Jeffrey W Gluck

As patent pools become a more established part of the commercial landscape, what emerging trends do you think will shape how they develop next?

The use of patent pools is mainly dictated by the number of patents relevant to technology trends and standards. The more entities holding patents relating to a particular technology trend or standard, the more that pooling makes sense. For example, in earlier wireless cellular communication standards relatively few entities owned most of the patent rights and pools were not as key as they are now, whereas, in 4G and beyond the number of entities obtaining patents has skyrocketed. Without pools, and with a large number of entities holding essential patent rights (regardless of whether they are connected with a standard), chaotic scenarios are more likely for companies that wish to implement systems employing the technology or standard. Such companies would be forced to bargain with many different entities to obtain patent licences in order to avoid potential infringement lawsuits. It should be noted that the trend in increasing numbers of strategic patent holders is not limited to the wireless communication field but extends to other spaces as well, for example, automotive technologies and autonomous vehicles.

Your legal practice spans a broad range of areas, including patent application and prosecution, IP counselling, providing legal opinions, serving on litigation teams and appellate litigation. What aspects of your work do you enjoy most and why?

I most enjoy providing IP counselling to clients and offering legal opinions, because doing so allows me to become more intimately connected with clients and their businesses and makes me feel part of their teams. In IP counselling, I can take an active part in advising a client in what IP protection to procure and how best to do so, prior to actually assisting them in obtaining those IP rights. Becoming intimately familiar with the client’s business goals also enables me to assist them in dealmaking.

Can you tell us about some of the key skills that litigators need to succeed before the US courts?

Patent litigation has become increasingly complex and it is essential that litigators keep apprised of the latest strategies. One example is the use of inter partes reviews as a strategic tool, as well as the case law that revolves around the implications of using them as new case law is established. Another example is the use of patent-eligibility arguments in connection with computer and chemical/biotechnology related inventions; what is (and is not) considered to be patent-eligible and what arguments may be made in favour of (and against) patent eligibility have been a frequent topic of case law. Aside from that, as always, it is key that a patent litigator be well prepared, because US case law moves quickly; a patent litigator can never sit back and ignore emerging case law, assuming that they will be able to grasp new legal trends quickly when a time of need emerges.

Why is strategic patent knowledge so important to dealmaking?

Deals between technology companies are often based upon the company’s intellectual property, particularly patents. When representing one company to obtain use of technology covered by patents held by another, knowledge of the other company’s patent portfolio is crucial to strategic decisions, including what type of deal your client company should make (eg, acquisition, purchase of assets or licence). The more critical the patents of the other party are to your client’s strategic goals, the more control your client may wish to obtain over those patents and they more they may be willing to do and pay for this. This also works in the other direction, where strategic patent knowledge (ie, understanding the strategic value of what the client owns) provides bargaining power with the company that wishes to obtain use or ownership of the patents. This may result in more desirable outcomes for the patent holder (eg, higher royalties or other payments and better acquisition terms).

Kathi Vidal was appointed head of USPTO earlier this year – what difference, if any, have you observed so far?

It is a bit early in Ms Vidal’s tenure to make a judgment, but it appears so far that she is taking an active approach to current issues in patent practice and trying to accomplish things in an efficient manner.