What to expect in IP law and how to prepare for the future.
2018 is coming to a close. This means we’re looking back at this year’s big changes in IP law and looking forward to what we can expect in 2019. Intellectual property law is an ever-changing landscape and in-house counsels and IP law firms need to be on top of their game as those changes occur.
Let’s take a look at some of the IP patent law trends in 2018 and then we’ll talk through some of our IP patent law predictions for 2019.
IP Patent Law Trends 2018
With the work we do for our clients and the research we do daily, the team at TraskBritt never misses a beat in changes to the IP law landscape. Three notable changes stood out to us in IP law this year.
Inequitable conduct is back.
Inequitable conduct is a defense used by an accused patent infringer: the accused argues the patent owner engaged in inequitable conduct with the USPTO while the patent application was pending and therefore has “unclean hands” and should be denied relief for infringement. This defense had become significantly less powerful in 2011 in Therasense, Inc. v. Becton, 649 F.3d 1276 (Fed. Cir. 2011), but Pharms. Inc. v. Merus B.V. (Fed. Cir. 2017) and Energy Heating v. Heat On-The-Fly (Fed. Cir. 2018) show that the defense can still be a valuable tool for defendants.
Unpatentable subject matter continues to thwart inventors.
Algorithms and “business methods” have long been patent-ineligible for subject matter reasons—much to the chagrin of inventors and technology companies. In 2017, IPO and AIPLA proposed amendments for USC §101, which lays out the law for subject matter eligibility. They’ve since joined forces and have continued to push for reform.
In the meantime, we continue to live in a post-Alice world; merely presenting an abstract idea and applying it with a computer won’t qualify for a patent. If you want to know more, you can read TraskBritt’s take on subject-matter eligibility.
We’re still fighting over the “on-sale bar” under the AIA.
The two sides continue to ramp up in Helsinn Healthcare v. Teva Pharma (Supreme Court 2018). This case asks (and will hopefully settle) the question: are secret and confidential business deals considered sales activities under the AIA? §102 suggests that the on-sale bar is limited only to prior art that is “available to the public.” However, the pre-AIA stance was that confidential sales activity could negate patentability, and there isn’t a clause in the AIA that directly addresses the past precedent. This question is up for interpretation and the amicus briefs are pouring in—over 20 have been filed so far.
Trends to watch for in IP Patent Law in 2019
It’s hard to predict the future, but let’s consider a few trends to watch for in IP law in 2019.
Oil States will increase the importance of trade secrets.
This has already happened to a degree, and we expect the effect of Oil States to continue to be felt in 2019. We also expect patents to continue to be weakened. This trend is felt by innovators who may be finding it difficult to justify spending billions on innovation only to be awarded a “public franchise.” Read TraskBritt’s write-up about patent-eligible software to catch up on the basics.
The PTAB and inter partes review will continue to reign in intellectual property litigation.
The AIA gave us the frequently used and powerful tool of inter partes review (IPR). Requests for IPR are granted at least 70 percent of the time and are successful around 75 percent of the time. They have been called a “death squad for killing property requests,” and will continue their tirade.
The Article I court, PTAB, will also continue to reign as cases are brought before it and it invalidates patent claims, especially now that IPRs can be instituted on all challenged claims after SAS Institute Inc. v. Iancu, 584 U.S. (2018). As a side note, you can read about how the PTAB rules on subject-matter eligibility in appeals from examiners in our previous post.
Staying current on IP law trends is daily life at TraskBritt. Staying knowledgeable will help inform your decisions and give you a strategy going forward into the next year and your next project. Learn more about how TraskBritt can help.