2023 IP Outlook: What to Watch in Patent, Trademark and Copyright Law

By Sarah Bro, Douglas Carsten, Syed K. Fareed, Mandy H. Kim, Charles Larsen, Christina (Tina) L. Martini, Jennifer M. Mikulina, Amol Parikh, Eleanor B. Atkins, Cecilia Choy, Ph.D., Anisa Noorassa, Alexander Piala, PhD, Joshua Revilla, Christian Tatum and Diana Pisani on February 7, 2023

Posted In Copyrights, EU Update, Life Sciences, Patents, Technology, Trademarks

Coming out of 2022, developments around the globe are shaping the intellectual property (IP) landscape in the new year. We are seeing cases at the intersection of IP law and NFTs, the opening of the Unified Patent Court in Europe, and decisions from the Supreme Court of the United States and the Court of Appeals for the Federal Circuit affecting innovators and brand owners.

McDermott’s 2023 IP Outlook examines the top trends and decisions in IP law from the past year and shares what you and your business should look out for in the year ahead.

The Latest in SEP Licensing

Amol Parikh

The uncertainty surrounding standard essential patent (SEP) licensing persisted in 2022 and shows little sign of clearing in 2023. SEPs must be licensed to technology implementers on fair, reasonable and nondiscriminatory (FRAND) terms. Because there is no formal definition of FRAND terms, however, legal decisions involving FRAND have historically been determined by courts and non-governmental standard-setting organizations (SSOs). Disputes are frequent—especially between patent owners and technology implementers—and are becoming even more so as advanced wireless technologies such as 5G and WiFi 6 proliferate. Read more.

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Improper Inventorship in US Patent Litigations

Mandy H. Kim | Cecilia Choy, Ph.D.

Inventorship issues can have serious implications in patent litigation, leading to invalidation or unenforceability of the patent at issue, as seen in several notable 2022 cases. In the coming year, patent owners should take steps to minimize risks related to improper inventorship challenges. Read more.

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Patent Decisions Affecting Pharma and Biotech Companies

Douglas H. Carsten | Anisa Noorassa

The past year brought many developments in the life sciences patent legal space. Three decisions in particular hold potential ramifications for drug makers and patent holders in 2023. This year, the Supreme Court of the United States is also expected to consider standards patents claiming a genus must meet to withstand a validity challenge under Section 112—a ruling that could have a significant impact on patent holders in the biotech industry. Read more.

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Trends in the Western District of Texas

Syed K. Fareed | Alexander Piala, Ph.D. | Christian Tatum

Over the past year, two developments infiltrated the Western District of Texas (WDTX) which may decrease the success of venue transfers and keep case volume steady in 2023. These developments could also give plaintiffs more control over where litigation takes place, including more control over having a case tried before Judge Alan Albright in the Waco Division of the WDTX. Read more.

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Unified Patent Court and Unitary Patent Update

Charles (Chuck) Larsen | Diana Pisani

Set to open on June 1, 2023, the new Unified Patent Court (UPC) will revolutionize patent enforcement across 17 participating European Union (EU) Member States. The UPC will have exclusive jurisdiction over the new European patents with unitary effect (unitary patents), as well as new and existing national patents obtained through validation of a European patent in participating countries. Companies that hold European patents or conduct business in Europe should prepare for the new system by understanding the UPC’s implications and opportunities. Read more.

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Developments in Trademark and Copyright Process and Procedure

Christina L. Martini

Throughout 2022, the procedural rules of the US Patent and Trademark Office (PTO) and the newly formed Copyright Claims Board (CCB) underwent several developments. The PTO outlined a new administrative process for addressing fraudulent trademark submissions, shortened the response time for trademark office actions and tested procedural rules for the Trademark Modernization Act. Meanwhile, the US Copyright Office issued new rules that govern CCB procedure. These developments should help businesses obtain intellectual property protection more efficiently in 2023. Read more.

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Trademark and Copyright Supreme Court Update

Jennifer M. Mikulina | Eleanor B. Atkins

Three interesting intellectual property cases are on the Supreme Court of the United States’ docket in 2023. The Supreme Court’s opinions in these cases could have significant implications for trademark and copyright disputes going forward, so businesses should take note of the rulings when they issue. Read more.

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The Impact of the Metaverse and NFTs on IP Protections

Sarah Bro | Joshua Revilla

In 2023, we believe that intellectual property issues in relation to the metaverse, blockchain technologies and crypto assets will continue to be an important focus for brand owners and for businesses entering or expanding into this evolving space. Two metaverse and NFT lawsuits took center stage in 2022 and are important to watch in 2023: Hermès’s suit over MetaBirkins NFTs and Nike’s suit against StockX. Read more.

Sarah Bro
Sarah Bro is the office managing partner for the Firm’s Orange County office. She focuses her practice on trademark prosecution, enforcement and brand portfolio management, as well as licensing, due diligence, copyright, right of publicity and domain name matters. Read Sarah Bro's full bio.

Douglas Carsten
Douglas (Doug) H. Carsten focuses his practice on complex patent litigation disputes. He counsels clients in various technology areas, including pharmaceuticals, biologics, medical devices, diagnostic products, retail products and computer software. He has substantial first-chair trial experience that includes litigating high-profile and billion-dollar patent cases. Doug is also co-chair of the Firm’s global Life Sciences practice. Read Doug Carsten's full bio.

