©2017. Published in Landslide, Vol. 10, No. 1, September/October 2017, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
From its strength within the American Bar Association, the ABA Section of Intellectual Property Law (ABA-IPL) advances the development and improvement of intellectual property laws and their fair and just administration. The Section furthers the goals of its members by sharing knowledge and balanced insight on the full spectrum of intellectual property law and practice, including patents, trademarks, copyright, industrial design, literary and artistic works, scientific works, and innovation. Providing a forum for rich perspectives and reasoned commentary, ABA-IPL serves as the voice of intellectual property law within the profession, before policy makers, and with the public.
Throughout the year, the Section works on behalf of its members and the profession in identifying, watching, and analyzing key issues and to bring attention to intellectual property issues before Congress, the executive branch, and the judiciary.
This year, ABA-IPL’s comments included those conveyed on a variety of IP matters: to government offices, to the presidential transition team, and in conjunction with our ABA colleagues on matters both domestically and internationally.
Comments of the ABA Section of Intellectual Property Law to the Presidential Transition Team on Issues Relating to the United States Intellectual Property System
December 21, 2016
The Section sent a letter to the presidential transition team noting that protecting the industries that drive our economy is an essential role of our federal government. The ABA-IPL Section’s comments were submitted to aid the transition team in identifying areas where our federal protections need to be buttressed against the persistent threat of theft. The Section pointed out that intellectual property laws provide the incentive needed to promote aggressive private investment in the development of new life-saving medicines and medical devices, new communications technologies, and so much more.
The letter emphasized that as the United States struggles to maintain its position as the economic and technological world leader, our intellectual property system provides the protections necessary to keep inventors and creators from falling victim to theft both from within and beyond the borders of our nation. The ABA-IPL Section noted that it has taken on issues important to the health of our IP system, and therefore the United States economy, and it included a list of 13 recommendations that the federal government should undertake to strengthen the intellectual property system. ABA-IPL’s recommendations included the need to: revise the patent eligibility statute to ensure useful inventions are protected; revise Patent Trial and Appeal Board (PTAB) proceedings to apply the plain meaning claim constructions as applied in district courts; and prohibit diversion of US Patent and Trademark Office (USPTO) user fees to other agencies within the Department of Commerce.
Random Trademark Audits
August 18, 2016
The Section wrote to the USPTO to provide written comments on the “Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases.” The Section supported the USPTO goal of promoting the integrity of the trademark register by encouraging accuracy in the listing of goods/services for which use or continued use of a mark is claimed and acknowledged that the proposed rules would facilitate the more streamlined and effective processes.
Comments to the USPTO on Reformatted Trademark Declarations
October 24, 2016
The Section continued its support for the goal of promoting the integrity of the Trademark Register by reformatting the verified statements made in connection with applications, allegations of use, and post-registration affidavits, to separate out the clauses to improve readability and to require the signatory to check a box next to each statement in order to validate an electronic submission. The Section made specific suggestions to improve the accuracy and functionality of the system and suggested that mere reformatting of the declaration may not be sufficient for significant improvements that would achieve the USPTO’s goal.
Informal Comments on Proposals to Improve the Accuracy of the United States Trademark Register
October 24, 2016
The ABA-IPL Section conveyed support for the USPTO’s goal of assessing and promoting the accuracy and integrity of the Trademark Register through the use of expungement mechanisms to expunge unused goods and services from trademark registrations and generally supported its proposed expungement mechanisms. The Section noted that consideration of different types of expungement and nonuse proceedings and mechanisms could potentially be implemented without statutory changes and stated that the mechanisms are valuable tools for efficiently removing unused registrations from the Register.
