Clause 8 – Details, episodes & analysis

PTO 'whistleblower' Julie Burke and patent prosecution guru Clint Mehall join Eli on the season finale of Clause 8 to break down what’s happening at the USPTO—and what’s still left to be done.

On this episode, they discuss:

*Insights from the Reddit r/patentexaminer thread

*Previous and current plans to reduce the record patent application backlog

*Should the USPTO withdraw patent eligibility example 47 for AI?

*Previous administration’s decision to end AFCP program and ideas for variation of AFCP program to help reduce the backlog

*Misguided priorities and personnel decisions during last administration

*Improving morale and performance of examiners

*Adjusting credit system & improving culture to help examiners identify allowable subject matter

*Choice of Valencia Wallace Smith as Acting Commissioner for Patents

*USPTO’s decision to deprioritize examination of continuation patent applications

*USPTO rescinding memorandum for discretionary denials at PTAB and Director taking over handling of the requests for discretionary denials

*Aligning post-grant proceedings at PTAB with mission of USPTO

*Suggestions about switching to a registration system for patents that does not require examination

And, much more!

What is the actual value of patents? Inventors and companies invest millions in obtaining patents, believing they are valuable assets. Yet, their true worth is rarely quantified.

For this episode of Clause 8, Eli Mazour brings together three of the most insightful experts in the patent valuation space: Michal Malkovich, Vice President at Charles River Associates; Alejandra Loaiza Delgado, Co-Founder and Managing Director at Econ Edge; and Mike Pellegrino, President and Founder of Pellegrino & Associates.

Throughout this discussion, you’ll notice that despite their different experiences and perspectives, they share one goal: getting to the truth about patent valuation.

Jerry Ma, Director of Emerging Technologies and Chief AI Officer, and Charles Kim, Deputy Commissioner for the USPTO tell story of co-chairing USPTO's AI working group - sharing insights on USPTO's AI tools guidance, applying §101 for AI-related inventions, and leveraging AI for examination.

Together, the two co-lead a group working on AI efforts and according to Jerry are focused on “a human first vision for AI at the agency.”

In the episode, host Eli Mazour explores how Jerry and Charles led USPTO’s efforts to deal with AI advancements on the policy front & leverage AI technology to improve USPTO’s own operations before ChatGPT was even a thing. The two leaders come from diverse backgrounds—Jerry with deep experience in Silicon Valley’s tech sector, and Charles with decades of IP and regulatory expertise at the USPTO.

Selected Topics

Start of USPTO’s AI working group, originally co-chaired by Charles Kim and Deputy Director Coke Morgan Stewart, to tackle §101/patent eligibility issues related to AI

Expansion of AI working group to coordinate AI related activities across the USPTO, including exploring leveraging AI technology for patent examination

Jerry Ma’s story of joining the USPTO from Silicon Valley to be Director of Emerging Technologies and taking on role as co-chair of working group

How AI implementation at the USPTO relies on cross-disciplinary teams drawing expertise from law, technology, and policy

Working groups’ efforts to engage with outside stakeholders through the AI/ET Partnership Series to create informed policies around AI and patent eligibility

USPTO’s guidance on (1) use of AI-based tools, (2) AI-assisted inventions, and (3) AI subject matter eligibility and responses to related push-back

USPTO’s current use of AI technology & future plans to further leverage AI technology to empower examiners

Role of AI working group as AI becomes widely used within USPTO

Advice for other organizations exploring implementation of AI

In the ever-evolving world of retail, where technology and innovation are reshaping the industry, managing intellectual property has never been more important. Sri Atluri, Walmart’s Chief IP Counsel, knows this all too well.

In this episode of Clause 8 with host Eli Mazour, Sri emphasizes the critical balance between protecting innovations and fostering strategic growth within Walmart’s technological initiatives. She argues for the necessity of continual IP enforcement, detailing how both protection and litigation play essential roles in maintaining Walmart’s competitive advantage. Sri also discusses the evolving landscape of e-commerce and the challenges posed by Section 101 and patent eligibility.

