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October 04, 2023 Perspective

Away from the Edge

Steven P. Caltrider

©2023. Published in Landslide, Vol. 16, No. 1, September/October 2023, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

The difference between a worthless piece of paper with a ribbon—or most recently an electronic image—and a patent that supports innovation and investment is the confidence in the right granted by the U.S. government. This confidence is based on two foundational considerations: (1) the rule of law and (2) full faith that the U.S. Patent and Trademark Office (USPTO) has thoroughly and accurately examined the application and properly issued a patent according to law. Both considerations are now being questioned.

Regarding the rule of law before one of the busiest forums for litigating patent validity, the Patent Trial and Appeal Board (PTAB), then chair of the House Committee on the Judiciary Subcommittee on Courts, Intellectual Property, and the Internet noted “troubling reports that APJs are not always free to make decisions in an independent manner based on the evidentiary record and relevant legal authority.” Concerns have also been expressed regarding the Federal Circuit, where decisions from the court seem to be more and more dependent on the panel hearing the case in addition to the merits, and Rule 36 decisions are being used at an alarming rate. Post-grant proceedings, particularly inter partes reviews, have increased the costs of patent enforcement, and the outcome is too often a finding of unpatentability. If a patent owner is able to survive (and afford) the labyrinth, injunctive relief is less than certain in the still-developing jurisprudence following eBay Inc. v. MercExchange, L.L.C. These challenges and the rhetoric regarding “low quality” patents have caused inventors, investors, and other stakeholders to question the reliability of the patent system. Patents have become too easy to challenge and are too often found fully or partially invalid, which undermines confidence in the system.

The risk—and I hope we are not yet on this path, but for some industries it seems we are on the precipice—is that inventors and investors, who are the critical drivers of the innovation economy, disengage and shift resources to other forms of investment. Medical diagnostic research and small inventors may be closer to this precipice.

How do we step away from the edge of this precipice?

Since 1894, the mission of the ABA Section of Intellectual Property Law (ABA-IPL) has been to advance the development of intellectual property (IP) laws within the profession, before policymakers, and with the public. We have an important role and responsibility within the profession to change this precarious course toward losing confidence in the IP system.

The principal party responsible and accountable for patent “quality” is the drafting and prosecuting attorney or agent. While some may disagree here, the client is better served by a patent application reasonably tailored to the invention. The practice of drafting “fuzzy” language so it can be argued to provide support for a claim to an invention not contemplated until a continuation application is filed may provide a short-term victory. But such overreach undermines the strength of the patent system and fuels its critics. The practice of challenging the validity of a meritorious patent to overwhelm a small inventor or extract a settlement also undermines the system. Whether procuring, enforcing, or challenging a patent, there is a line where being too aggressive risks killing the goose that lays the golden eggs. Prudence—and an efficient prosecution that results from a clear and concise patent application—dictates a better path.

Our role as lawyers and patent agents is not to push the boundaries of the system to the breaking point but instead to zealously represent our clients while preserving and strengthening the patent system to fulfill its constitutional mandate to advance the arts. To achieve these goals, the Section continues its work to further good stewardship for the IP system, with advocacy stemming from its substantive committees and with outstanding educational programming and content.

The ABA-IPL Section also has an important role before courts, agencies, and Congress. Decidedly, the USPTO plays a critical role in patent quality. The examination core works diligently to search the prior art and examine applications for compliance with the law. The Section is a strong supporter of the USPTO for funding and resources to improve examination and regularly engages the office through submissions responding to notices of proposed rulemaking or comments and Section programming. ABA-IPL also continues to lead efforts in clarifying the law on subject matter eligibility, to engage in the discussion on reforming PTAB proceedings, to help find the right balance for injunctive relief, and to evaluate objectively the impact of the federal courts on the IP system—from issues of district court venue to the Federal Circuit.

The Section needs to remind the public of the constitutional mandate of IP to promote the progress of science and the useful arts. This critical role to “promote” innovation is often overlooked in the rhetoric that IP is the problem rather than the solution.

At the end of the day, the system works best for our clients when all stakeholders have trust and confidence in the rights conferred by patent, trademark, and copyright protection. There must be the trust that these rights procured are valid and enforceable—with the confidence that, should the need to enforce the right arise, there will be just remedies in injunctive relief and damages. Anything less will leave too many on the edge of the precipice and put at greater risk the competitiveness of U.S. innovation.

I hope that you will join me in advancing the development of IP laws within our profession, before policymakers, and with the public. With your involvement in the many opportunities to engage the Section, we can all move away from the edge and strengthen the IP system to promote the progress of science and the useful arts.

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    Steven P. Caltrider

    Dana-Farber Cancer Institute

    Steven P. Caltrider is chair of the ABA Section of Intellectual Property Law. He is vice president and chief IP counsel of the Dana-Farber Cancer Institute and retired vice president and general patent counsel for Eli Lilly and Company.