Adoption of CAPTCHA for TESS and Sign-In for TEAS
October 24, 2016
ABA-IPL wrote a letter to the USPTO in response to an informal e-mail request dated August 26, 2016, for comments about the USPTO’s possible adoption of: (1) a CAPTCHA verification device on the Trademark Electronic Search System (TESS) search engine, and (2) a user sign-in requirement for electronic forms via the Trademark Electronic Application System (TEAS). The Section supported the USPTO’s apparent goal of reducing the burdens on its website arising from unqualified open access, and in doing so, improving the speed and efficiency of those systems for applicants and practitioners among other members of the public. The Section suggested that only the least intrusive variety of CAPTCHA device should be adopted and that the USPTO should consider appropriate alternative access channels in view of the public nature of the TESS system.
Proposed Rulemaking Regarding Revival of Abandoned Applications
December 20, 2016
In responding to the request by the USPTO, the Section expressed support for the USPTO’s stated goal of promoting the integrity of the information in the trademark electronic records system as an accurate reflection of the status of applications and registrations; ensuring that the public has notice of the deadlines and requirements for petitions to revive an abandoned application, petitions to the director regarding other matters, and requests for reinstatement of abandoned applications and canceled or expired registrations; as well as facilitating the efficient and consistent processing of such requests. The Section recommended that several areas warrant clarification.
Draft Examination Guide on Incapable Informational Matter
March 16, 2017
The Section sent a letter to US Commissioner for Trademarks expressing support for the proposed examination guide on incapable informational matter. The Section provided comments to clarify and highlight a few important issues that it recommended for clarification.
Patent Subject Matter Eligibility
The ABA-IPL Section wrote to the USPTO early in 2017 to respond to its invitation for comments on patent subject matter eligibility. The Section noted that current patent eligibility jurisprudence of the courts is in conflict with existing ABA policy and that the Section believed that the current state of the common-law interpretation of 35 U.S.C. § 101 has reached the point where further judicial interpretation is unlikely to rectify the ambiguities and uncertainties created by the current jurisprudence. While continuing to be of the view that laws of nature, natural phenomena, and abstract ideas standing alone are not proper subject matter for patent protection, the Section stressed that legislation clarifying the distinct role for § 101 in limiting patent eligibility to practical uses of processes, machines, manufactures, and compositions of matter would likely be necessary. The Section noted that it was in the process of developing policy that would facilitate a revision of § 101 that clarifies what is and what is not patent eligible.
In the spring, the Section provided more specific comments to the USPTO with an update on its progress to develop a suitable legislative proposal. It outlined the legislative proposal passed by Section Council that recognizes the proper role of preemption in establishing a patent eligibility gateway consistent with the fundamental concerns of the Supreme Court—while leaving determinations of patentability, specifically, to “novelty,” “obviousness,” and “specification,” namely 35 U.S.C. §§ 102, 103, and 112. The Section’s proposal directly applies the long-standing fundamental concerns of Supreme Court precedent, is consistent with current ABA policy, and makes clear that “patent eligibility shall not be negated when a practical application of a law of nature, natural phenomenon, or abstract idea is the subject matter of the claims when all limitations with none ignored are fully considered.” The ABA-IPL proposal “substantially mitigates, if not resolves, newly injected ambiguity and confusion into the eligibility determination caused by the use of factors that are relevant only to novelty, obviousness, and the requirements of particularity in claiming an invention.” The policy also outlines specific conditions for patent-eligible subject matter. The Section’s work is a “first step towards a politically palatable solution to the unworkable detrimental state of current 101 jurisprudence.”
Comments to the Canadian Patented Medicine Prices Review Board on Modernization of the Patented Medicines Pricing Guidelines
October 24, 2016
As a key IP stakeholder, the Section expressed its interest in the global pricing of patented medicines. In addition to offering comments addressed to several specific areas, the Section stated that it believes that categorizing new patented medicines based on the degree of therapeutic benefit is rational and that it would be reasonable to reassess the pricing for patented medicines periodically to ensure that the pricing is consistent with the marketplace.
