Clause 8

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Brazil Becoming the Mecca for Patent Enforcement & Chief IP Counsel Seeking Valuable Patents Aug 06, 2024

Show notes

Clause 8 Podcast Show Notes

Rob Rodrigues and Tatiana Alves - Brazil’s go-to attorneys for strong patent protection and effective enforcement - join Eli to talk about founding RNA Law and offer insider perspectives on successfully navigating the Brazilian patent system.

Rob discusses how Brazil’s large market size and the predictability of obtaining injunctions is attracting foreign businesses looking for robust patent protection. He also talks about how Brazil is becoming an even more favorable venue for patent litigation because, with more cases being filed, the knowledge level of judges and the predictability of court rulings are also improving.

The discussion also provides a comprehensive overview of:

* the examination process at the Brazilian patent office,

* the possibility of leveraging European and US patent grants for faster approval,

* opposition proceedings,

* the nuances of securing injunctions, and

* pursuing patent protection in Brazil as part of a broader global IP strategy.

**Bonus segment at the end: Eli ruminates on the founding of RNA Law coinciding with the rising significance of patents in Brazil. He then discusses the related trend of sophisticated chief patent counsel focusing on obtaining valuable patents that actually meet their companies’ strategic goals in the US.

Selected Takeaways:

* Integrated legal-technical strategies significantly enhance the success rate in patent litigation within Brazil.

* The Brazilian patent office is becoming more efficient, though the examination process can still be lengthy, particularly in the telecom sector.

* Pharma patent applications face more scrutiny in Brazil but that can be navigated effectively with the right strategy.

* Obtaining injunctions - including ex-parte injunctions - in Brazil is feasible and can be a powerful tool in patent enforcement, though it is highly dependent on the specifics of each case.

Notable, Quotable

"Judges in Brazil are very much concerned about getting it right. They understand the importance of patents for innovation." – Rob Rodriguez

"The biggest expense for a company in obtaining a patent is actually asking for their inventors’ time." – Eli

Resources:

* RNA Law Website

* Voice of IP on launch of RNA Law

To explore these insights and leverage them for your IP strategy, don’t miss the full episode.

Disclaimer

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Iancu & Jones Debate Section 101 and Find Common Ground Jul 23, 2024

Show notes

Clause 8 favorites - former USPTO Director Andrei Iancu and HTIA’s David Jones - return for the first ever Clause 8 debate!

They debate Section 101, find common ground, and discuss possible paths forward for improving the state of patent eligibility in America.

Selected Topics

* Impact of Federal Circuit’s State Street decision: "golden age of business method patents”

* Supreme Court’s Section 101 decisions: Bilski, Mayo, Myriad, and Alice

* Iancu’s role & thoughts about Ariosa v. Sequenom

* Why Jones was concerned after Alice and what changed his mind

* Federal Circuit’s handling of Section 101 after Alice

* Agreement regarding the USPTO’s 2019 Revised Patent Eligibility Guidance

* 77% Rate of Section 101 Rejections in USPTO's AI Tech Group

* Whether the Patent Eligibility Restoration Act (PERA) is a step toward a successful compromise in Congress

* Possible adoption of EPO’s approach to patent eligibility

Notable, Quotable

"Patents are not just any other area of law. Patents are legal instruments, of course, but they're also commercial instruments." - Iancu

"What I think we disagree on is you don't think that the sky is falling when it comes to 101 . . . as is in the United States now, I do think the sky is falling." -Iancu

"Let's make the law clearer. Clearer law is always better." -Jones

*Disclaimer: This podcast is provided for general informational purposes only and is intended as a general overview. The podcast does not constitute legal advice nor solicitation to provide legal services. It is not meant to convey a legal position, nor is it intended to convey specific legal advice. The opinions expressed are solely my own and those of any guests and do not express the views or opinions of any organization with which I or the guests are affiliated. In some jurisdictions, the contents of this podcasts may be considered Attorney Advertising.

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Erich Spangenberg on How to Succeed in Patent Monetization Jul 09, 2024

Show notes

His critics have called him “one of the most notorious patent trolls in America.” Many others have tried and failed to emulate his success. However, it’s hard to deny that Erich Spangenberg is in many ways a singular visionary in the world of patents. If there are celebrities in the patent world, it’s Erich Spangenberg.

