Do Not Discriminate - A Guiding Principle of Patent Reform

AuthorGeorge W. Jordan III
Pages1-63
Published in Landslide® magazine, Volume 12, Number 5, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 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.
Perspective
When you think of patent reform, nondiscrimina-
tion likely does not spring to mind, and yet “do
not discriminate” ought to be a guiding princi-
ple. Time and again when legislative or administrative patent
reform has been proposed, the ABA-IPL Section has urged
nondiscrimination on the basis of the subject matter, eld of
invention, or eld of technology. As the laws advanced, our
advocacy has maintained allegiance to this principle.
In 1995, the Section opposed excluding surgical and other
medical procedures from patenting, and after the discrimina-
tory exclusion was adopted into law in 35 U.S.C. § 284 similarly
established policy in 2007 favoring its elimination. In 2001, in
response to H.R. 5364, the Business Method Patent Improve-
ment Act, proposing to treat business method inventions
differently for patentability, the Section opposed discriminatory
availability of patent rights and discriminatory treatment of pat-
ent applications based on the “eld of invention.
In 2005, the ABA-IPL Section supported legislation
expanding the subject matter eligible for “prior user rights”
under 35 U.S.C. § 273 to include “all categories of patented
subject matter.” At the time, the prior user rights defense,
which was created in 1999 by the American Inventors Pro-
tection Act, was limited to business method patents and
continued use of internal business processes alleged to con-
stitute patent infringement. This provision was in response
to concerns generated by the Court of Appeals for the Fed-
eral Circuit’s decision in State Street Bank & Trust Co. v.
Signature Financial Group, Inc.1 Subsequently, the America
Invents Act in 2011 accomplished for the prior user rights
defense exactly what the Section had supported in 2005.
In 2007, because of its opposition to discriminatory availabil-
ity of patent rights based on the eld of invention, the Section
opposed S. 681, the Stop Tax Haven Abuse Act, proposing to
deny patents on inventions related to tax planning. Soon after the
U.S. Supreme Court decided Bilski v. Kappos,2 the Section cau-
tioned that the teaching of Bilski should be applied to the patent
examination process for process claims “without discriminatory
treatment based on the eld of the invention.”
More recently, in 2018, the ABA-IPL Section, in coopera-
tion with the Intellectual Property Owners Association and
the American Intellectual Property Law Association, adopted
the principle that “exceptions [to patent eligibility] should
be subject-matter neutral so as to not discriminate in favor of
or against any eld of invention that has been developed or
may be developed in the future.”3 Then just this past year, the
Section adopted policy opposing legislation that would arbi-
trarily shorten the term of a validly issued patent or arbitrarily
eliminate the statutory presumption of validity of an issued
patent based solely upon the “eld of technology” to which
the patent claims are directed.
By avoiding discriminatory treatment on the basis of
the eld of invention or eld of technology, patent reform
sponsors can refrain from picking winners and losers. Dis-
criminatory treatment risks altering the types of inventions and
technologies protected, dampening patent arms races within
an industry, disrupting markets for selling or licensing pat-
ents in an industry, shifting research and development (R&D)
investments from one industry to another (e.g., to an industry
with less resource-intensive R&D), losing R&D investments
to countries practicing nondiscriminatory treatment, making
an industry less innovative over time (e.g., the pharmaceuti-
cal industry in India), and potentially eliminating industries
in which patenting is indispensable for protecting innova-
tion and non-patent protection (e.g., trade secret protection)
is not practically available. Discriminatory treatment might
also needlessly ignite tugs-of-war between stakeholders in
different industries and dangerously open the door to reform
efforts to specially calibrate the patent system for the particular
industries and technologies of the winners or alternatively for
life-saving health industries of the losers—risking system frag-
mentation as well as over-inclusion and under-inclusion from
singling out industries and technologies.
In contrast, not only does nondiscriminatory treatment
on the basis of the eld of invention or eld of technology
facilitate doing no harm to any industry, but such treatment
also accounts for both the future and related common indus-
try interests. Future elds of invention and technology will
undoubtedly differ from those elds that exist now. New
elds, including industries, will emerge, and our patent sys-
tem should therefore be exible enough to accommodate
these inevitable changes rather than being rendered obsolete
due to industry-specic or technology-specic calibra-
tions. Whether related to invention or technology, there are
common interests in a patent system that encourages inno-
vation, discourages free riding off costly R&D of others,
and complies with the Agreement on Trade-Related Aspects
George W. Jordan III is chair of the ABA Section of Intellectual
Property Law. As senior counsel at Norton Rose Fulbright in Houston,
Texas, he specializes in patent litigation and investigations with an
emphasis on wireless, mobile, and e-commerce technologies, as well as
licensing and due diligence in all areas of intellectual property law. He
can be reached at george.jordan@nortonrosefulbright.com.