December 22, 2016
The ABA-IPL Section expressed its support for the USPTO goal of balancing the need to collect sufficient revenue with its goal of promoting high-quality examination and reasonably prompt disposition of patent applications at a reasonable cost to the public. Among its comments, the Section favored setting patent-related fees at a level appropriate to cover reasonable costs, that such fees remain with the USPTO, and that fee increases should be substantiated. The Section noted that fee diversion is again a significant threat to the patent system. It encouraged the USPTO “to consider smaller fee increases at this time to more closely satisfy the necessary recovery of aggregate estimated costs and reduce the risk that user fees will be applied to pay for the activities of other government entities or otherwise fund the government generally.
Revising Section 108: Copyright Exceptions for Libraries and Archives
August 29, 2016
The Section wrote to the US Copyright Office in August last year on its view regarding Revising Section 108: Copyright Exceptions Notice of Inquiry, 81 Fed. Reg. 36,594 (June 7, 2016) (Dkt. No. 2016-4). The comments generally applauded the report’s consensus-based recommendations. In departing from the report’s recommendations, the Section expressed that continuing changes in technology and preservation practices make it important for the Copyright Office to receive sufficient rulemaking authority to adapt § 108 to changing circumstances. It noted that library and archive exceptions are so out of date as to risk being meaningless, increasingly resulting in some libraries and archives relying on the fair use doctrine to permit greater use of their resources. The Section stated its support for granting the Copyright Office greater rulemaking authority to identify exceptions to copyright infringement for qualifying institutions and offered several recommendations for modifications to approaches that would improve the system and prohibit infringement.
Letter from the Section to the House Judiciary Committee Chair and Ranking Member on the Copyright Office Proposal
February 21, 2017
The Section sent a letter to the chair and ranking member of the House Judiciary Committee to provide input on the House Judiciary Committee’s proposal to reform the U.S. Copyright Office. In its letter, the Section encouraged Congress to draft legislation to provide the Copyright Office with an adequate budget and sufficient authority to develop its own IT system to support the unique needs of its users, to provide the Office with autonomy from the Library of Congress, and to make the Register of Copyrights position Senate-confirmed. Noting the abrupt removal of the Register of Copyrights by the new Librarian, the Section called on Congress for renewed oversight and Office autonomy. The letter highlighted the need to select a Register who, among other things, is a lawyer with substantial experience and expertise in copyright law and sufficient knowledge to represent U.S. copyright interests domestically and abroad. Regarding proposed Copyright Office Advisory Committees, the Section recommended comprising those committees with copyright practitioners, but to also make clear the committees would not advise the Office on substantive issues. Finally, the Section expressed its support for legislation that would establish a copyright small claims tribunal within the Copyright Office.
Proposed Update to the Federal Trade Commission and US Justice Department Antitrust Guidelines for the Licensing of Intellectual Property
September 26, 2016
The Section of Intellectual Property Law joined with the Section of Antitrust Law in applauding the agencies’ efforts to maintain the relevance of the IP Licensing Guidelines through the proposed update, noting that the Guidelines have largely withstood the test of time and that the agencies’ approach to evaluating the competitive impact of licensing arrangements has not fundamentally changed since 1995 when the Guidelines were issued. The Sections were both of the view that the proposed revisions do not anticipate changes in evaluation, but are intended to more accurately reflect developments in relevant antitrust and intellectual property law and that the proposed update will assist market participants to better understand their obligations under the antitrust laws in a number of areas. The comments included those on reinforcement of core analytical principles and included suggested areas for clarification
Joint Comments with Antitrust, International Law Sections to China on Anti-Unfair Competition Law Draft
March 24, 2017
The Section of Intellectual Property Law cosponsored with the Sections of Antitrust Law and International Law comments to the Standing Committee of the National People’s Congress (NPCSC) of the People’s Republic of China on the Anti-Unfair Competition Law (Revised Draft) (Draft AUCL), which was published for public consultation. The Sections offered the comments in the hope that they would assist the NPCSC in further refining the Draft AUCL. The comments reflected the expertise and experience of their members with both antitrust and unfair competition laws around the world and were a follow up to comments provided on an earlier draft of proposed revisions to the Anti-Unfair Competition Law in 2016.
