Thought Leader: Troy Groetken on Patents
Patent protection, whether it be for an invention, a process, or a design, is like the armour and shield of a business; without it, the future of the business is at risk. But patent prosecution and maintenance is not as simple as some might think it is.
Here, Troy Groetken, a shareholder with McAndrews, Held & Malloy, Ltd., answers a brief Q&A on the complexity of patent law in the US and gives thought leader insight on the advantages and disadvantages of patenting your IP in the States.
Your firm works on an international level, but are there any issues US patent legislation causes in the establishment of IP protection in the US?
Currently, IP protection in the US has been diminished by the dual standard of review between the IPR (inter partes review) procedure (broadest reasonable interpretation) and that of US litigation (ordinary meaning as well as abuse of discretion and clear error on appeal). As a result, there is an unfortunate advantage to the petitioner in the IPR process due to the broader standard. Further, to balance such an outcome, it is fortunate for patent owners to see the Supreme Court’s Halo decision allowing for greater clarity and ease of use of the treble damages assertion. Finally, the PGR (post-grant review) procedure represents a new opportunity for those wishing to challenge patents in the US, but both the petitioner and patentee will need to consider the broader estoppel effect via that process versus that of an IPR. In light of these developments, the US Patent & Trademark Office has become a secondary and less costly “litigation center” in the US, and has caused opposing parties to find settlement solutions more efficiently and effectively than through traditional litigation.
How do you work daily to expand your exploration of patents law and push the boundaries of your work?
On a daily basis, there are always new issues, new interpretations, and new applications of US patent law. To stay current, I constantly and consistently review recent District Court, Federal Circuit and Supreme Court decisions to help my practice assist clients with new IP opportunities and scopes of protection. Additionally, I regularly follow various IP publications and blogs to garner additional insights from other peers in the field to help improve my practice. Like the saying goes: “You can always learn from someone else and learn something new every day! By employing this approach to my practice, I am able to provide up-todate advice and counsel to my clients. Additionally, by staying current on key IP topics, I am able to offer potential new clients additional insights and skillsets that could assist them with their respective IP needs. Finally, being a thought leader and contributor in the IP space can only be achieved by constant vigilance as to case law, strategic tactics, and global patent approaches both in prosecution and litigation.
What is the most important piece of advice you give your clients when working on establishing patent protection over several jurisdictions?
The one piece of advice I provide to clients attempting on establishing patent protection over several jurisdictions is to try and keep the claim sets and arguments of the respective regional or local patent applications consistent. In doing so, clients have a better understanding the scope of protection for their respective patent portfolio on a global basis. Additionally, inconsistent arguments and contradictory positions are avoided. In doing so, negative outcomes in the patent application process, advanced USPTO procedures process, or patent litigation can be avoided. Consistency is always a key part of establishing a global patent portfolio.
What are the most common patent cases you encounter in your work with chemical, pharmaceutical and biotechnological patents? What particular challenges do these present and how do you navigate them?
The key patent cases that I have to address and consider currently in the chemical, pharmaceutical and biotechnological cases (however, it should be appreciated there are several more) are the recent Alice (patent subject matter eligibility), Shaw Industries Group, Inc. (accused infringers can use AIA review procedures without undermining their case in later litigation), Merck & Cie (PTAB AIA review decisions must be reviewed with deference on appeal) and In re Cuozzo Speed Technologies, LLC, (broadest reasonable interpretation for IPR versus ordinary meaning for litigation is appropriate) decisions as well as the USPTO’s ever developing guidelines as to patent subject matter eligibility and obviousness determinations. I navigate these various decisions and guidelines by working in collaboration with my clients as to various ways to claim their respective inventions (e.g., claiming non-natural claim elements where needed to illustrate patentably eligible subject matter, or alternatively looking for appropriate arguments that meet the USPTO’s guidelines), proper development of a patent specification that can be used for prosecution and litigation purposes (e.g., good actual, prophetic and comparative examples to illustrate the novelty and nonobviousness of the invention while still maintaining a broad claim scope of protection for future enforcement), and continual review of the client’s patent landscape (via competitive and white space analyses and updates) to look for additional IP opportunities. In doing so, I have a good grasp of the client’s technology platform and inventions from both the scientific personnel and inhouse IP and regulatory counsels, which leads to more proactive and effective patent portfolios.
