To patent, or not to patent. . .

For most of us on the Western Slope, the topic of patents is pretty dull.

Yet, from the iPhone to e-cigarettes; aspirin to airplanes, all these great inventions we love and loath are the product of inventors, innovators, and entrepreneurs, who, in exchange for sharing the technology with the public, are granted a monopoly (patent) over the invention for a limited number of years, usually twenty.

Patents allow inventors to recoup the cost of research and development and to be able to make a profit from their hard work. Strong patents rights also have a consumer benefit. When competitors are blocked from copying and flooding the market with cheap knock-offs, it means real innovation has to occur in order to avoid infringement. If a copycat is merely tweaking, society’s knowledge base isn’t being expanded.

US Supreme Court hear 90 minutes of arguments in
Oil States v. Greene on Nov. 27, 2017. Matt Soper photo.

On Monday, Nov. 27th, the U.S. Supreme Court heard oral arguments in Oil States Energy v. Greene's Energy, a case which could drastically change whether an inventor opts to patent new technology, or, like the Coca-Cola recipe, keep it as a trade secret.

The legal question is fairly simple: whether patents are property rights, like land or cars, or whether they are public rights, similar to a marriage licence, driver’s licence, or licence to practice medicine.

If patents are held to be property rights, then only a Federal Court has the power to take that property away from its owner. If the Supreme Court decides patents are akin to licences, then the U.S. Patent & Trademark Office (PTO), as an administrative agency, may invalidate the patent at any time after its been issued.

Let’s say you have spent thousands of dollars and hours researching and developing an invention, then several thousands more in attorney and PTO fees, and then, after a cumbersome multi-year process of examination against prior art, the PTO finally issues you a patent. With this patent you build a business and hopefully are successful. At this point in time, you aren’t going to take too kindly to the Patent Trial and Appeals Board within the PTO accepting a petition to review the validity of your patent, especially since the Board doesn’t afford parties the same due process and procedural protections as courts.

The America Invents Act 2011, among other reforms, created the Inter Partes Review (IPR) process for administratively reviewing the validity of issued patents.

Congress created IPR on the presumption that the PTO had issued too many bad or weak patents over the years. Patent trolls take these “bad patents” and assert frivolous lawsuits with the goal of scaring the end user into a settlement. IPR was designed to make challenging bad patents cheaper and faster. However, as of Jan. 2018, it will cost a petitioner $30,500 to initiate an IPR and the patent owner will spend at least $300,000 defending the patent.

Instead of juries determining whether a patent was nonobvious or novel, Congress moved this determining process to the PTO – an executive agency. Such a change also meant patents were no longer treated as property and presumed valid, unless proven otherwise, but instead, IPR treats issued patents as if they are still in the application process.

Currently, roughly 75% of patents subjected to the IPR process are declared invalid. The losing party may appeal to the D.C.-based Court of Appeals for the Federal Circuit (CAFC). However, CAFC has only reversed 10% of the PTO’s IPR decisions.

The Court's liberal justices appeared to voiced support for IPR. Justice Sonia Sotomayor noted during oral arguments that the ability to appeal “saved” the IPR system.

Colorado’s-own Justice Neil Gorsuch questioned the fairness of a system that could allow a government agency to take property after it had been granted.

Conservatives on the Court seemed concerned about the government’s ability to void patents too easily.

The fact that an overwhelming majority of patents subjected to IPR are revoked and CAFC acts as a rubber stamp for the PTO means small businesses and micro inventors are discouraged from pursuing and developing patented technology.

This author believes issued patents are vested rights that should only be taken away through a court of law and not via an administrative board.

A decision is expected in June 2018.

* Matt Soper, a legal scholar, is a CMU alumnus and resident of Delta, Colo. He holds law degrees from the Universities of Edinburgh and New Hampshire. Contact him at matt.soper@alumni.law.unh.edu. 

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Matthew Soper, "To patent, or not to patent." Grand Junction Daily Sentinel (Dec. 3, 2017) p. B5.