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As the founder of IPNav, he completed over 1000 licensing transactions - worth billions of dollars. To the surprise of many, he then joined forces with hedge fund manager Kyle Bass to challenge pharma patents under the AIA. More recently, he founded IPwe - a blockchain-based platform for patent transactions.

On this episode, Erich shares the story of how being sued for patent infringement by Ronald Katz led him to embrace the patent monetization field. He also shares his strategies for successful patent assertion, his candid perspective on being labeled a “patent troll,” why big corporations wanted him to work for them, what he thinks the role of generative AI will be for IP, his plans for IPwe after its bankruptcy, and much more!

Key Takeaways:

* Innovative Approach to Patent Assertion: Erich Spangenberg's strategies involve early information sharing and comprehensive presentations to inform and engage potential infringers.

* Learning from the Best: Insights gained from industry veterans like Ron Katz and applying asset management principles, rather than merely advocating, have been keys to Erich’s success in patent monetization.

* Impact of America Invents Act (AIA): Addressing the ramifications of AIA, Erich explains how his collaboration with Kyle Bass aimed to showcase its flaws and its current role in pharma patent challenges.

* Future of Patent Transactions: Despite challenges, Erich remains optimistic about utilizing blockchain and AI for creating an efficient marketplace for patents.

Notable Quotable:

"Not every patent asset is a great one. As a matter of fact, the vast majority of them aren't."

Thank you for reading Voice of IP. Share with others!

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Moneyball for Pharma Patents with Chief IP Counsel Steve Caltrider Jun 25, 2024

Show notes

Why does an $850 billion pharma company obtain only 50 patents per year?

Steve Caltrider, Chief IP Counsel at Dana Farber Cancer Institute, brings over 35 years of experience building valuable pharma patent portfolios and championing patent policies that promote innovation. Before Dana Farber, Steve rose to the role of General Patent Counsel at Eli Lilly. Steve has also served on the USPTO's Public Patent Advisory Committee and is currently the Chair of the ABA Section of IP Law.

In this episode, Steve shares the story of why and how he relied on data to reduce Eli Lilly’s patent portfolio, and explains why obtaining less patents is likely the better strategy for many large companies.

He also discusses the critical role of IP in getting medical innovations to patients, the potentially catastrophic impact of the administration’s march-in proposal, and his take on various developing patent policy issues.

Selected Topics

* IP’s indispensable role in commercialization

* Section 101 mess hindering development of diagnostics & potentially reducing drug costs

* Data-driven patent strategies in the pharmaceutical industry

* Impact of excessive USPTO fees on start-ups and smaller companies

* How IP strategy differs at academic research institutions versus major pharmaceutical companies

* Successfully navigating a career in patent law as in-house counsel

* Role of outside counsel

* Why all patent attorneys should pay attention to patent policy developments

Notable, Quotable

On the role of IP in ensuring that medical research reaches patients

“It’s roughly a billion dollars to develop that drug and actually make it accessible to patients as a drug. No one’s going to make that investment without IP. My role at the institute is to protect that discovery so that somebody will make that investment. Without the investment, it’s just going to sit in the laboratory and it’s not going to go anywhere and it won’t reach patients.”

On the impact of march-in proposal on non profits like Dana-Farber

“I’ve already had partners tell us: I’m willing to sponsor your research, I’m willing to help fund your research, but it can’t have any federally funded funding associated with it. Well, that can be catastrophic to us.”

ABA-IPL Chair’s Town Hall: Planning a Better Patent System

Register for “Session 6: How Far Can, And Should , USPTO Rulemaking Proceed in Addressing Issues of Double Patenting”: https://www.americanbar.org/groups/intellectual_property_law/events_cle/aba-ipl-chairs-town-hall/

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

IP Fray's Legendary Publisher on What Will Happen with EU's SEP Regulation & AI’s Impact on Patent Law Jun 11, 2024

Show notes

Florian Mueller shares his remarkable journey from leading a major fight against pro-software patent legislation in Europe to becoming one of the most influential voices in the IP world. For over a decade, his FOSS Patents blog became the go-to destination for anyone who wanted to follow developments related to standard-essential patents (SEPs). After a brief hiatus, Florian recently reemerged as the publisher of ip fray, which is quickly starting to play the role for all of IP that FOSS previously played for SEPs.

Drawing on his extensive background, Florian provides fascinating insights about what led to the European Union’s controversial SEP proposal, the potential outcomes, and the burgeoning influence of AI on patent law. He also shares the story of why and how Real Madrid came to him asking for help along the way.

