7 open questions in the IP world

Experts discuss the current top IP concerns

1. How will the war between Apple and Samsung end?

“I will spend my last dying breath if I need to, and I will spend every penny of Apple’s $40 billion in the bank, to right this wrong.” Those words, spoken by the late Steve Jobs to his official biographer, have become legend in the ongoing saga of Apple Inc.’s claims that Google Inc.’s Android operating system is a “stolen product” and that Samsung Electronics Co. Ltd.’s phones and tablets—in packaging, hardware design and user interface—are “slavish” copies of Apple’s products, as the company claimed in April 2011 in the first of several lawsuits it filed against Samsung. Samsung, for its part, has countersued Apple in jurisdictions around the world and at the International Trade Commission.

The twists, turns, verdicts, determinations, sanctions, injunctions and appeals in the various litigations have grabbed more headlines than any IP dispute in history. How the story ends is far from clear, but experts have begun to speculate on its ultimate impact on the smartphone wars.

2. How will companies—and the patent office—deal with the implementation of  the America Invents Act?

The Leahy-Smith America Invents Act (AIA) introduced sweeping reforms to the U.S. patent system when it became law in September 2011, and its key provisions have effective dates of September 2012 and March 2013. Already, people are beginning to grapple with understanding and interpreting the patent system it creates, which Wil Rao, a shareholder at McAndrews, Held & Malloy, says is a parallel track to the pre-AIA patent system.

“Maybe 20 or so years from now, when the last vestiges of the pre-AIA system fade away, we’ll find that the U.S. patent system overall is better,” Rao says. “Until then, the new parallel-track patent system is poised to create a higher degree of uncertainty and complexity and, potentially, a new drag on innovation and efficient market operation.”

3. Are human genes patentable?

In November 2012, the Supreme Court granted cert in Association for Molecular Pathology v. Myriad Genetics, Inc., a lawsuit challenging Myriad’s patents on BRCA1 and BRCA2, two human genes. The U.S. Patent and Trademark Office (PTO) granted Myriad patents for the genes as a composition of matter—one of the four categories of patentable matter. Myriad figured out how to isolate and purify the genes to effectively test them for mutations associated with an increased risk of breast and ovarian cancers and to inform treatment options.

4. Who will fill Kappos’ shoes?

If this is the PTO’s Pax Romana, recently departed Director David Kappos is its Augustus. Kappos, former engineer and IP head at IBM Corp. who took his PTO post in August 2009, announced in November 2012 that he would step down at the end of January. Seemingly across the board, the patent bar was sad to see him go. It appears that Kappos’ experience at IBM—one of the country’s most prolific licensing programs and largest holders of patents—gave him a unique understanding of the interplay between the patent office and patent attorneys, and the Kappos directive was to work with patent applicants rather than against them.

5. How will companies manage the new gTLDs?

The Internet Corporation for Assigned Names and Numbers (ICANN) has spent years preparing to roll out its new generic top-level domain names (gTLDs) and working with applicants to assign them. In 2013, the roll-out begins (absent any further delays). 

6. How will IP issues play out on mobile platforms?

Brand owners largely have gotten the hang of policing websites for trademark infringement, but mobile platforms and the rise of apps have introduced a host of new issues. While much of the regulatory and legal focus surrounding mobile devices has been privacy-related, IP issues are beginning to percolate, and brand owners, platform operators and app developers are beginning to grapple with some of the associated complications. On the web, for instance, brand owners simply report static webpages for takedown; in the mobile world, they may be confronting infringement by apps that millions of users have already downloaded. The money users sink into in-app purchases can further complicate matters. 

Third parties have developed technologies to help brand owners police various mobile platforms, but as the weight of the user base shifts to mobile, IP issues will come to the forefront, says Randi Singer, a partner at Weil, Gotshal & Manges.

7. What are the copyright rules when TV and the Internet collide?

The copyright law surrounding established technologies such as cable TV, video-on-demand and VCRs/DVRs is fairly settled, but new-media twists on TV-watching have led to a host of cases examining how to apply the existing law to technologies that hadn’t yet been conceived of when the law was set.

A particularly action-packed area surrounds one question in particular: What hath Cablevision wrought? 

Associate Editor

Melissa Maleske

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