[Editor’s note: Our patent system is a mess, and the Supreme Court is considering a ruling that could reform it. As the bastion of innovation, Silicon Valley has a lot at stake. The nation’s patent office says it may take up to 10 years to review a patent application. Ridiculous. Fenwick & West attorney Stuart Meyer summarizes the debate. Disclosure: VentureBeat is a client of Fenwick’s, though does not have a relationship with Stuart.]
What is it that makes intellectual property law so hard for businesses to deal with? For one thing, it just won’t stand still. Just when you thought you could extract an unqualified answer from your IP lawyer, the law threatens to change and you start hearing the old “It depends” mantra again. Issues as fundamental as, “Can I stop them from selling their infringing product?” to “Isn’t that patent claiming something that’s obvious?” need to be resolved, but they continue to defy a simple answer.
Businesses have known for decades that technology moves faster than the law. Developments such as e-commerce and nanotechnology can gain economic importance quickly, yet the appropriate regulatory approach to them may only develop once fads are separated from trends, and once interest groups are sufficiently established to pressure legislators to take action. As business people, we all get that part.
What’s harder is dealing with the lack of truly “settled law” in intellectual property. For decades, we thought we could rely on the notion that a successful patent plaintiff could prevent ongoing sales of an infringing product. Earlier this year, though, the Supreme Court changed all that and ruled, in the eBay decision, that a successful plaintiff does not enjoy an injunction as a birthright.
We’ve just seen another example like this in the past week. In oral argument in the KSR v. Teleflex case, we heard Supreme Court justices seemingly mock the established test for whether an advancement in technology is “obvious” (i.e., too trivial to deserve patent protection). One would think that a test for what is obvious would itself be fairly straightforward. To the contrary, Justice Scalia called the test “gooblydegook” and Chief Justice Roberts said it was “worse than meaningless.” Remember, the justices were not referring here to some fanciful new doctrine cooked up by counsel in show of advocacy; instead they were referring to an established test that has been the Rosetta Stone for patentability in the courts for decades.
The Supreme Court isn’t alone in giving a gelatinous nature to the IP landscape. The Federal Circuit Court of Appeals, the sole appellate court for patent issues, regularly generates split decisions, with some doctrines appearing and disappearing in ghostlike fashion depending on which three judges get impaneled on any particular case.
Chronic underfunding of the Patent and Trademark Office has put it into the mix too. The PTO has lately been warning that it may take over ten years to even commence examination of a patent application, and the PTO’s proposed rule changes severely limit a number of the traditional tools that patent lawyers use to gradually refine proposed claims in response to the patent examiner’s review. Should Congress better fund the PTO, it may be that some of these issues evaporate overnight, though others will surely take their place.
The examples above are drawn from the patent world; similar disruptions are evident in trademark, copyright and trade secrecy law. What are we to do in such an environment? The best answer is one based on a realism: All aspects of intellectual property are subject to changeâ€”nothing is truly settled doctrine. Businesses that accept that fact and diversify their approach to IP accordingly will prosper; those that do not will stumble on the shifting sands.