With Speedier Time-to-Market and Shorter Product Life Cycles: Diligent Prosecution and Beyond

I just finished a long article that attempted to look at what the past changes in the law, combined with ever-increasing changes in technology, means about patents.  I didn’t try to add a whole lot to the literature about the cases — you know that almost every case the Supreme Court has decided this century has in some way negatively affected the strength of patents, making them harder to get (e.g., KSR, Nautilus), easier to invalidate (same and of course Alice, Myriad), and riskier to enforce (e.g., Octane Fitness).  I also didn’t try to add a whole lot to the literature on how IPRs (and CBMs) have likewise negatively affected the strength of patents.

What I did try to do was look at what is happening, ever increasingly, which is that in many areas of technology time-to-market has become shorter, and, likewise, product life cycles have become shorter.  We get new products more often, and so obviously they’re coming and going more quickly. In many instances, and in a growing number, the product can get to market long before a patent issues after the (average) 25 month pendency, and it may not be on the market long enough to recoup investment. There was some interesting analysis of those last two points.

Where we are increasingly at is a place where economics may not justify applying for a patent.  Not everywhere, but more often, practitioners will find themselves in that place.

I have no idea the degree to which that is the case now, or the extent to which it will become the case more in the future. It is no doubt patent and industry specific.  But if you combine the negative legal landscape with market realities, you see less need for patenting. The direction is clear; the degree, no idea.

Add to that mix the rise of 3D printing, and you can see that infringement will also be occurring in a diffused manner, by individual consumers, and in circumstances often hard to detect.  (CADster should be a great domain name; grab it now.)

Competent practitioners should consider several things.  One is to recognize that diligent prosecution is becoming more important for clients.  Another is that examining whether to discuss with clients the use of Track One, PPH, or the pilot program (or the program — forget its name — that allows for accelerated examination when there’s an older inventor named).

Another is an odd provision in Section 154(d) that allows recovery of damages accruing after a defendant knows of a published patent application, to the extent that it “infringed” those published claims. Mailing copies of published applications to those who may infringe upon issuance may be good practice in some areas.

Anyhow, I’m about to head on vacation for two weeks, and thought I’d leave you with some broader thoughts.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

9 thoughts on “With Speedier Time-to-Market and Shorter Product Life Cycles: Diligent Prosecution and Beyond

    1. 2.1

      Page 2:
      KEVIN EDWARD NOONAN, McDonnell, Boehnen, Hulbert & Berghoff, LLP, Chicago, IL,
      for Amicus Curiae Seven Chicago Patent Lawyers.

    2. 2.2

      from: link to patentdocs.org

      Judge Newman penned a strong dissent, based on her conviction that “my colleagues apply incorrect law and add confusion to precedent.”

      Citing Therasense, Judge Newman correctly states that intent to deceive cannot be inferred but must be proven by clear and convincing evidence. Here, improperly, the “[district] court inferred intent to deceive during prosecution and invalidated the patent, as a sanction for purported attorney misconduct during this litigation.” Also, “there was no evidentiary record developed on intent to deceive, with no testimony and no opportunity for examination and cross-examination of witnesses.” In her view, “[t]he panel majority instead engages in innuendo based on its careful selections from documents not admitted into evidence. The panel majority thus convicts Regeneron, its counsel, and its scientists, with no trial, no evidence, and no opportunity to respond in their defense.”

    3. 2.3

      From the decision (Newman, dissenting, pages 18-19):

      There is no support—legally or factually—for the district
      court’s reliance on the European opposition briefs to
      find these four references material to patentability. The
      European tribunal, with these references before it, did not
      find the claims unpatentable. Nor did the district court.
      The panel majority upholds a finding of but-for materiali-
      ty without finding the claims invalid based on these
      purported but-for material references. It is not disputed
      that the information in those references did not solve the
      problem that was ultimately solved by the ’018 patent.

    4. 2.4

      discussion: dis·cus·sion
      the action or process of talking about something, typically in order to reach a decision or to exchange ideas.

      What are your ideas, Malcolm?

  1. 1

    Great thoughts, and would love to see some of these more developed.

    For example, digital desktop manufacturing may be as much (or more) of a game changer for business models in comparison to the impacts of digital goods in the entertainment circles.

    Keep in mind when contemplating this comparison that the leading market players in digital entertainment were FAR more successful in bending IP protections to their favor (in preserving business models that – quite arguably, without the industry thumb on the scale – would have disappeared long ago).

    “Pirate” denigrations and criminal sanctions are simply NOT likely in the patent world as they are in the copyright world.

    To those that nay-say the impending home-digital-manufacturing era, I would remind all as to what the “leaders” in the personal computer markets boasted (prior to the very opposite coming true).

    If indeed, all that it takes is a “black market” of digital files to displace ANY item of market worth (along the traditional channels), and if “digital files” (alone) are merely considered “abstractions,” then what – if any – possible protections will there be to ward off the “Star Trek” replicator “era of plenty” (leastwise for those who can obtain the replicator and whatever digital files that may be obtained.

    At some point, even the replicators themselves will be reduced to “digital files” themselves, and a single “stealth mode” creation of a replicator may unleash an army of replicants.

    Such a scenario would make the Monsanto v. Bowman case look downright archaic.

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