Key Topics:

* How German court decisions and other alleged dynamics led to EU’s pending SEP proposal

* Problems with EU’s pending SEP proposal

* How the rest of the process is likely to play out at the EU & related strategies

* Why innovators are at a disadvantage in the debate

* Shifting views of different tech companies regarding SEPs over time

* Role of patent pools/platforms in the SEP battles

* Impact of AI

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

IBM's Chief Patent Counsel for Americas Mark Vallone on Changing Patent Portfolio Strategy Mar 28, 2024

Show notes

For almost 30 years - under the leadership of giants like Marshall Phelps, David Kappos, and Manny Schechter, IBM led in obtaining the most patents per year. However, in 2020, IBM made the decision to no longer pursue the goal of “numeric patent leadership.” It went from obtaining over 8500 patents in 2021 to, by some counts, less than 5000. Nonetheless, IBM remains one of the top American patentees.

Mark Vallone joins Eli to discuss how he stepped into one of the most significant roles in the patent world last year while this dramatic shift in IBM’s patent strategy was taking place.

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On this episode, Mark talks about how IBM's heritage of innovation and patent leadership informs its decisions. He also provides an in-depth perspective on why and how IBM transitioned away from numeric leadership goals and toward a more balanced, quality-focused approach.

The episode provides thought-provoking insights into the challenges of growing and managing a vast IP portfolio, including the value of incentive programs for inventors and the mechanics behind strategic patent portfolio pruning decisions.

Key Topics:

* Succeeding as in-house counsel

* IBM's Strategic Shift - departing from their numeric patent leadership goal to focus on patent quality and aligning with their current business model.

* Portfolio Management - detailed advice on pruning patent portfolios, including strategies for maintenance fees and monetization.

* Hybrid Model - how and why IBM uses both in-house and outside counsel for patent preparation and prosecution work

* Harnessing AI in Patenting - the future role of generative AI in improving quality of patent applications and the productivity of patent drafters, and the importance of cautious adoption considering legal and ethical implications

Notable, Quotable

On continued role of numeric goals

"I don't think you abandon numbers. I think they're certainly a part of the calculus, and you have to look at that in order to adequately protect your business."

The one change he’d make to America’s patent system

"I would love to see us fix subject matter eligibility. I would love to see us restore that certainty to the system."

Please share with others!

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Chief Counsel John Lee on Bicameral, Bipartisan Efforts to Advance Section 101 & PTAB Legislation Mar 14, 2024

Show notes

J. John Lee is the Chief Counsel for IP in the US House of Representatives and helms the House Subcommittee on Courts, Intellectual Property, and the Internet, which is chaired by Congressman Darrell Issa. In that role, he is one of only four staffers in Congress who focus on IP issues and help set the agenda for what happens with America’s IP system.

John joins Eli on this lively episode to discuss how he ended up in that role after serving as a Lead Judge on the PTAB, how he is currently working closely with the other IP staffers in Congress to advance legislation to fix Section 101 and the PTAB, what it will take for Section 101 legislation to pass, why broad consensus is necessary for IP legislation, what’s driving the bitter disagreements over IP issues, and much more! The episode was recorded at the end of last year.

If you know anyone else who might be interested to learn what changes might be in store for patent law or how the patent policy sausage is made in Washington, please share with others:

Selected Timestamps

| 0:04:52 | How John Lee became Chief Counsel for IP in the House of Representatives |

| 0:08:05 | John Lee's role as Chief Counsel for IP and his relationship with Issa and Judiciary Chair Jim Jordan |

| 0:10:18 | John Lee's experience stepping into his role on the Hill |

| 0:12:13 | Making positive impressions on IP staffers in Congress |

| 0:16:04 | Trajectory of patent system over last 20 years |

| 0:24:52 | Proposal to exercise march-in rights under the Bay-Dole Act |

| 0:31:27 | Administration’s failure to build consensus on - and widespread congressional opposition to - proposals to waive & seize IP rights|

| 0:33:26 | Uncertainty and lack of administration policy on standard essential patents (SEPs)|

| 0:38:08 | The need to protect US leadership in technology and innovation |

| 0:39:19 | Concerns about the state of Section 101 and the weaknesses of the patent system |

| 0:44:04 | How patent system creates an innovation engine by encouraging disclosure of innovations |

| 0:45:12 | Importance of consensus for significant changes in IP law |

| 0:49:54 | Cooperation between Republicans and Democrats on IP, AI, and other related issues |

