IPO 2018: Insights from the USPTO, EPO and the bench (when digital natives meet digital immigrants)

The Intellectual Property Owners Association’s 46th Annual Meeting took place in Chicago from 23 to 25 September 2018.  Suzy Madar from the Sydney IP team reports on the conference highlights.

After a night of whisky tasting and networking, the Hon. Andrei Iancu, Director of the US Patent Office, kicked off the IP Owners Annual Conference in Chicago with invaluable insight into the future of patentable subject matter in the United States. Director Iancu passionately stressed the need to “get out of the rut” and “keep objections in their own lanes” as well as a real concern that the question of patentable subject matter invites grounds of objection to be “commingled”, leading to distorted legal conclusions and arbitrary results. The USPTO is working tirelessly to develop further guidance that will synthesise (from the caselaw) categories of subject matter that are not eligible for patent protection so that they can be addressed on their own.

Interestingly, at another patent session on patentable subject matter the following day, the question “where is Congress?” was raised – a suggestion that rather than relying on the USPTO to draft guidances, Congress really needs to provide a strong statement about where the US patent system is heading to give the Court something to “latch onto” when looking at patentable subject matter. A live poll showed that 50% of the audience thought legislative action is required and a further 41% thought legislative action combined with further judicial interpretation is the answer.

Currently in the US, the exceptions to patentable subject matter encompass natural phenomena, laws of nature and abstract ideas (that are harder to define but include mathematical concepts, methods of organising human interactions and commercial practices, and mental processes). Director Iancu stressed the importance of addressing these categories without questions of novelty or inventiveness infecting the analysis.

The Patents Year in Review session wrestled with the question of permitting recovery of overseas damages and lost profit in US proceedings for infringement and recognised that other jurisdictions may well “retaliate“ by moving to catch US infringements in overseas cases. The review session also looked at the doctrine of a equivalents in the United Kingdom, and in particular, whether a variant that does not infringe as a matter of normal claim interpretation nevertheless infringes because it varies from the invention in a manner that is “immaterial”, in the sense that it is obvious that the variant will achieve the desired result in the same way and the person skilled in the art would not think the inventor intended strict compliance with the words of the claims so as to exclude the variant.

Regis Quelavoine, Director of Mobility and Mechatronics at the European Patent Office, then struck fear in the hearts of the audience, by indicating the danger of using words in a claim relating to computer implemented inventions that will put one of the 45,000 examiners (that will almost certainly have a PhD) into a frame of mind – within five minutes of considering the claims – that “this is a business method patent, how do I kill it?” instead of “this is a technical solution to a technical problem – how do I grant this application?”  He said that claiming the “how“ rather than the “what“ will increase the likelihood of the application falling into the 15% or so of computer implemented invention applications that are granted. The following heated discussion from the audience suggests that great minds will differ in relation to which side of the line a claim will fall, which US attorneys seemed to think was an unsatisfactory position.

Delegates of the conference were also treated to a timely discussion of whether likely tendencies of Supreme Court Judges in relation to IP can be predicted by their political appointments. In a very entertaining presentation, Judge O’Malley stayed clear of abortion rights and affirmative action, only caring about IP – just for the day.  Judge O’Malley thought it was impossible to predict the likely persuasion of a Judge based on political lines so far as IP is concerned but did think that new technology will divide opinions as to what will lead to the promotion of greater innovation. Her Honour indicated that the fact “Digital natives”, generations X, Y and millennials  are now coming onto the bench to intermingle with “digital immigrants”, those born before 1980, is going to provide for an interesting melting pot. In any case, clarity will seemingly appeal to immigrants and natives from  both sides of the political divide.

The tip? Stay safe by drafting claims as you would a contract or a settlement deed. Close loopholes and clarify ambiguities!

The Intellectual Property Owners Association (IPO), established in 1972, is a trade association for owners of patents, trademarks, copyrights and trade secrets.  IPO serves all intellectual property owners in all industries and all fields of technology.

IPO advocates for effective and affordable IP ownership rights and provides a wide array of services to members, including: supporting member interests relating to legislative and international issues; analyzing current IP issues; information and educational services; and disseminating information to the general public on the importance of intellectual property rights.