The Sedona Conference's Patent Conference (Part 2): Promoting Invention, Entrepreneurship, Economic Growth, and Job Creation

This panel will explore the challenges of the Supreme Court's eligibility decisions as applied to computer-implemented inventions. Many observers believe that the rubric of "abstract ideas," which the Court has declined to define, creates massive uncertainty and unreliability, both for pending patent applications and issued patents that may be asserted in enforcement proceedings. The risk is that investments in R & D and product commercialization will be discouraged and diminished, thereby impeding "progress in science and useful arts," the mandate for patents in the US Constitution. Possible fixes for this problem will be examined, including impending legislation. Finally, the panel will compare the scope of eligibility in the United States with the far wider scope available in Europe and Asia, especially China.

Progress in health sciences is affected by the Supreme Court's cases on eligibility, particularly Mayo and Myriad. Investments in biopharma inventions and discoveries, which typically must be enormous, may not be made at all, and therefore prevention, detection and cures not developed as a result of the present uncertainty. Lower courts have failed to provide clarity to the high court's cases, making venture capitalists and other potential investors hesitant. The same is true for corporate executives. Consequently, the potential of major breakthroughs in genetic engineering, personalized medicine and computer-related health invention using artificial intelligence may be precluded. Possible solutions will be discussed as well as comparisons to the wider eligibility available in other nations.

For a number of years, enforcement of standard essential patents by injunctive relief, and breach of a patentee’s commitment to license standard essential patents on fair, reasonable, and nondiscriminatory terms, were found to raise potential antitrust issues. The U.S. Department of Justice, Antitrust Division, wants to rebalance the relationship between competition law and intellectual property rights through its application of the “New Madison” approach. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, and Makan Delrahim, Assistant Attorney General for the Antitrust Division of the U.S. Department of Justice, will engage in a dialogue about the New Madison approach and the issues to be addressed at the intersection of intellectual property rights and competition laws.

Patent practitioners may be less aware of the economic forces at work in the operation of the patent system than of the technical or legal aspects. Policy makers also may fail to understand such dynamics. Yet, they are crucial to efficient operation of the patent system as well as proper adherence to the rule of law. This panel will explore such economics at the interface of patent and competition law, including the proper role of the Federal Trade Commission and competition and antitrust law as limiting patent rights and their enforcement, especially in the context of standard essential patents and related FRAND obligations.

We will conduct a Sedona style dialogue on the issues surrounding the availability of preliminary and permanent injunctive relief for patent infringement in the United States, in contrast to the availability of injunctive relief for patent infringement in Germany and China. Among other subtopics, we will discuss the difficulty of proving that the infringing feature of an accused instrumentality is a driver of lost sales to establish the causation element of irreparable injury for injunctive relief in the United States.