Joint Comments with Antitrust, International Law Sections to China on Anti-Monopoly Guidelines on Abuse of Intellectual Property Rights
April 20, 2017
The Section of Intellectual Property Law cosponsored with the Sections of Antitrust Law and International Law comments to the Anti-Monopoly Commission (AMC) of the State Council of the People’s Republic of China on the Anti-Monopoly Guidelines on Abuse of Intellectual Property Rights (Draft for Comments) (Draft IP Guidelines), which was published for public consultation.
At the ABA Midyear Meeting in May, the ABA House of Delegates adopted as ABA policy a proposed resolution from the ABA-IPL Section that nominative fair use should be classified as an affirmative defense in trademark infringement cases. The resolution bears upon trademark law’s nominative fair use doctrine, which protects the use of a trademark or service mark to identify the mark owner’s own goods and services.
The resolution allows the ABA to pursue the incorporation of the nominative fair use doctrine into the Lanham Act’s infringement cause of action so mark owners do not enjoy overbroad rights to control all uses of their marks. It allows the ABA to help advance defendants’ First Amendment rights by encouraging courts to require mark owners to demonstrate prima facie cases of infringement before imposing on defendants the duty to prove their eligibility for the doctrine’s protection. With adoption of this resolution, the ABA could have submitted an amicus curiae brief to the US Supreme Court in the case of International Information Systems Security Certification Consortium, Inc. v. Security University, LLC, 823 F.3d 153 (2d Cir. 2016), cert. denied, 137 S. Ct. 624 (2017), had the Court granted the petition in that case.
The ABA-IPL Section successfully recommended to the ABA Board of Governors that the American Bar Association file amicus briefs in two important Supreme Court cases this past year. The ABA-IPL Section drafted the briefs on behalf of the ABA.
TC Heartland LLC v. Kraft Foods Group Brands LLC
The TC Heartland case concerned the question of patent venue, and in particular, the Federal Circuit’s interpretation of the patent venue statute, 28 U.S.C. § 1400(b). TC Heartland, an Indiana-based company, challenged the venue in a patent infringement suit filed by Kraft Foods in the District of Delaware. TC Heartland’s motion to transfer the case from Delaware to Indiana was denied, and the Federal Circuit then denied its petition for a writ of mandamus, 821 F.3d 1338 (Fed. Cir. 2016), concluding that the Delaware district court’s exercise of jurisdiction was reasonable, based on the Federal Circuit’s interpretation of the patent venue statute in VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990). That case interpreted the patent venue statute to allow patent infringement actions to be filed nationwide (wherever there was personal jurisdiction over a corporate defendant). TC Heartland then filed a petition for certiorari, which the United States Supreme Court granted in December 2016.
The ABA-IPL Section proposed and was granted permission to prepare an amicus brief for the ABA on behalf of the petitioner TC Heartland in the Supreme Court. The ABA’s brief urged the Court to conclude that the special patent venue statute limits venue for a corporate defendant to either where the defendant resides or where it has committed acts of infringement and has a regular and established place of business. This would reverse the holding of the Federal Circuit. Ironically, the ABA argued, the Federal Circuit’s broadened interpretation of the patent venue laws has led to severe concentration of patent litigation. Nearly half of all patent cases are now filed in just two judicial districts, and nearly 25 percent are filed before one judge in the Eastern District of Texas. This has had numerous adverse effects on patent law and practice, such as depriving patent law of the diversity of viewpoints necessary for a healthy and robust common law. And this increase in forum shopping has undermined public confidence in the fundamental fairness of the patent system and the courts, and risks diminishing the credibility of the bar.
On May 22, 2017, the Supreme Court issued its decision, 137 S. Ct. 1514, unanimously reversing the Federal Circuit. The Court ruled, based on a straightforward reading of the patent venue statute, that a corporation will only be deemed to “reside” where the corporation is incorporated. The Court’s reasoning that the patent venue statute should not be given the expansive definition applied by the Federal Circuit was consistent with the position advocated in the ABA’s amicus brief.
