In August, I embarked on a trip to Australia and New Zealand to visit several colleagues with whom the firm has worked on patent and trademark matters for the mutual benefit of clients to both their countries and the U.S. During meetings with colleagues, I presented on various topics of interest related to U.S. intellectual property practice, and especially patent practice.
The issue that our Australian and New Zealander counterparts were most interested in was the Alice v. CLS Bank decision and its impact on different industries. Of interest were the three exceptions that Alice provides from Section 101 of Title 35 within U.S. Patent Law: Patents cannot be granted for laws of nature, natural phenomena, and abstract ideas. For example, if an inventor is the first to discover a certain genes’ effects on a disease, the discovery cannot be patented because it is a natural phenomenon. This decision has largely affected the healthcare industry in view of the first two exceptions and the software and computer-implemented products industries in view of the abstract idea exception to patent eligibility. These issues are important to consider when preparing a patent application to file before the U.S. Patent and Trademark Office, as well as enforcing patents, particularly those that issued before the Alice decision.
More broadly, we talked about United States IP law best practices, including IP due diligence and litigation alternatives such as inter partes review and post grant review.
Another focus of the meetings was recommendations for foreign patent applications, again for filing by U.S. clients in foreign countries, and by foreign inventors in the U.S. Panitch Schwarze is often the firm trusted in the United States to support a foreign firm’s clients, and reciprocally, we need trusted partners to ensure that our clients benefit from expertise and value when expanding their patent portfolio into other countries. It is crucial for our clients’ international success that their attorneys at Panitch Schwarze nurture relationships with international contacts at foreign firms.
This being my first trip “down under,” it wasn’t all business. I also carved out some time to see the sights – Uluru (Ayer’s Rock), the Sydney Opera House, etc.—coupled with some great activities including skiing (our summer is their winter), wine tours and whale watching. I had the opportunity to explore the interesting terrain and many beautiful cities of both countries, including Sydney, Brisbane, and Melbourne in Australia and Auckland, Queenstown and Wellington in New Zealand.
If your company is interested in international patent applications, contact Panitch Schwarze at 888-291-5676.