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25 June 2014

BIO 2014: Proper valuation of IP important in all sectors, says Rader

Learning to determine the value technological advance has contributed requires a great degree of sophistication, Randall Rader said in a session on protecting biotechnology innovations in the US and Latin America at the 2014 BIO International Convention in San Diego, California, yesterday (Tuesday).

The former chief judge at the US Court of Appeals for the Federal Circuit, who stepped down from the post on May 30 and is due to retire as a judge next Monday, added that it is important to understand the economic demand for an invention, which he said would allow for the quicker resolution of patent disputes.

“The greatest challenge for the patent system in general is the valuation of IP” and the value advances in technology have given to the marketplace, said Rader. “We need to assess the economic demand created by that demand,” he added. “If we can properly value technology we can quickly and more easily settle disputes and reach early agreements so the value of technology can be shared at a price that's appropriate for it.”

Rader was joined by Miguel Ángel Margáin, director at Mexico’s Instituto Mexicano de la Propiedad Industrial, and Maximiliano Santa Cruz, the director at Chile’s Instituto Nacional de Propiedad Industrial.

The discussion was led by Jasemine Chambers, of counsel at Wilson Sonsini Goodrich & Rosati PC in Washington DC and former deputy administrator for policy and external affairs at the US Patent and Trademark Office (USPTO).

The panel discussed the uncertainties associated with the patentability of US inventions, highlighted in the country’s Supreme Court’s split decision on CLS Bank International v Alice Corporation, uncertainties that are not present to such a degree in Mexico and Chile.

Rader suggested a conflation of the 35 USC § 101 and 35 USC § 103, where the former section concerns inventions patentable and the latter is related to conditions of obviousness. “We must hope that with time these will become clearer,” Rader said.

“Is the US patent system was operating at an optimum level?” Chambers asked.

Rader gave an emphatic “no, I don't think it is at all”, an answer that could only come from a judge soon to retire, adding that the jurisdiction had only recently “got its act together” with the implementation of the America Invents Act.

Last March, the act switched the patent system from a “first-to-invent” system of awarding patents to the “first-inventor-to-file”, which is more in line with the practices of other countries’ patent offices.

However, the US “has a lot to learn from other countries’ jurisprudence,” Rader continued. He noted that the USPTO is now issuing guidelines and that “you'll need to keep your eyes very closely on that.”

Two panels will discuss the impact of the act at the convention tomorrow.

The BIO International Convention runs from June 23 to 26 in San Diego.