I recently asked Thomas Creel, of Thomas L. Creel P.C., former patent law professor for 20 years at Columbia University Law School, that with all the latest developments in the patent community including the rebirth of patent reform, the recent court cases regarding what is patentable subject matter and the proposed changes in PTO procedures, what are the top 10 areas of interest for Patent  Practioners right now?  Here is what he had to say….

1.  Economy – There’s been a lot of talk about how the economy has and is changing the practice of law, particularly in private practice. For example, new billings methods have been proposed to replace the hourly billing traditional system. Have there been discernable economic and structural changes which have affected the patent practitioner, and how are they likely in the future to affect him or her?  For example, what is the future of the big boutique law firms (such as Finnegan, Henderson; Kenyon & Kenyon; Fitzpatrick, Cella, etc.) vs. the IP sections of large general firms?  How about large corporations- has the economy affected the filing of patent applications or the handling of litigation?  Another aspect of this might be what the average charge is for prosecution, litigation, licensing, etc.

2.  35 U.S.C. Sec. 101 – There is a lot of interest in what is patentable subject matter.  For example, the U.S. Supreme Court is soon to decide the Bilski case concerning the patentability of computer programs.  Additionally, Judge Sweet in New York just decided that DNA was not patentable in a lawsuit brought by the ALCU and others.  This will greatly affect the biotech industry.  This will very likely wind up at Supreme Court as well.

3.  35 U.S.C. Sec. 103 – obviousnessHas the KSR decision affected any particular areas of patent law- how applications are prosecuted, how licensing is conducted (parties more or less likely to accept a license), litigation decisions, etc.?  Are there statistics showing whether patents are now more likely to be found invalid?  If so, are there only certain areas where this is true, such as for easily-understood patents using simple technology?  

4.  Patent Reform Legislation Status – Congress has been considering changes to the patent law for several years.  Apparently the current Congress is moving forward to try to implement some new statutory provisions.  What is the status?  What is likely to be implemented?  When?  How will this affect the practice of patent law?

5.  Litigation v. ADR (Arbitration and Mediation) – Since arbitration and mediation are confidential, it is difficult to obtain information on how often they are used versus traditional litigation in patent matters.  At least on my conversations with various corporate counsel, I believe that these procedures are used much often than the general bar understands. When should arbitration and mediation be used versus litigation? What are the benefits and detriments of each type of proceeding?

6.  Patent Marking – The Forest Group case recently decided by the Federal Circuit supposedly has damages of trillions (sic) of dollars based on false marking section in 35 U.S.C.  This section of the law has generally been ignored until now.  There have been a large group of cases filed seeking awards under this qui tam law .  Gray on Claims on the iNet even keeps track of this growing number of cases (around 20 to date).  Legislation has been introduced to change the statute and do so retroactively.

7.  Harmonizing patent law with other areas of the law – The perception has long been that many areas of patent law do not fit comfortably into the general body of law.  This has been confirmed recently in the injunction area where the Supreme Court held that injunctions in patent law have the same criteria as in all other areas of the law.  The Federal Circuit had long held that there was a presumption of irreparable harm in patent cases.  The Supreme Court said no to that.  What other areas of patent law are outside the main stream of the law?

8.  The Federal Circuit – The Federal Circuit was created in 1982 to, among other things, bring uniformity to patent law.  How has it performed?  Has this experiment with a Court of Appeals with nation-wide jurisdiction over certain kinds of cases been a success?  What changes might be suggested to improve resolution of patent litigations?

9.  Claim Construction and Markman Hearings – The construction of patent claims is often case dispositive. Both the Federal Circuit and the Supreme Court held in the Markman case that claim construction is an issue for the Court, not a jury.  A rationale was that judges are better equipped to make such a determination. It was believed that such claim construction by judges would lead to more certainty in being able to assess possible infringement and validity.  Yet the reversal rate of claim construction on appeal has been stated to be approaching 50%. And the Federal Circuit has refused to take any interlocutory appeals of claim construction and has held that claim construction is a question of law to be reviewed de novo without any deference being given to what the district court did.How has the Markman procedure worked in practice and should the law be changed to make claim construction work better?

10.  USPTO – What changes in PTO practices and procedures have been made and proposed?  What has the new regime of Commissioner Kappos accomplished and promised to do?

If you think we’ve missed anything or have something to add to the  issues Mr. Creel has highlighted let us know in the comments!

Tags: Arbitration and Mediation, Claim Construction, David Kappos, economy, Federal Circuit, Harmonizing patent law, KSR, Markman Hearings, obviousness, Patent Issues, Patent Lawyer, Patent Marking, Patent Reform, patentable subject matter, Thomas Creel, Thomas L. Creel, USPTO

This entry was posted on Monday, May 24th, 2010 at 20:30 and is filed under Claim Construction and Markman Hearings, Patent Issues. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.