Matal v. Tam
In Matal v. Tam, a member of the Asian rock band The Slants applied to register the service mark “THE SLANTS” with the USPTO. The Trademark Trial and Appeal Board rejected the application to register the mark as potentially disparaging of people of Asian ancestry, under section 2(a) of the federal trademark statute (the Lanham Act), which bars registration of potentially disparaging marks.
The issue before the Supreme Court was whether the bar on registering potentially disparaging marks violated the First Amendment free speech clause. In 2015, the Federal Circuit held in an en banc decision that the bar on registration “amounts to viewpoint discrimination,” which did not survive “the strict scrutiny review appropriate for government regulation of message or viewpoint.” In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc), aff’d sub nom. Matal v. Tam, 137 S. Ct. 1744 (2017). The Supreme Court granted certiorari on the constitutional issue in the fall of 2016.
The ABA’s brief, which was not in support of either party, advised the Supreme Court not on the merits of the actual service mark registration issue but rather on three basic propositions of trademark law, namely, that: (1) the owner of a registered mark enjoys certain substantive and procedural advantages in litigation to protect its mark that are not available to the owners of unregistered marks; (2) a determination that a mark is ineligible for registration with the USPTO does not necessarily render that mark invalid and unprotectable; and (3) such a determination does not restrict the mark owner’s right to use the mark in commerce. The Section believed it necessary for the Court to understand these three basic propositions to resolve the constitutional issue presented by the certiorari petition without distorting trademark law in the process.
On June 19, 2017, the Supreme Court affirmed the Federal Circuit’s opinion, holding the portion of the statute at issue unconstitutional. The opinion confirmed the three points described above.
ABA-IPL Reach and Engagement
Section Chair Donna P. Suchy represented the ABA-IPL Section at several national and international conferences—furthering relationships and working with IP colleagues. Ms. Suchy attended the AIPPI World Congress in Milan in September, the APAA Meeting in Bali in October, and the UIA Conference in Budapest in November. This year she also attended the AIPLA Mid-Winter Meeting in February and INTA Annual Meeting in Barcelona in May.
Section Chair-Elect Scott F. Partridge represented the Section at the AIPLA Spring Meeting in Seattle in May.
ABA-IPL and the USPTO worked together to sponsor the 4th Annual ABA-IPL Trademark Day “Behind the Scenes at the USPTO” in September.
ABA-IPL, participating with fellow IP stakeholders including INTA, IPO, and AIPLA, joined the U.S. Chamber of Commerce’s Global Intellectual Property Center in the 70th Anniversary Celebration of the Lanham Act.
Tracy-Gene Durkin, Vice Chair of the ABA-IPL Design Committee, represented the Section at the second annual ID5 Industrial Design Forum in Beijing. Representatives included those from INTA, IPO, and MARQUES, and the five largest offices that protect industrial designs: USPTO, Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), China Intellectual Property Office (SIPO), and European Intellectual Property Office (EUIPO).
Past Chair Lisa Dunner and Immediate Past Chair Ted Davis represented the Section at the midyear meeting of the TM5 group in Barcelona in May. Other representatives included those from USPTO, JPO, KIPO, SIPO, EUIPO, INTA, AIPLA, and IPO.
Immediate Past Chair Ted Davis represented the Section at the annual 2017 Canadian Bar Association IP Day in Ottawa in May.
Immediate Past Chair Ted Davis represented the Section at the 23rd NGO Coordination Meeting in Barcelona in May. Other participants included representatives from ACPAA, AIPPI, ASEAN IPA, ASIPI, ECTA, EPI, EPLAW, ICC, INTA, IPO, MARQUES, and Union-IP.
