Minneapolis Patent Law Blog

If anything in patent law triggers a love-hate reaction it is likely the processes related to inter partes review (IPR).

For those unfamiliar with it, inter partes review is a form of in-house review the U.S. Patent and Trademark Office has used since 2012 to adjudicate certain challenges to patent rights. Until this year, it had garnered little attention from mainstream media. But two cases decided recently by the U.S. Supreme Court, and one that is coming up for consideration have sparked interest across business and the intellectual property law arena. For good reason.

People, being people, have disagreements. Relationships of all kinds get put at risk if disputing parties let the issue fester. Within the legal context, the traditional approach to this dilemma has been to litigate. Historically, the process involves bringing the dispute into the open. Negotiations follow, pressed by the knowledge that unresolved issues could wind up in court.

That can be costly, time consuming and ultimately frustrating. Most people would prefer to settle differences without sending it to an uncontrolled third party. That being the case, alternative dispute resolution (ADR) methods have developed that include mediation and arbitration. Touted as a way to achieve desired outcomes more quickly and at lower cost, ADR is in growing demand in many areas.

A traditional view within patent law is that a patent granted for an invention or idea extends infringement protection only within the bounds of the country that issued the license. So, if you obtain a patent from the U.S. government, the law limits recovery for infringement damages to market losses within the U.S.

However, that rather bright line standard is a little fuzzier in the wake of a decision by the U.S. Supreme Court. Last month, the high court ruled on a 7-2 vote that U.S. companies that lose profits from overseas markets due to infringement can seek recovery. The case now returns to the lower courts for a new determination on whether damages are owed, and if so, how much.

"You've come a long way, baby." That was the slogan Phillip Morris used to market Virginia Slims, the first cigarette brand marketed specifically to women. Like any legitimate intellectual property, that phrase is trademarked. But another event this week in Washington would seem to deserve some recognition with the phrase. On June 19, the U.S. Patent and Trademark Office issued the country's 10 millionth patent.

The distinction, one that will surely go down in the annals of history, goes to inventor Joseph Marron. The firm that owns the patent is Raytheon Co. And if you want to claim your own measure of distinction, try saying the name of the idea out loud. If you can do it easily once, try doing it three times fast.