Virginia IP Law : Virginia Intellectual Property Lawyer & Attorney : Troutman Sanders Law Firm : Technology & Patent Litigation

One of the most common IP misconceptions is the "work for hire" doctrine.  Under that doctrine, an employer automatically owns the copyright for work product created by an employee within the scope of his or her employment.  The employer does not, however, own the copyright for work product created by an independent contractor, such as a graphic artist, website designer or advertising agency, UNLESS the client obtains a written agreement with the independent contractor acknowledging that the work product is "work for hire," and preferably assigning the copyright to the client if, for any reason, the work is not deemed to be "work for hire."

This is a very common misconception!  I constantly have clients who are forced to pay twice for work product: once when the work product is initially developed by independent contractors, and again when the client has to pay the independent contractor to assign its copyright rights when the client learns the work product is being used for a competitor, or gets a nastygram (cease and desist letter) from the independent contractor.  The key is to negotiate ownership of the work product at the beginning of the relationship - independent contractors want work, and they want to be paid, so they will agree to virtually anything up front. 

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The purpose of the patent system is “[t]o promote the progress of science and useful arts. . .” Does it? I believe it does, though there are too many factors that go into “promoting the progress” to provide an adequate answer. However, it cannot be argued that the most technically developed countries have strong patent systems and one of the essential steps a developing nation must make to continue economic progress is to implement strong patent laws. In these developing countries, it can be argued that a weak patent system can fuel early and fast economic growth but a stronger system of patent laws is required to maintain and sustain a strong economy.

There has been much recent discussion concerning whether the patent system stimulates or stifles innovation. Members of the software industry have consistently argued that the present patent system undermines that purpose. This is not a new argument, President Lincoln, a patent holder and strong advocate of the patent system, declared that "The patent system added the fuel of interest to the fire of genius." The United States has always had a strong patent system and has a reputation of encouraging innovation.

The basic design of the patent system is for the government to grant a limited monopoly, exclusive right, to an inventor is exchange for disclosure to the public of the invention. The patent system should be properly designed and balances such that each party, the inventor and the public, is properly rewarded on a substantially equal basis. The Courts and the United States Patent and Trademark Office apparently believe that the balance ahs shifted too far toward that inventor and have begun to shift the balance back to the public. Recent cases, KSR (making it harder to get a patent by making it easier for the USPTO to reject a claim), In re Bilski (limiting the subject matter that is available for patenting), In re Seagate Technology (making it harder to obtain injunctions against infringers, and the USPTO proposed rule changes limiting the ability to file continuation applications.

The proper balance of rewarding the inventor and providing a steady and consistent flow of scientific information to the public is the heart of the patent system. For every disclosed innovation, several uses of the innovation become obvious and free for the public to use, several improvement innovations are developed that allow the first commercial products embodying the innovation to be brought to the market, several uses of the innovation become obvious and free for the public to use, a person with entrepreneurial skill may contact the inventor and they both will reap the rewards of the invention. The patent system should not be analyzed solely on the basis of the one monopoly that has been granted on a patent that you or your company wants to practice but by the systemic economic effects a patent system has on the economy of a nation.

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In recent years, federal district courts around the country have enacted local rules governing patent cases. The  Northern District of California was one of the first, and its local rules are now extensive and detailed. The Eastern District of Texas enacted local rules to speed up the litigation of patent cases, and it is now  the most popular forums for the litigation of patent suits in the country. The volume of patent cases, however, has slowed the E.D. Texas docket considerably.  Other districts have followed suit, including the Western District of Pennsylvania and, most recently, the District of Massachusetts, adopting local rules for patent cases. At least one result (and perhaps an underlying purpose) of those rules has been to encourage the filing of patent cases in those districts.

The Eastern District of Virginia is the original “Rocket Docket” having enacted local rules to speed up cases almost forty years ago. The E.D.Va. continues to be one of the fastest courts in the United States, with an average time to resolution of civil cases of only about six months. The E.D. Va. has also been a relatively popular forum for patent cases, ranking in the top ten of federal district courts for filing patent suits.

The E.D.Va., however, has no local rules for patent cases. Rather, the three divisions of the court, and even judges in the same division, follow different procedures for dealing with their cases and different ways of handling patent cases.  As a result, there is little predictability in the E.D.Va. on issues such as whether tol extend the pre-trial period for patent cases to allow for the greater amount of preparation necessary in such cases, whether the Court will allot more trial days for a patent trial than the two or maybe three days it allows for most trials and whether the Court will incorporate patent-specific procedures, such as the filing of claim charts and the scheduling of a Markman hearing.

There are many potential benefits to adoption of local patent rules. Scheduling can be more uniform, and the litigation can be streamlined. Conducting claim construction early in the case can remove uncertainty and encourage earlier resolution of cases, decreasing the Court’s workload. Given the volume of patent cases filed in the E.D.Va., the Court should consider adopting limited local rules addressing the unique features of patent litigation. Such rules should be simple, and they should be permissive, so that individual judges can adapt them to each judge's docket and the needs of a specific case.

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