IPcopy attended a number of lectures at AIPLA last week which discussed areas of development or concern in US patent law. What follows are a few thoughts and observations.

• The scope of prior art: a dilemma for the patent community. In a discussion about prior art that will now be citable under the America Invents Act compared to the pre-AIA procedures, there was a lot a discussion about non-US prior art and foreign language prior art being cited in US patent prosecution. Although it was acknowledged that there hadn’t yet been a noticeable shift in US Office Actions to cite non US prior art this was still seen as an area of concern that needed to be monitored.

• Patentable subject matter under section 101 got a thorough going over in a number of sessions at AIPLA with much discussion about the CLS Bank decision where no consensus was reached amongst the 10 judge panel. At a lunch lecture Chief Judge Randall Rader commented that he regarded CLS Bank as a personal failure and a failure of his institution. He later remarked that the case provided an opportunity for the Appeals Court to move forward with the issue of section 101 in later cases and provide clearer guidance.

• Returning to more recent cases such as Ultramercial and Accenture v. Guidewire it was noted that the court’s current preoccupation with its abstraction analysis approach was making it difficult to work out what is patent eligible and what is not. One suggestion for claim construction was, following the allowable claims in the Ultramercial case, to sprinkle the “good stuff” throughout the claim rather than concentrating the inventive contributions in a single wherein clause (which is what happened in the Accenture case which was not held to be patent eligible). Clearly this is an area that is going to see further developments in the very near future and it will be interesting to track how the patent eligibility tests develop and how the boundary line between patent eligibility and ineligibility moves.

• Possibly the best session (in this IPcopywriter’s opinion) was the one on “patent trolls” (or “non practising entities”). It was noted that NPE behaviour is nothing new and that the licensing and selling of patent rights have been a central feature of the US patent system for a long time. It was pointed out that Charles Goodyear and Thomas Edison fell within many current definitions of an NPE.

• On the current NPE debate, it was felt that current policy arguments are rooted in mis-information about the issue. 7 different bills addressing the issue in some shape or form have been introduced on “the Hill” in the last year alone.

• It was noted by a number of panelists that there are many different types of NPE and as such there is no one definition or model that can accurately capture all these types of entity.

• Towards the end of the NPE session it was suggested that the US needs a patent system that works for all patent holders in all technology areas. Focussing on a particular type of patent holder (i.e. the NPE) may result in legislation being developed that looks quite different to that which was intended and it was suggested that a better approach might be to focus on bad litigation practice rather than the nature of the patent holder or the patent itself.

Mark Richardson  28 October 2013

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