Past Section Chair Marylee Jenkins was named Chair of the USPTO’s Patent Public Advisory Committee (PPAC). This will be her second term with PPAC. Bernard (Bernie) J. Knight Jr., active Section member and former General Counsel at the USPTO, was named as a new member of PPAC.
Once again the Section joined with several other IP organizations in sponsoring the annual USPTO Design Day, which this spring looked at “What’s Next for Design Patents?”
ABA-IPL joined with the Colorado Bar Association to cosponsor its 34th Annual National CLE Conference in Snowmass in January and the 15th Annual Rocky Mountain IP & Technology Institute in June in Westminster, Colorado.
ABA-IPL continues to participate as a founding partner of the American Intellectual Property Law Educational Foundation (AIPLEF), whose mission is to increase the diversity of the IP bar by providing scholarships and mentoring to underrepresented minority law school students pursuing careers in IP law. The foundation was formed in 2001 in partnership with the ABA-IPL Section and the American Intellectual Property Law Association (AIPLA), the Minority Corporate Counsel Association, and founding corporation Johnson & Johnson. A partnership with the Thurgood Marshall College Fund also was established to assist in administering the foundation’s scholarship program through publication and processing of scholarship applications and initial review of the applications. AIPLEF awards the Sydney B. Williams scholarship to assist underrepresented minority law students entering intellectual property law. Its Jan Jancin Award is presented annually to an outstanding IP law student.
The ABA-IPL Section hosts five active affinity action groups: Law Student Action Group (LSAG), Young Lawyers Action Group (YLAG), International Associates Action Group (IAG), Diversity Action Group (DAG), and Women in IP Law Action Group (WIP). Members of these groups work to coordinate activities of unique demographics and further interest and activity among their natural constituencies.
In its inaugural year, the Women in IP Law Action Group (WIP) has grown to nearly 400 members. This year its meetings featured a conference call series with distinguished speakers including Kenya N. Wiley, Founder and CEO of the Fashion Innovation Alliance; Linda A. Klein, President of the American Bar Association; Alica Del Valle, Senior IP and Marketing Counsel of Airbnb; Professor Jane Ginsburg of the Columbia University School of Law; Wynn Coggins, Deputy Chief Administrative Officer of the USPTO; and the Honorable Kara Fernandez Stoll of the US Court of Appeals for the Federal Circuit.
The Section continues to cosponsor the annual Judicial Intern Opportunity Program (JIOP) with the Section of Litigation. The program provides diverse students who are traditionally underrepresented in the profession with full-time, six-week summer internships with state or federal judges. This year JIOP placed 148 first – and second-year law students with 130 judges across the country: 25 judges indicated an interest in reviewing students with IP backgrounds; 19 students were selected and placed with IP judges, including some in new positions on the federal bench.
This was the twelfth year of the ABA-IPL Young Lawyer Fellows Program. The program selects two young lawyers each year for three-year terms and provides them with funding and opportunities to develop into future leaders of the Section. New fellows selected this year are Pervin Taleyarkhan of the Whirlpool Corporation and Jennifer McCollough of the US Department of Justice.
The ABA-IPL Section expanded its commitments toward public outreach and public service initiatives this year. Its focus on education, action, and financial commitment toward select work that promotes an understanding, awareness, and appreciation of IP law continues to bring distinction to the Section’s volunteers. A public service project this year took place at the Margaret Pace Park in Miami, Florida, where both Section members and staff helped collect trash from the waterfront.
ABA-IPL Book Publishing continues to grow, with 50 titles including the debut of a treatise on Copyright Litigation Strategies. Landslide® magazine, the Section’s high-profile flagship periodical, is entering its tenth year of publication.
In the spring, ABA-IPL’s 32nd Annual Intellectual Property Law Conference was highlighted by a wide range of comprehensive CLE programs as well as events and opportunities to network with experts, colleagues, and potential clients from around the world.
The 2017 Mark T. Banner Awards honored three distinguished recipients: Judge Lucy H. Koh, Dr. Kate Darling, and Don W. Martens.