Category Inside Views

Proposed PTAB Rules Provide Incremental Change

On August 20, the United States Patent and Trademark Office (USPTO) published proposed amendments to current rules governing trial practice before the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA). The new proposals contain more substantive changes than the May package and while all parties will appreciate the USPTO clarifying various issues in the proposed rules, many patent owners may be underwhelmed with the real-world impact of the proposals, especially the portion dealing with motions to amend claims during AIA trials, write Jason Lohr and Stephen Shaw.

USPTO Proposes New PTAB Trial Rules

This week the United States Patent and Trademark Office (USPTO) published a proposed rule to amend the existing rules of practice for inter partes review, post-grant review, the transitional program for covered business method patents and derivation proceedings that implemented provisions of the Leahy-Smith America Invents Act (AIA).

Trade Secrets: The ‘Reasonable Steps’ Requirement

Trade secret theft is a top risk for companies today. When the worst does happen and trade secrets are compromised, companies must prove that reasonable steps have been taken to protect a company’s crown jewels. But determining what "reasonable steps" are can be challenging. Governments have been vague about the term's definition; and laws and legislation continue to evolve on this issue. However, court actions do provide insight on the ‘reasonable steps requirement’ and point to the need for companies to embed trade secret protection into business operations to qualify as legal protection, writes Pamela Passman.

Five Reasons Why TPP Countries Should Unite To Oppose The US Pharmaceutical IP Agenda

Failure to reach agreement over expanded intellectual property (IP) protections for medicines has proven to be a stumbling block to completion of the 12-country Trans Pacific Partnership negotiations. As expected, the US is continuing to pressure negotiating partners to adopt broader and longer monopoly protections for medicines. But the risks for their health systems are very high – and will be much higher if they don’t stick together in rejecting the US demands.

The TPP’s Reckless Proposals For Damages Will Have Negative Impact On Future Reform Of IPR Regimes

James Love writes: This week negotiators from a dozen countries are meeting to finalize the rules for the Trans Pacific Partnership (TPP) trade agreement. When or if concluded, this massive regional trade agreement will set new standards for the grant of property rights in knowledge, and the enforcement of those rights.

The TPP chapter on intellectual property covers all intellectual property types included in Part II of the WTO's TRIPS agreement, plus some others, including not only patents, copyrights and trademarks, but also "undisclosed information", test data for the registration of drugs, industrial designs, layout-designs of integrated circuits. The rules in the TPP are intended by the United States to become global norms, effectively replacing TRIPS.

While there are plenty of issues in the TPP IP Chapter, this note only addresses one set of issues -- those relating to the remedies for the infringement of intellectual property rights. The remedies include such topics as injunctions, damages, and the seizure or destruction of infringing goods.

Decision Time On Biologics Exclusivity: Eight Years Is No Compromise

Burcu Kilic and Courtney Pine write: As the Trans-Pacific Partnership (TPP) negotiations approach their endgame, biologics exclusivity is still considered “one of the most difficult outstanding issues in the negotiation.”[2] Pharmaceutical companies seek longer data and marketing exclusivities to further delay market entry of cost-saving biosimilar drugs. Data exclusivity prevents follow-on pharmaceutical developers from relying on originators’ test data submitted for marketing approval while seeking such approval for its own product. The World Trade Organization’s (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) requires some protection against unfair competition for this sort of data, but it does not require countries to adopt rules conveying exclusive rights over it in the same way as it does regarding patents.[3] Currently, the US provides 12 years of exclusivity for new biological products under the Biologics Price Competition and Innovation Act (BPCIA).[4] The provision providing 12 years exclusivity was buried inside the 20,000-page healthcare law, The Patient Protection and Affordable Care Act. A robust debate over what would be an appropriate exclusivity period, if any, was overshadowed by other controversial aspects of the bill commonly referred to as Obamacare.

Learning From Ebola

In 1976, Yambuku village school headmaster Mabalo Lokela felt sick when he returned from a trip to northern Zaire near the Central African Republic border. He had a high fever, diarrhea, and bleeding. Because he was initially believed to have malaria, Lokela was given quinine, but his symptoms got worse and he soon died. Shortly afterwards, those who had been in contact with Lokela also died. ... Almost four decades later, there is still no cure for Ebola, despite the fact that drug development on average takes about a third of this time frame, write William Fisher and Quentin Palfrey.

3D Printing And Public Policy

John Hornick writes: Although legal principles apply to 3D printing the same as they apply to any other technology, 3D printing has the unique potential to upset the legal status quo. It is the potential scale of 3D printing that may have profound effects on the law. 3D printing cuts across many areas of law, most types of technology, and almost all types of products. Eventually, anyone may be able to make almost anything. No one else will know they made it or be able to control it, which I call 3D printing away from control.

US Political Trademarks And Campaign Branding 2016

As prospective presidential candidates prepare to plunge voters in the United States into campaign purgatory, it is time for pundits to examine how candidates are branding their political campaigns and crafting their messages to appeal to the electoral audience. With the presidential race beginning to heat up, which candidate will seize the message that resonates most with American voters? And what will that message be?