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The Evolving IP Marketplace: Aligning Patent Notice and Remedies with Competition

March 07, 2011

March 7, 2011 (Mountain View, CA) – John McNelis, Chair of the Patent Group of Fenwick & West LLP, participated in a hearing panel designed to advise the Federal Trade Commission in advance of their report, "The Evolving IP Marketplace: Aligning Patent Notice and Remedies with Competition."

Throughout several panel hearings, the FTC brought together experts to examine issues related to patent law and provide recommendations for improvements in these areas for inclusion in their final report.

Mr. McNelis's input was highlighted in the FTC's report issued on March 7, 2011. McNelis commented on third party tracking of patent applications, stating that PAIR makes tracking the evolution of claims "very manageable in some areas." He also discussed the difficulty of sifting through software patents due to the "many different ways to describe similar features." Additionally, McNelis outlined the importance of concentrating clearance efforts on patents held by competitors or others who are likely to sue.

Based on the discussions held throughout eight days of these hearing panels, the FTC's final report includes the following recommendations for improving policies relevant to patent notice through actions by the courts and the Patent and Trademark office:

  • More definite patent claims and improved utility of descriptions in patents
  • Enhanced patent examination record as a source for interpreting claim scope
  • Improvement in consideration of third parties' ability to predict the potential breadth of evolving claims

To access an electronic version of the full report, click here.