Perspective

Perspective: Lists Are Everywhere, and They Can Matter

By Mark K. Dickson

Published in Landslide Vol. 11 No. 4, ©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.

From the weekly shopping list to the daily to dos, the world revolves around lists. Who hasn’t read one or more “top tens” on their browser: music hits of 2018, fastest ways to lose weight in the new year, greatest college football teams of all time.

Most lists are merely practical or mildly informative, but some of these collections can have profound and positive effects. Consider the safe surgery checklist developed by Harvard Medical School’s Dr. Atul Gawande, which was first implemented in eight hospitals worldwide as part of a 2008 study. As a result, post-surgery death rates were reduced in those facilities by 50 percent.1 Today, the safe surgery checklist is used around the world.

Other lists may not always turn out as well or as hoped. In 2018, the U.S. Chamber of Commerce released its latest annual International IP Index, dropping the United States from tenth to twelfth place on its list of worldwide patent systems.2 This kind of listing cannot be ignored or tolerated, especially for a patent system that handles more than half a million applications a year and just issued its 10 millionth patent in 2018.

The new Director of the U.S. Patent and Trademark Office (USPTO), Andrei Iancu, may not have acted because of this collected data, but he did make positive changes in USPTO procedures throughout the latter half of 2018 that were designed for improvements. In July, Director Iancu announced new measures for handling patent eligibility decisions during application examination. In September, the Director made changes in operating procedures at the Patent Trial and Appeal Board (PTAB), including an increase in the number of precedential decisions. In October, he announced a new claim construction standard for trials under the America Invents Act before the PTAB. And in November, he unveiled new claim amendment procedures during PTAB trials and a redesigned home page for the USPTO website. These initiatives in support of the Director’s overall goal of consistency, predictability, and transparency of the patent examination process should elevate the U.S. patent system in the Chamber of Commerce ranking in its next International IP Index.

Our Section spoke in favor of many of the initiatives that Director Iancu implemented throughout 2018. We lobbied in favor of the new claim construction standard at the PTAB and in support of the new procedures for claim amendments during PTAB trials. We advocated to sustain long-term growth and stability in the patent system and as necessary for improvements in the quality of issued U.S. patents. The Section also weighed in on improvements at the USPTO with new requirements for electronic filing and efforts to reduce fraud in registrations. ABA-IPL further approved remarks for Congress in favor of changes to the Lanham Act to permit government agencies to register logos and insignia for trademark protection.

The developments we monitored and the improvements we helped further were not solely those related to the USPTO. The Copyright Office has seen major new legislation in the last year, and more change is in place for this coming year. ABA-IPL supported the Music Modernization Act, which was passed without opposition by Congress in September, as a welcome update for music licensing and royalty issues through the Copyright Office. We also advocated in favor of an autonomous Copyright Register and more recently for modernization of Copyright Office technology systems.

With a new Congress just now in place, the ABA-IPL Section is hard at work with our substantive committees and Council to help effect further progress throughout the IP system. To do so, we are starting our own new lists.

Endnotes

1. Elijah Wolfson, The Most Screwed-Up Employee Perk in America (and the Man Who Just Might Fix It), Quartz at Work (Dec. 10, 2018), https://qz.com/work/1481224/the-most-screwed-up-employee-perk-in-america-and-the-man-who-just-might-fix-it/.

2. U.S. Chamber of Commerce Glob. Innovation Policy Ctr., Create: U.S. Chamber International IP Index (6th ed. 2018), http://www.theglobalipcenter.com/wp-content/uploads/2018/02/GIPC_IP_Index_2018.pdf.

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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.