BPG Radio - All IP All the Time

Ponder four scenarios: (a) ocean freighter entering Long Beach with several containers of fake Kate Spades; (b) two companies clashing over priority of trademark rights and one may not have maintained use in commerce; (c) well-financed new enterprise picks a corporate name and discovers a third party has registered the corresponding domain name but is not using it; and (d) company X reviewing company Y’s patent comes across old document suggesting an invalidating public display by Y – did it happen?  These are not uncommon problems, but they require discreet information gathering.  You need an IP PI.   

Digging up dirt on patents, trademarks and copyrights requires creativity, persistence, and intellect.  All the regular investigation practices (and skullduggery) come into play; but add complex technical subject matter, cagey marketing personnel and shady importers.  Who better to speak with on the subject than Ken Taylor, CEO of Marksmen, a leading worldwide IP investigative firm (www.marksmen.com).  Taylor, a former private investigator (and English major) leads us on a quick blast on the why’s and how’s of IP investigations, best investigative practices, and ethical problems (to avoid). 

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It’s interesting how different countries define legal acts in different ways.  Or maybe it’s just annoying.  For example, how does it serve justice, common sense or clarity in the law to have a particular human act be a felony in one state, a misdemeanor in another, and totally legal in a third (think of the evolving law on medical uses of hemp).  That could be explained by varying acceptance of social conduct between population groups.  But what about more esoteric topics such as the definition of “contract?”  After a few hundred years of jurisprudence, we may have finally gotten to a point where the basic elements of contract formation do not vary wildly between US states.  But step outside the US or put goods into international commerce and now your US-executed contract may not be valid under the CISG (UN Convention on Contracts for the International Sale of Goods).  Better race to the courthouse.

Thankfully, mercifully, decades of effort by international study groups, negotiators, ambassadors and legislatures have resolved all international variances in intellectual property law.  Yes, in the early years of the 21^st century, we can look with pride across a global expanse of harmonious and uniform application of patent, trademark and copyright laws. 

And if you’re not laughing out loud, you should be.  Why, take patent law.  We can’t even get international accord on the definition of a patentable invention.  For example, a good incorporating new technology sold once publicly in the US without the benefit of a pending patent application works a worldwide forfeiture of patent rights (for the vast majority of countries requiring absolute novelty).  Maybe there’s a valid policy in pushing inventors to seek protection before commercialization.   But go deeper on what an invention is. 

To be patentable, an invention must be novel and non-obvious.  Or, on the latter point, in different parlance, show an “inventive step.”  On the issue of obviousness in the US, there are widely varying opinions on how different an invention must be from prior art to be a patentable invention (all employing multi-factor tests).  KSR hardly settled the matter.  More inventions are being attacked in the US on obviousness grounds than ever, suggesting greater uncertainty for all concerned.

So in an effort to get some distance from the maelstrom at home, we spoke with Neil Ireland, a patent attorney at the Phillips Ormonde & Fitzpatrick firm in Melbourne, Australia (www.pof.com.au).  Maybe it’s having summer in December that keeps the Australians a little more flexible.  But as Neil shares, their High Court is going in the opposite direction of the US Supreme Court and making it easier to show “inventive step” (non-obviousness).  The High Court, in a widely discussed case, recently reaffirmed that an “inventive step” can be shown with a mere “scintilla” of invention.  See Lockwood Security Products Pty Ltd. v. Doric Products Pty Ltd. (High Court 2007), opinion at http://www.austlii.edu.au/au/cases/cth/high_ct/2007/21.html.  Before you rush to file patent lawsuits in Australia, there is no presumption of patent validity.  Once a patent goes into the Australian federal courts, it’s de novo review.  So your patent will get a hard look no matter what.  Listen carefully as Neil tells all.  Then, we’ll be back shortly with the rest of the answer on international IP harmonization….

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What with all the paranoia surrounding In re Bilski (on patentable subject matter) and In re Nujiten (on signal claims) and the demands of certain groups for an end to software patents (see http://endsoftpatents.org), one might think we were on the verge of software patent mortality.  Never mind that software has allowed for 40 years of high-speed technical advances, from trips to the moon to the Human Genome Project.  Perhaps the pace of innovation is frightening to some.  And if we pretend that the software that drives our machines isn’t really much of an invention, we can somehow prevent some Terminator-like future (but we all know who won the War of the Machines).  Maybe it’s the “plague” of software-related patent suits – but does anyone have any data on this?  Has anyone been willing to evaluate those suits simply on their merits rather than make sweeping statements about patentable subject matter or junk patents?  Perhaps policy issues are afoot.  Software development and implementation might be simpler if no one could get a patent on software – but that would be true for any industry. 

Rather than try to solve these issues en masse, we settled for a good conversation with a friend from across the Atlantic, Paul Cole, a chartered patent agent, patent litigator, and law professor from the UK who has written and spoken widely on issues of software patents.  Software patent issues are hot in the UK and EPO right now (see www.bailii.org/ew/cases/EWHC/Patents/2008/518.html), and Paul shares some candid thoughts.  Maybe there’s a middle path?  Fellow M&G colleagues Denise Kettelberger and Rob Kalinsky join the conversation.  Listen in (ignore my efforts to pronounce “cryptanalytic”).

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