| 0:53:39 | Heated opposition in House on USPTO’s ANPRM proposing changes for the PTAB |

| 0:57:12 | Optimism for patent bills and substantial progress in the House and Senate. |

| 1:02:28 | Possibility of introducing companion bills for Patent Eligibility Restoration Act (PERA)|

| 1:05:13 | Pain points that might drive agreement on Section 101: third party litigation funding, discretionary denials at PTAB, and standard essential patents (SEPs) |

| 1:06:26 | Negative impact on Federal Circuit from suspension of Judge Pauline Newman |

| 1:07:57 | Role of lobbyists in development of IP policy |

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Europe's New Unified Patent Court: Exclusive Interview with Judge Michael Fleuchaus Feb 29, 2024

Show notes

In this special two-part episode, we delve into the creation, implementation, and strategic importance of Europe's Unified Patent Court (UPC) with UPC Judge Michael Fleuchaus and Dr. Benjamin Grau. The first part of the show highlights Judge Fleuchaus' experience as a newly appointed technical qualified judge at the UPC. Judge Fleuchaus discusses the motivations behind the UPC's establishment and overarching goal to streamline patent litigation across the European Union. He also discusses his role as a technical judge working alongside experienced legally qualified judges and shares the perspective they bring to handling cases together at the UPC. This segment provides priceless insights about how UPC proceedings differ from patent litigation within and outside of Europe and how litigants can maximize their chances of success at the UPC. In the latter part of the episode, Dr. Grau provides a distinct viewpoint as a European patent attorney closely observing the UPC. Dr. Grau casts light on the myths and practicalities surrounding opting in or out of the UPC and gives valuable advice on how to leverage the UPC to obtain the best possible patent protection in Europe. Dr. Grau's perspective is crucial for those interested in understanding the strategic considerations that come into play with the UPC's inception.
This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Resetting the Narrative on IP Rights in America Dec 19, 2023

Show notes

This year, the U.S. Chamber of Commerce brought together a diverse group of stakeholders and thought leaders in support of a framework of IP Principles. These IP Principles are part of an initiative to help America overcome a sustained effort to demonize intellectual property rights over the last 15-20 years.

Patrick Kilbride and Brad Watts, from the U.S. Chamber’s Global Innovation Policy Center (GIPC), join Eli to talk about leading this initiative, the current narrative on IP rights and the forces that shaped it, the themes of the IP Principles document, and what they hope to accomplish. They also discuss why the U.S. Chamber cares so much about IP issues, whether patents are underappreciated compared to other IP rights, and much more!

IP Principles: https://www.uschamber.com/assets/documents/A-Principled-Approach-to-a-New-Narrative-on-IP.pdf

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

Matteo Sabattini on Licensing Igniting Virtuous Cycle of Innovation Dec 12, 2023

Show notes

Matteo Sabattini is well known in DC patent policy circles from his previous role as Director of IP Policy at Ericsson. He now joins Eli from Italy to discuss his new role as President and Chief Licensing Officer of Convida, what he learned from his time in DC, keys to building a successful licensing program, why recent attempts to regulate licensing of standard essential patents (SEPs) are misguided, and much more!

Selected Timestamps

| 0:11:03 | How shifting value from devices to services & platforms impacts who should license patents |

| 0:17:46 | Licensing fueling further innovation |

| 0:18:56 | Successful licensing means getting to point where both sides are equally unhappy

| 0:19:20 | Importance of communicating the value of R&D for a successful licensing program |

| 0:21:17 | Feedback loop between licensing and prosecution departments is crucial |

| 0:25:41 | Why litigation is not always an indication of bad faith|

| 0:26:30 | Unwilling licensees posing a toll on innovation |

| 0:32:35 | Lessons learned from working at Sisvel |

| 0:34:38 | Avanci and others proving that markets are functioning efficiently because of industry-led, licensing solutions and that new government regulations aren’t necessary |

| 0:38:57 | IEEE's patent policy change sparking Matteo’s interest in policy|

| 0:40:44 | Taking on policy role at Ericsson at low point of America's patent system|

| 0:44:03 | Need for coalescing between different pro-patent interest groups |

| 0:48:14 | Impact of issuance and withdrawal of SEP policy statements in the US |

| 0:51:11 | European Commission's draft SEP proposals to supposedly help SMEs |

| 0:56:22 | Idea to actually help SMEs with licensing of SEPs instead of unworkable regulation |

This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com

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