Cheat Sheet: The most important IP questions facing in-house counsel

Experts weigh in on today’s most pressing intellectual property issues

 

It’s been a busy year in the IP world, with billion-dollar patent verdicts, notable legislation and upcoming Supreme Court arguments. In our February cover story, InsideCounsel examines the seven most pressing IP issues and provides expert insight on how they may impact corporate counsel.

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

Experts disagree on whether this long-running, global patent battle will conclude with a settlement or a trip to the Supreme Court, but many agree that its outcome will have a lasting impact on the IP and mobile device world. If the two companies settle, for instance, it could result in a cross-licensing agreement such as that in a recent settlement between Apple and HTC.

No matter the outcome, the dispute also has underscored the increasing importance of design rights, which many high-tech companies are protecting with patents.  

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

The Leahy-Smith America Invents Act (AIA) became law in September 2011, but companies are still bracing for its central provisions, which go into effect next month. Among the biggest changes enshrined in the law is the transition from a first-to-invent to a first-inventor-to-file system, and a broader definition of prior art that includes international public use or sale.

The AIA also increases the standard for filing multidefendant patent suits—which patent trolls often use to widely assert their patents—and allows parties to contest patents more quickly with its post-grant and inter partes review proceedings.

3. Are human genes patentable?

This question is one that the Supreme Court is poised to take up in Association for Molecular Pathology v. Myriad Genetics. The Federal Circuit has twice upheld Myriad’s patents on two human genes, once in light of the Supreme Court’s ruling in Mayo Collaborative Services v. Prometheus. In that case, the high court ruled that Prometheus’ method for determining the effectiveness of a drug was not patentable because it involved a “law of nature.”

“A lot of people in the industry are concerned that [the Supreme Court will] limit eligibility by striking down these claims,” says Axinn, Veltrop & Harkrider Partner Jonathan Harris. “It’s hard to know, but they took the Myriad case for a reason. There’s obviously something the Federal Circuit did that they did not like.”

4. Who will fill Kappos’ shoes?

Among the flurry of government officials to resign following President Obama’s November re-election was David Kappos, director of the U.S. Patent and Trademark Office (PTO), who left to join Cravath, Swaine & Moore as a partner. During Kappos’ three and a half year tenure, the agency began to implement the America Invents Act (AIA) and reduced its patent application backlog by almost 150,000.

Experts also credit Kappos, a former IBM Corp. attorney, with fostering a spirit of cooperation between the agency and patent applicants. Former Crowell & Moring Partner and PTO deputy director Teresa Stanek Rea is now serving as the agency’s acting director, and has been identified as a potential permanent successor to Kappos.

5. How will companies manage the new gTLDs?

With the introduction of generic top-level domains (gTLDs), companies are no longer confined to standard domain names such as .com, .net and .org; now they have their pick of gTLDs including .toys, .film and even .porn. The new system could be a boon for companies looking to strengthen their brands, but it could also cause problems if cybersquatters try to buy up domains associated with other companies.

Anticipating these concerns, the Internet Corporation for Assigned Names and Numbers (ICANN) has created a Trademark Clearinghouse, where brand owners can object to gTLDs or file to protect their trademarks. But Erik Pelton, a former PTO examiner, says that there are still questions about the structure and effectiveness of that system.

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

The rise of mobile technology has brought with it a whole host of privacy, data security and intellectual property issues. On the IP front, brand owners now face the possibility that app developers will infringe on their intellectual property in apps that are then downloaded by millions of users. The task of monitoring these ever-shifting apps is often significantly more difficult than sending a takedown notice for a static webpage.

“The policing has become infinitely more complicated, and it’s always a moving target whether somehow your brand has been co-opted inside an app, the app itself infringes or the title infringes,” says Randi Singer, a partner at Weil, Gotshal & Manges.

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

The combination of traditional TV watching with newer technologies has raised new questions about IP protection. Notably, the 2nd Circuit ruled in 2008 that a Cablevision DVR service that stores video in the cloud and streams it to users does not infringe on the rights of copyright owners, because it is similar to VCR recordings. But more legal challenges to similar services have continued to arise.

“Can we create this centralized VCR? Is this technology more like the Internet version of the DVR, or more like Internet-delivered video-on-demand?” Todd Larson, a lawyer at Weil, Gotshal & Manges, says companies and courts are asking. “How you answer that simple question has very different legal implications, and very quickly, you get into the finer points of arcane copyright law definitions.”

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