more than just patent assertion entities, impacting other intermediaries that might be serving legitimate functions such as providing inventors with needed liquidity. We need to worry more about the unintended consequences that proposed reforms could have.” Among the White House initiatives to curb trolls, three have garnered the most attention. The first is an effort to make the ownership of patents more transparent. “A lot of patent trolls create these corporate shells, so you never really know who owns the patent,” says Holbrook. “Knowing the true owner can help combat abusive and frivolous assertions of patent infringement.” Another effort aims to make patents clearer. Indeed, many problems stem from patents that are vague or overly broad. The president has instructed the patent office to tighten the definiteness requirement and offer new training for examiners to make them more proficient in patent reviews. “Efforts to improve patent quality at the outset should help the whole system,” says Israel. “The better quality the patent, the harder it is to challenge.” Finally, the White House has allowed third-party participation in patent application reviews. “Patent examiners are overworked, so their ability to find all the information needed to determine if a patent is warranted is limited,” says Holbrook. “Allowing examiners to bring in additional help means they’ll have more information and be able to make a more informed decision.”
Students learn how to advance early-stage research into legally protected business opportunities. They also develop an appreciation of how potential market applications and intellectual property protection issues can influence research direction and priorities. Dabbiere’s team’s work centered on the development of a biomedical device to help counteract massive bone loss. “The current treatment for bone cancer patients has a lot of side effects,” says Dabbiere. “The PhD student is developing an implant that could both reduce the side effects and improve the effectiveness of the treatment.” Dabbiere and her team conducted a prior art search, looking for earlier patents and scientific articles to assess whether the invention is sufficiently new to warrant a patent. She also collaborated with the MBA students to research the invention’s marketability.
Legislative branch overhauls patent system The patent system got its biggest overhaul in more than 60 years with the 2011 America Invents Act (aia). Perhaps the most significant change in the aia was the shift from a “first-to-invent” to a “first-to-file” system. On the plus side, the move brings the US in line with the rest of the world, which has long used the first-to-file system. On the negative side, some argue that the new system will favor large corporations over the inventor working out of his basement because the latter might lack the necessary funds to file immediately. The new law also created new procedures to allow patent challenges within the US Patent and Trademark Office that hopefully will provide a less expensive alternative to litigation. “The newly created Patent Trial and Appeal Board deals with validity issues, not infringement issues,” says Israel. “It’s already become a very popular forum for challenging patents. While these proceedings provide a less expensive avenue to challenge the validity of patents, they hopefully will be carried out in a way that does not impact the decision and incentives to seek patents in the first instance. The Patent Office conducted public roundtables on these proceedings in April and May to improve their administration of these popular proceedings.” The long-term impact of the aia on innovation remains to be seen. “The new system just went into
“It has been an incredible experience to talk to an inventor and figure out what is at the core of his invention so I can do the searches, understand what I’m looking for, and write out claims to file a patent application,” says Dabbiere. “Instead of sitting in a class reading about it, I’m actually doing it.” Indeed, that is the intent of the program. “The law students in the TI:GER program just jump into the deep end of the pool,” says Anne Rector, director of TI:GER at Emory Law. “They are out there operating under the new America Invents Act, dealing hands-on with issues that determine if an invention is patentable or not. This program uniquely places our students in a position to come out of law school equipped to navigate the new patent landscape.” This year’s TI:GER teams faced the fierce world of business competitions with teeth bared. CheckDroid, a team including JD students
“There are so many unknowns in the America Invents Act that I call it the ‘America Invents Work for Patent Attorneys Act.’ ” —Tim Holbrook
Tyler Dutton 14L, Karan Jhurani 14L, and David Mashburn 14L, won state and regional business start-up competitions for its device that helps developers test and maintain quality assurance for Android apps. The team earned a trip to Silicon Valley to pitch its product to venture capitalist firm Kleiner Perkins, backer of companies such as Google and Amazon. Another team, LymphaTech, which included Robert Jones 14L and Jeff Adams 14L, invented a diagnostic tool to monitor and help prevent lymphedema, a painful and disfiguring disease that affects nearly half of all breast cancer survivors. The team competed against 42 other teams at the 2014 Rice [University] Business Plan Competition, the largest student start-up competition in the world. LymphaTech placed sixth overall, also winning Best Presentation and the Women’s Health Award for a total of $38,000 in prize money.
EMORY LAWYER SUMMER 2014
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