Piers A Blewett
What has been your most memorable case to date and why?
A global patent litigation matter regarding a well-known consumer product with sales in the billions, involving a single patent family with key members in the United States, major European countries and Asia. Our opponent had a single global product configuration that made per country design-around efforts to escape difficult. We were thus able to leverage different types of claims and discovery procedures to secure evidence useable in other jurisdictions. We learned that some European countries are very deferential to validity findings from the EPO’s Technical Boards of Appeal and this, coupled with some aggressive trial timetables, allowed the application of serious global litigation pressure. Key challenges included ensuring consistency in our arguments, which made coordination of the national litigation teams crucial. At one point, we realised that a Japanese translation of a key claim term was potentially the same as a character for a similar feature in the prior art. A potential prior art finding could have been fatal globally; this situation took some careful explaining to the court. In the end, we prevailed and had a good result. I still remember the case and recall with appreciation the sterling efforts and grit of our national teams.
How do you envisage your IP practice evolving over the next five years as we adapt to a world changed by the pandemic?
I think everyone has found that lockdown ways of working have had a dampening effect on our ability to maintain close personal relationships, particularly when it comes to transitioning new people into the firm. Our practice evolved, and will continue to do so, to adapt to these challenges. For example, we made special efforts to stay close to key inventors and clients who were no longer coming into labs or workshops. Thankfully, many are now returning. On a more personal note, I think many people (at all levels) have experienced some degree of burnout or plain exhaustion. In the next five years, we will need to be creative in how we connect with people, while enhancing the value of our in-person interactions and finding a sustainable work-life balance and meaning in our work.
Can you share some of your top tips for building trust and understanding with clients?
I have found it helpful to inform clients that I am in their corner and understand the challenges they face – I also try to help clients look good in their team environment or in front of their bosses. One client’s situation may be very different to another. For example, budgetary pressure may be of paramount concern to a given client, so our billing practices should avoid any nasty surprises. I ask my teams to add value by offering proactive insights or guidance wherever possible.
The landscape for patent eligibility in the United States continues to lack certainty – if you could make one change in this area what would it be and do you think it is likely to happen?
I work in Silicon Valley, and the uncertainty surrounding 101 Alice-type issues has been difficult, particularly regarding software/computer related inventions. We have clients on both sides of this issue and doubts about the enforceability of intellectual property have dented investor confidence. My one change would be to rewrite the definition of ‘patentable subject matter’ to anything under the sun that contributes to technical improvements. While I support efforts to clarify patent eligibility in new legislation, in the current political environment I have doubts about how quickly this will happen. For now, I continue to think of a magic bullet, while always trying to include and claim a technical improvement in our applications!
What are your top three tips for developing a truly world-class patent portfolio?
A world-class portfolio can have different aims. Usually to act as a deterrent to competitors, but ideally, also to be alive when it comes to generating revenue. My initial tips would be to map your portfolio proactively, ahead of time, being as specific as possible, down to key claim terms. In parallel, engage with a competitive intelligence unit to gain insights on competitor behaviour, and make sure you understand your own product features and what is coming down the pike in your own company. Engage in directed prosecution to keep claim amendments targeted on your own or a competitor product. In other words, do not just willy-nilly add features to a pending claim to get over the prior art.
Piers A Blewett
Piers Blewett is a principal at Schwegman Lundberg & Woessner. He is a global patent fellow and a former chief patent counsel, vice president and international general counsel at Kimberly Clark Corporation. Mr Blewett believes that patent portfolios should be strategic assets that provide strong ROI and align with a solid business strategy. Having worked in-house and in private practice, he is known for bringing a practical ‘can-do’ attitude to portfolio strategy and growth.