Are the regional university naming wars over?

Remember a few years ago, three and a half to be exact, when the names “University of Western Colorado” and “Western Colorado University” were the source of tremendous tension between Colorado Mesa University and Gunnison’s Western State Colorado University?

The 2011 row began when then-Mesa State College surveyed alumni, students, staff, and the community and found the name “University of Western Colorado” to be the No. 1 choice for renaming Mesa.

Western State’s Board of Trustees, worried about name confusion, immediately passed a resolution opposing any Colorado based institution of higher education using the words “western” or “west” in its name.

Mesa acquiesced to Western’s demands and choose the fourth most popular name from the survey — Colorado Mesa University.

Immediately after legislation was signed by Gov. John Hickenlooper which officially renamed Mesa State College to CMU, Western State College began exploring rebranding and adding the word university to their name too.

A Western survey found “University of Western Colorado” and “Western Colorado University” to be the most popular names. However, CMU President Tim Foster, in a Feb. 8, 2012 letter to Western’s board wrote, “two of the names in your survey continue to pose a problem both from a brand perception and confusion standpoint. In our most recent Board of Trustees meeting, the Board asked again that you avoid the names University of Western Colorado and Western Colorado University.”

In the end, opposition and political maneuvering resulted in neither institution using the survey popular names.

While CMU may have won the battle by playing tit-for-tat in the 2011-2012 university naming skirmishes, ultimately WSCU will win the war.

In January 2016, WSCU was issued a notice of allowance, by the United States Patent and Trademark Office (USPTO), to use the names “University of Western Colorado” and “Western Colorado University.” The trademark rights were issued without any party objecting to or opposing the names during the posted opposition period. In April 2016, WSCU filed an extension, rather than filing a statement of use. The Gunnison institution has three years to develop a UWC or WCU brand, so they can file a statement of use, or let the marks die.

Did WSCU manage to pull a fast one on CMU? The Gunnison Country Times recently quoted WSCU officials as saying the university is not pursuing a name change to align with the newly acquired trademarks.

This type of comment by WSCU officials makes the bona fide intent to use the trademark very fishy. If WSCU’s intent is really just to hold the name, but not use it, then they are ordinary squatters, along with defrauding the public.

Unfortunately for CMU, the USPTO takes declarants on their face value, unless it is highly suspicious. Because it is plausible that WSCU could have a bona fide intent to change to “University of Western Colorado” or “Western Colorado University” down the road — or — an intention to use that mark as a sub-brand for something else on campus, the USPTO will let it go.

So far, no local legislators have been formally asked to carry name changing legislation for WSCU, so taking those clever Mountaineers at their word, let’s assume they are telling the truth to everyone. WSCU could actually develop a UWC or WCU brand which is different from their legal name.

In the business world it is common for a brand name to be different from the legal name of the business. Why not pursue a similar strategy in the academic world? This would be a stroke of genius, as after using their new brand name, WSCU could ask the Colorado General Assembly for a legal change to match their trademark. If the legislators or the governor said no, that would be OK, as WSCU could continue business under their trade name.

Ultimately, WSCU gets the names “University of Western Colorado” and “Western Colorado University,” which is why CMU not only lost to WSCU’s earliest demands, but the tit-for-tat measure was merely a reprisal delaying the inevitable loss.

In the broader picture, the delay and CMU’s non-opposer status, created a cease fire that has endured long enough for everyone’s tempers to subside, passions to ebb, and the possibility of a new brand identity to emerge that will result in a more peaceful and psychologically acceptable result for the parties.

WSCU holds a very powerful hand of cards right now and it will be fascinating to see which direction the university chooses to head.

The author, a CMU alumnus, served two terms as student trustee. Contact him at m.c.soper@ed-alumni.net.

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M Soper, "Are the regional university naming wars over?" The Daily Sentinel (Grand Junction, Colo.) 15 May 2016 print. online. accessed 16 May 2016.