Syed K. Fareed
Syed K. Fareed guides multinational clients through all aspects of high-stakes intellectual property disputes, often serving as lead counsel in high-tech patent litigation. Drawing on more than a decade of experience, he represents clients’ interests in district courts throughout the United States, the US Court of Appeals for the Federal Circuit, the International Trade Commission (USITC) and the US Patent and Trademark Office (USPTO). Syed’s clients span across diverse sectors, including computer software, e-commerce, telecommunications, data processing, semiconductors, magnetic tape storage and medical and dental devices. Read Syed Fareed's full bio.

Mandy H. Kim
Mandy H. Kim focuses her practice on intellectual property litigation. Mandy has significant experience managing complex litigations across a wide range of technologies, including in the life sciences, biotechnology, medical devices, computer hardware and software, and consumer electronics industries. Mandy routinely handles motion practice, fact and expert discovery matters, and has litigated a number of cases from pleadings through trial and/or settlement. She has represented clients in federal and state courts, and before the International Trade Commission. Read Mandy H. Kim's full bio.

Charles Larsen
As a US lawyer and English solicitor, Charles (Chuck) Larsen provides clients sophisticated multijurisdictional counsel in intellectual property portfolio strategy, transactions and disputes, with a particular emphasis in bioengineering and the medical technology space. He is licensed to practice before the US Patent and Trademark Office (USPTO), the European Patent Office (EPO), US District Court, and the courts of England and Wales. Read Chuck Larsen's full bio.

Christina (Tina) L. Martini
As Global Head of McDermott’s Trademark Prosecution and Controversy Practice, Christina (Tina) L. Martini focuses her practice on domestic and international trademark and copyright law, as well as domain name, Internet, social media, advertising, unfair competition and entertainment law. Tina has extensive experience in counseling, prosecution, enforcement, due diligence and licensing matters. She successfully assists clients in protecting their intellectual property rights through litigation and other means, including the courts and uniform dispute resolution procedures. Read Tina Martini's full bio.

Jennifer M. Mikulina
As head of the Firm's global Trademark Prosecution Practice, Jennifer M. Mikulina focuses her practice on trademark and copyright counseling, prosecution, licensing and enforcement. She counsels companies in a wide variety of industries, including consumer goods, food products, digital currency, health care services, insurance, hospitality/restaurant services and software/online services. Jennifer works closely with members of the Firm’s corporate advisory, health law and tax practice groups on the intellectual property aspects of transactions, including strategic alliances, joint ventures, mergers and acquisitions, and license arrangements for public and privately held companies. Read Jennifer Mikulina's full bio.

Amol Parikh
Amol Parikh concentrates his practice on intellectual property litigation, counseling and procurement. He draws on his trial and litigation experience in combination with his engineering training to quickly identify intellectual property issues and develop creative strategies to address them. Amol’s work on behalf of clients has earned him recognition in many industry publications. Most recently, Amol was recognized in February 2019 with the International Law Office’s “2019 Client Choice Award” for Intellectual Property in Illinois. The award recognizes “excellent client care” and the “ability to add real value to clients’ business above and beyond the other players in the market,” and winners may only be nominated by corporate counsel. Read Amol Parikh's full bio.

Eleanor B. Atkins
Eleanor (Ellie) B. Atkins focuses her practice on trademark, copyright, sweepstakes and promotions, and false advertising matters. Ellie is experienced in client counsel, strategy and legal research, including portfolio management and the selection, clearance, prosecution, registration and enforcement of trademarks. Additionally, she has assisted with district court litigation as well as actions before the Trademark Trial and Appeal Board, including drafting complaints, discovery requests and briefs in support of various motions. Read Ellie Atkins' full bio.

Cecilia Choy, Ph.D.
Cecilia Choy, Ph.D., focuses her practice on intellectual property matters and is a certified patent agent. Read Cecilia Choy's full bio.

Anisa Noorassa
Anisa Noorassa focuses her practice on intellectual property litigation matters. Read Anisa Noorassa's full bio.

Alexander Piala, PhD
Alexander Piala, PhD, advises on a broad range of intellectual property matters, including patent litigation, patent prosecution and transaction due diligence. He has extensive experience in the biotechnology and pharmaceutical sectors. His scientific background spans organic chemistry, biochemistry and protein structure/function relationships. Read Alexander Piala's full bio.

Joshua Revilla
Joshua Revilla focuses his practice on intellectual property litigation matters. Read Joshua Revilla's full bio.

Christian Tatum
Christian Tatum focuses his practice on intellectual property matters, including patent litigation and post-grant proceedings. He has worked with clients in a variety of technology sectors, including energy generation, aerospace and semiconductor. Read Christian Tatum's full bio.

Diana Pisani
Diana Pisani* assists clients with patent applications in Europe, the UK and other countries for medical devices, multimedia systems and other electrical and mechanical technology. She has over 20 years of experience drafting and prosecuting patent and design applications, and has handled many oppositions and appeals at the European Patent Office. She also assists with litigation, freedom-to-operate opinions, due diligence and devising patent filing strategies. As a former US patent agent, Diana has particular experience drafting and prosecuting patents and design patents at the United States Patent and Trademark Office. Read Diana Pisani's full bio. *Non-lawyer professional

2023 IP Outlook: What to Watch in Patent, Trademark and Copyright Law

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