By George W. Jordan III
Do Not Discriminate—A Guiding Principle of Patent Reform
Continued on page 63
Published in Landslide® magazine, Volume 12, Number 5, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 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.
Volume 12 • Number 5 • May/June 2020
2 LANDSLIDE n May/June 2020
5 Brief Writing Tips from Federal Circuit
Clerks—A Most Important Audience
While judges are the primary audience of briefs led with the Federal Circuit,
they are not the only audience. Law clerks recommend strategies for writing
persuasive and effective briefs.
By the Honorable Jimmie V. Reyna, Aaron P. Bowling, and A. Victoria Christoff
10 Cloaked Wisdom: Advice from Current
and Former Federal Clerks
Several federal court clerks suggest best practices attorneys can use to advance
their cases, as well as practices to avoid to prevent impairing their cases.
By Shane Delsman
14 Responding to Trademark Ofce Actions
Decisions about how and when to respond to trademark ofce actions can
greatly impact the chances of successful registration.
By Kelu L. Sullivan
Columns
1 Perspective
Do Not Discriminate—
A Guiding Principle of
Patent Reform
By George W. Jordan III
58 Decisions in Brief
By John C. Gatz
Departments
®
®
Editorial Policy: Landslide® magazine provides
articles on contemporary issues in intellectual
property law for practicing attorneys and others
interested in the subject matter. The materials
contained herein represent the opinions of
the authors and should not be construed to be
those of either the American Bar Association,
the Magazine Editorial Board, or the ABA
Section of Intellectual Property Law (ABA-
IPL) unless adopted pursuant to the bylaws of
the Association. Nothing contained herein is to
be considered as the rendering of legal advice
for specic cases, and readers are responsible
for obtaining such advice from their own legal
counsel. These materials and any forms and
agreements herein are intended for educational
and informational purposes only. Landslide
magazine advertisers are responsible for the
content of their ads as printed. The ABA, ABA-
IPL, and its Magazine Editorial Board are not
responsible for the accuracy of ad content.
Pg. 10
Published in Landslide® magazine, Volume 12, Number 5, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 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.
Pg. 20
36 Working Up Your Patent
Infringement Case: How Doing Your
Homework Can Keep You One Step
Ahead
Investing time and effort up front before even ling a
complaint will help you better advise your client regarding
potential scenarios, risks, and likely outcomes.
By Nikki Little
40 Trade Secrets 2.0: Stepping Up to 21st
Century Trade Secret Protection
Learn how to enhance trade secret protection beyond NDAs and
litigation, especially when trade secrets are shared with other
businesses.
By Nicole D. Galli
44 Smarter Licensing Simplied
The proposed “inside-out” approach to drafting licenses may help
attorneys overcome the challenges of producing a license that
accomplishes the client’s business objectives.
By Charles C. Valauskas
49 How Do You Really Build Your Client
Base?
Explore the different ways to approach business development and
how activity can be matched to personality to help attorneys win
new work.
By Douglas H. McPherson
52 Commonalities of In-House and
Private Practice in Law and Business
Being mindful of the common themes critical to both in-house
and outside counsel allows for stronger client advocacy and better
attorney collaboration.
By Kim Boyle
55 The Pros and Cons
of Serving In-House
From the ability to focus on a single
client to a greater work-life balance
to a lower salary compensation, there
are advantages and disadvantages to
serving as in-house counsel.
By Heather N. Bowen
20 Budding In: The Law’s Intrusion
on Branding in the Cannabis
Industry
Although the USPTO will not trademark cannabis-
related goods or services, cannabis businesses have a
few options to protect their unique brand.
By Allison B. Margolin, Raza Lawrence, and
Xochilt Gama
24 BIG MAC EU Trademark Revoked
for Nonuse
A recent EUIPO decision highlights that no matter
how well known or extensively used a trademark
is, the evidence alone must be sufcient to establish
genuine use.
By Janette C. Hamer
27 Cyber Privateers: Protecting
American Intellectual Property
from Cyber Theft
Allowing private individuals and companies to receive
immunity for active cyber defense and hacking back
activities would help protect American IP.
By Allen Loayza
33 Examining the Examiner
Understanding the basics and art of examiner interviews
can improve the process and reinforce the notion that
interviews are indispensable to advance prosecution.
By Rebecca G. Rudich Pg. 44

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