Disclaimer

In this special episode of Clause 8, host Eli Mazour speaks with Ann Cathcart Chaplin at the Qualcomm Museum, which is right at the heart of Qualcomm’s headquarters in San Diego. Ann shares her journey from being an IP litigator to in-house counsel and from GM to Qualcomm.

As General Counsel of Qualcomm, Ann oversees all legal matters for the world’s leading innovator of connectivity solutions. Before Qualcomm, she served in a variety of deputy general counsel roles at General Motors (GM). Ann spent most of her career prior to that focused on IP litigation, including as litigation practice group leader at one of the world’s biggest IP firms.

Her leadership experience at a major auto company before joining Qualcomm provides her with a unique vantage point about the role of standard essential patents (SEPs), the relationship between cellular innovators like Qualcomm and auto companies, and the surrounding debates.

From her beginnings in Minnesota, initial aspiration to become a public defender as a Harvard Law student, and eventual transition into IP litigation, Ann shares her unlikely journey. Now at Qualcomm, she touches on the challenges and opportunities of navigating IP issues in one of America's most significant and innovative tech companies, which relies heavily on a functioning IP system that promotes innovation.

Ann Chaplin's transition from IP litigation at a law firm to in-house counsel at GM is a significant highlight of this episode. She discusses adapting her IP litigation skills to address GM's pressing legal concerns, including for diverse fields such as product liability, class actions, and corporate governance,. Ann's role at Qualcomm involves overseeing IP and licensing, emphasizing its critical role in driving innovation. Her key concerns include attacks on the patent system and the need for policies that support sustainable R&D investments.

Check out the full VIDEO Interview on Voice of IP

Disclaimer

Laurie Fitzgerald joins Eli to tell the story of how she led Avanci to an 8-year overnight success. Avanci’s pioneering efforts to provide an efficient, simpler option for the automotive industry to license cellular SEPs are now widely heralded as one of the greatest stories of successful innovation in the patent world. Laurie, who has been with Avanci since 2018, shares her journey and the strategic decisions behind the one-stop shop licensing platform that now boasts participation from 70 licensors and 100 automotive brands.

The discussion highlights how Avanci navigated the complexities of linking cellular innovators with automotive manufacturers, detailing how they established a uniform licensing fee and why this model works efficiently for both licensors and licensees. They discuss the role of independent patent evaluations, the challenges of negotiating acceptable agreements among varied stakeholders, the process for determining royalty allocations, and what others can learn from Avanci about how the private sector can provide efficient solutions for SEP licensing.

Disclaimer

What is the value of protecting intellectual property (IP)?

That’s the fundamental question that most Chief IP Counsel need time to answer to help their companies succeed. However, they’re often bogged down by the daily demands of leading teams that are doing what’s necessary to make sure that they’re obtaining the necessary IP protection. When they do have a chance to pose and answer that question to business executives, they quickly realize that those business executives are concerned with more pressing issues. When they succeed and those business executives start getting excited about the potential value of protecting IP, in-house counsel has the added responsibility of making sure they can follow-through.

In this episode of Clause 8, Eli sits down with the founder & CEO of Tradespace, Alec Sorensen, to discuss potential strategies for in-house counsel facing these challenges. Alec talks about how he first discovered these challenges of in-house IP counsel while being asked to wade through messy IP portfolios of acquired companies as a management consultant. He explains how he was able to facilitate over $250 million in commercialization deals in that role and how that led him to found Tradespace to help in-house counsel set up their companies for similar success.

Eli and Alec explore the complexities of IP development and the potential to unlock hidden value in patent portfolios, how and when to communicate with the C-suite about IP, how IP teams can get other parts of the company become champions for its role, the role that commercialization plays for Tradespace tools, and much more!

Selected Topics

* How lean, efficient IP teams are able to contribute to business success

* IP team demands leading to lack of business relationships

* Handling analysis paralysis in IP with analytics

* Strategic IP questions for a new CEO

* Successful IP strategies for universities

* Role of AI in empowering IP decision-making

* Risk of AI diminishing human judgement

* Advice for tech entrepreneurs in the IP space

* Customers using Tradespace to create better processes

Disclaimer

We’re looking forward to sharing new episodes from this season starting next Tuesday, including special video episodes on www.VoiceOfIP.com and a series of interviews with the most significant corporate IP leaders in America.

