Perspective: You Cannot Step in the Same River Twice

By Mark K. Dickson

Published in Landslide Vol. 11 No. 3, ©2019 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.

Heraclitus, a Greek philosopher who lived around 500 BC, is recognized as the first person to coin the phrase “change is the only constant in life.” Nothing is forever, and transformation is universal. Whether any particular change is necessarily good or bad may be debatable, but regardless of whether you are prepared for it or not, change is always just around the corner.

Intellectual property (IP) law itself has changed significantly over the last 50 years. Some may argue that much of the change has only been incremental but, like financial interest, change is often cumulative: compounded over 50 years, it still adds up to a lot. In addition, the major shifts in the law that occur infrequently, like the 2011 Leahy-Smith America Invents Act (AIA), the 2017 U.S. Supreme Court decision in TC Heartland on patent venue, and the 2017 Matal v. Tam case on disparaging trademarks, have long-term effects. And the resulting collective changes on IP law are major.

The ABA-IPL Section has long played an active role in advocating for legislative change and influencing judicial decisions on IP law. The Section’s recommendations contained in its White Paper: Agenda for 21st Century Patent Reform helped lead to the AIA, the first major revision of patent law in decades and legislation having the most significant impact on patent practice since 1952. ABA-IPL has continued to provide substantive recommendations and to work with the United States Patent and Trademark Office (USPTO) on implementation and improvements in the procedures that govern the AIA inter partes review (IPR) proceedings and general patent application examination. Most recently, since this August, the Section provided comments to the USPTO on determining whether a claim element is well understood, routine, or conventional for purposes of subject matter eligibility, as well as comments on the draft USPTO 2018–2022 Strategic Plan. The Section also wrote to the House and Senate Judiciary Committees calling for renewal of the USPTO fee setting authority and provided comments and testimony to the Patent Public Advisory Committee hearings on the new proposed patent fee schedule.

ABA-IPL activities are not limited to issues of patent law. Just recently, the Section joined with the ABA’s Antitrust Section to submit comments on IP issues to the Federal Trade Commission (FTC) in advance of the FTC Hearings on Competition and Consumer Protection in the 21st Century. ABA-IPL also provided comments to the USPTO concerning changes to the Trademark Rules of Practice to mandate electronic trademark filing, and to the American Law Institute on the Restatement of the Copyright Law. This September, at the recommendation of the Section, the ABA filed an amicus brief in the U.S. Supreme Court in Fourth Estate Public Benefit Corp. v., LLC on the issue of when a copyright registration claim has been made for purposes of filing a copyright infringement litigation.

More changes are around the corner for IP law in 2019, and we don’t know yet if they will be small adjustments or big developments. By the time this column is published, the United States will have elected a new Congress that will include a cadre of returning faces and a whole crop of new ones. Regardless of which party emerges victorious in the election shuffle, there will be new committee chairs in both the House and Senate Judiciary Committees, which have primary jurisdiction over IP law. Well-known friends of IP law in Congress are retiring, and new members, hopefully just as friendly, will take their place. New leadership means new priorities, concerns, initiatives, and focus. And the new U.S. Supreme Court will be halfway through its current term, which will address several IP matters.

Despite the political strife that generally accompanies elections, intellectual property remains one of the last few truly bipartisan areas of concern in Congress. The AIA, Hatch-Waxman Act for generic drugs, and nearly unanimous passage of the Music Modernization Act in September are examples of successful bipartisanship. The stakes for our economy and business consequences that ride on IP legislation and litigation continue to increase. Senators and representatives from both sides of the aisle have always found common ground to work together to achieve a better system of IP laws, with long-term benefits for the economy and its constituents. Hopefully, this bipartisan process will continue. But only one thing is truly certain: change itself.

Mark K. Dickson is chair of the ABA Section of Intellectual Property Law. As solo practitioner and principal of Phase M Legal in San Mateo, California, he specializes in portfolio development and evaluation, risk assessment, licensing, and litigation avoidance for a wide range of technologies, including plant patent matters.