Perspective

• Date: 01 September 2023
• Author: Steven P. Caltrider

Published in Landslide, Volume 16, Number 1, 2023. © 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.

1

PERSPECTIVE

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 fulll its

constitutional mandate to advance the arts.

To achieve these goals, the Section contin-

ues 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 impor-

tant role before courts, agencies, and

Congress. Decidedly, the USPTO plays a

critical role in patent quality. The exami-

nation 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 ofce through submis-

sions 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 discus-

sion on reforming PTAB proceedings, to

help nd 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.8 This critical role to “promote”

innovation is often overlooked in the rhet-

oric that IP is the problem rather than the

solution.

At the end of the day, the system works

best for our clients when all stakehold-

ers have trust and condence in the rights

T

he difference between a worthless

piece of paper with a ribbon—or most

recently an electronic image—and a

patent that supports innovation and invest-

ment is the condence in the right granted

by the U.S. government. This condence is

based on two foundational considerations:

(1) the rule of law and (2) full faith that the

U.S. Patent and Trademark Ofce (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.”1 Concerns

have also been expressed regarding the

Federal Circuit, where decisions from the

court seem to be more and more depen-

dent on the panel hearing the case in

addition to the merits,2 and Rule 36 deci-

sions are being used at an alarming rate.3

Post-grant proceedings, particularly inter

partes reviews, have increased the costs

of patent enforcement, and the outcome

is too often a nding of unpatentability.

4

If a patent owner is able to survive (and

afford) the labyrinth, injunctive relief

is less than certain in the still-develop-

ing jurisprudence following eBay Inc. v.

MercExchange, L.L.C.

5

These challenges

and the rhetoric regarding “low quality”

patents have caused inventors, investors,

and other stakeholders to question the reli-

ability of the patent system.6 Patents have

become too easy to challenge and are too

often found fully or partially invalid, which

undermines condence in the system.7

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

condence 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 applica-

tion 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 led may

provide a short-term victory. But such over-

reach 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 efcient prosecution that results from

Steven P. Caltrider

Away from the Edge

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. He

can be reached at stevenp_caltrider@

dfci.harvard.edu. (Continued on page 62)