries, a trademark must be used in interstate commerce and indicate the source or origin of the goods, in order to be federally registered.  This use requirement is an inherent limit on attempts to protect all song lyrics. 
Steven E. Warner chairs the firm’s Industrial Equipment and Manufacturing Practice Group.  He joined Fitzpatrick, Cella, Harper & Scinto in 1989 and since that time, he has concentrated in the areas of patent application writing, prosecution, and counseling, as well as in rendering validity, patentability, non-infringement and freedom-to-operate opinions, primarily involving the mechanical, electrical and chemical arts.  He also has had extensive experience in trademark prosecution and enforcement, and has been involved in various patent litigations, reexaminations, reissues and interferences.
 
Steven E. Warner chairs the firm’s Industrial Equipment and Manufacturing Practice Group.  He joined Fitzpatrick, Cella, Harper & Scinto in 1989 and since that time, he has concentrated in the areas of patent application writing, prosecution, and counseling, as well as in rendering validity, patentability, non-infringement and freedom-to-operate opinions, primarily involving the mechanical, electrical and chemical arts.  He also has had extensive experience in trademark prosecution and enforcement, and has been involved in various patent litigations, reexaminations, reissues and interferences.

Steve can be contacted on +1 202 721 5433 or by email at swarner@fchs.com

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