In the meantime, we wanted to share episodes released this summer:

Former USPTO Director Andrei Iancu and HTIA’s David Jones found a surprising amount of agreement regarding Section 101 on the first ever Clause 8 debate

Iancu & Jones Debate Section 101 and Find Common Ground

Federal Circuit Judge Timothy Dyk shed light on what’s going on at the court by discussing his memoir, Timothy B. Dyk: The Education of a Federal Judge

Judge Dyk Defends Today's Federal Circuit

RNA Law’s cofounders - Rob Rodriguez and Tatiana Alves - discussed everything you need to know about Brazil’s booming patent system

Brazil Becoming the Mecca for Patent Enforcement & Chief IP Counsel Seeking Valuable Patents

Erich Spangenberg shared the secrets to his success - "very few people want to start out wearing the black hat. I just embraced it" . . . and his plans for IPwe

Erich Spangenberg on How to Succeed in Patent Monetization

Chief IP Counsel at Dana-Farber Cancer Institute and former General Patent Counsel at Eli Lilly - revealed why Eli Lilly slashed its patent filings and talked about how the administration’s march-in proposal is already scaring away pharma companies from pursuing promising treatments

Moneyball for Pharma Patents with Chief IP Counsel Steve Caltrider

Florian Mueller - currently of IP Fray and formerly of FOSS Patents blog - kicked of this season by sharing 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

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

*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.

Federal Circuit Judge Timothy Dyk discusses his memoir and provides priceless insights into how the Federal Circuit is operating today - 42 years after it was created in 1982 and 24 years after Dyk was confirmed to serve on it in 2000.

This episode explores Dyk's perspectives on judges serving together at the Federal Circuit. His reflections and anecdotes offer a unique glimpse into the workings of the Federal Circuit, the decision-making process of a seasoned appellate judge, and various debates surrounding the Federal Circuit and judges retiring.

Dyk was nominated to the Federal Circuit in 1998 by President Bill Clinton after clerking for Earl Warren at the Supreme Court and a distinguished career as an appellate attorney at the law firms of Wilmer Cutler and Jones Day.

Selected Topics:

* First introduction to patent law: office linoleum floors & yacht named Pat Pending

* Role of chief judges setting court dynamics

* Collegiality, dissents, and importance of individual personalities & relationships among judges

* Judge Dyk's process for considering cases before oral arguments

* Dyk’s defense of Rule 36 decisions and insights into other Federal Circuit practices

* Panel dependency & skepticism of empirical scholarship related to judicial decisions

* Former clerks arguing cases before judges they clerked for

* Providing additional jurisdiction to Federal Circuit

* Cameras in federal courtrooms & privacy in intra-court deliberations

* Judicial retirement decisions and importance of humility

* Advice for effective oral and written advocacy before the Federal Circuit, including for amicus briefs

Notable, Quotable:

Biggest challenge

"I think the biggest challenge for any Federal Circuit Judge in patent cases in particular is is dealing with the technology . . . getting the help that you need to understand the technology. It’s really hard. And we need help from the bar, we need help from our clerks, and we need to be willing to spend a lot of time to wade through it."

Role of collegiality

"Collegiality makes for better decision making, first of all. And second of all, it makes it a nicer place to be. You get along with your colleagues. The job is a lot better."

Qualities of best written briefs

"A brief that is candid about what's going on, that recognizes that there's another side to it, that's nothing shrill, that's statesman like, that's objective. Those are the qualities that we value most."

On Judge Pauline Newman

“I always enjoyed sitting with Judge Newman. I enjoyed having Judge Newman as a colleague and occasionally we did panels together. I remember we went to NYU and presented ourselves as being close colleagues even though we disagreed a lot of the time. Judge Newman was a terrific colleague, and I enjoyed being her friend.”

Disclaimer

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