Thursday morning and the conference launches off with an illustrious panel of judges. Two are from the Federal Circuit, Hon. Sharon Prost and Hon. Richard Taranto, and the other two represent the United States Court for the Northern District of California, Hon. Beth Freeman and Hon. Susan Illston. And there is the news of the day, the Supreme Court’s pronouncements on patent law that came out on Tuesday: Inter partes reviews (IPRs) of patents are constitutional and the Patent Trial and Appeal Board must issue a decision on all of the claims challenged in an IPR petition.
But these issues, while important, are not the ones that resonate with me throughout the day. Instead, I focus on diversity. Not just diversity in the sense of who was there (but I do notice that and will say something in a bit), but also diversity of viewpoints and background that come to IP law as it touches the biosciences areas.
From the panel, the discussion poses the question of the judges’ first impressions of their transition to the court from their previous legal careers. A few notable themes emerge. The pace is fast. Patent cases can be intense and cramming too many into a short timeframe can be challenging.
Patent cases can also be “bet the company” litigation and this cuts down on the diversity of lawyers who get time on their feet in court. Many younger and/or more junior lawyers will not get the opportunity to take a witness or argue a motion, even if it is this less senior associate or partner who is most knowledgeable about the facts and the key arguments. And would younger and/or more diverse lawyers relate better with jurors of similar age and backgrounds? This is a difficult balance when the future of the client’s general counsel may be on the line.
A notable but ironic theme – it is often difficult to discern the inventive concept (or cotton on to whether one exists) in the case. Patents are seen as dense documents, written to obscure the true kernel of the invention. The science can be cutting edge and require some technical background to comprehend. Yet the background of many judges, while coming from widespread experiences, is rarely in the fields of science and rarely with any previous experience in patent law.
The second panel of the day offered a different take on patents. It provided a global view from Dr. Klaus Grabinski of the German Federal Court of Justice, Lord Leonard Hoffmann from Brick Court Chambers and Jürgen Dressel, formerly Head of Global Patent Litigation Strategy at Novartis Pharma, joined by Professors Eisenberg (University of Michigan Law School) and Jacob Sherkow (New York Law School).
Two notable but unrelated viewpoints came from this one. First, on the patent eligibility controversy that rages in the US patent office and US federal courts. To the European folk in the patent area, this is a foreign concept . In other countries, non-patentable matter is set out by statute and all else is patentable – no debate.
Second, what is the level of data disclosure that is required to support a patent? Europe leans heavily to a plausibility standard to demonstrate possession of the invention at the time of filing. Basically, what is described in the application that one of skill in the art would understand that the invention does what it is claimed to do? Seems simple enough. But as one panelist posed, what is a reasonable expectation of success if drugs can fail in Phase 3? This leads to quite a dilemma regarding at what stage of R&D should patents be filed? All good to say go get animal data or start clinical trials, but in a highly competitive field with a first to file patent system, the timelines don’t match.
The afternoon keynote is what sparked some of my focus on diversity. Hon. Michelle Lee, Former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, spoke about her tenure at the USPTO and also how she got there. She was Course 6 at MIT (electrical engineering and computer science), worked in the tech industry and was then the first woman to head the USPTO. As she advised when addressing issues of diversity and career choices, don’t wait for someone who looks like you to do it – you’ll be waiting forever, just go and do it.
And looking around the conference room, there was some diversity, but it was limited in many ways. Yes, the first panel was split 50-50 between men and women, but not so of all the panels of the day. The makeup in ethnic and racial groups, as well as the male-female balance, was also limited. Finally, despite the comments earlier in the day that more junior attorneys should have speaking opportunities, the panels were generally moderated by senior partners, leaving the less senior and likely key designers of the event behind the scenes.
At the conclusion of the day, I thought about this – Conferences are an opportunity to sit together and exchange viewpoints and to learn from others in the profession with a different take on the issues. In some ways, the conference succeeded grandly and in others, there’s still more to be done.