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.

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.

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.”

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.

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.

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.

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.

Alanna Byrne

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Melissa Maleske

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