FacebookLinkedinTwitter

IPOwners Quarterly™ 09/30/2020

/IPOwners Quarterly™ 09/30/2020
IPOwners Quarterly™ 09/30/2020 2020-09-30T18:07:46-04:00

IN THIS ISSUE…

Jessica Landacre

Executive Director’s Welcome Message – Review of the Virtual Annual Meeting

Welcome to the third issue of the IPOwners Quarterly™.  Historically, the IPO Annual Meeting is a vibrant, much-anticipated event where old friendships are nurtured and new ones are made.  I feared that the transition to a virtual format this year would cause us to lose the sense of community that so many of us have valued over the years. I was delighted to see that was not the case.  The fellowship that exists among IPO members continued in less than ideal circumstances. Moreover, our community expanded to include members who have never participated in the meeting until this year.  All in all, an excellent outcome.

The 2020 IPO Annual Meeting was the first all-virtual conference in the association’s history, with a record 1,726 attendees. The IPO community came together for four days of live, simulated-live and on-demand educational sessions on patents, trademarks/copyrights, industrial designs, and operations. There was a lot that was new for the IPO Annual Meeting this year. Not only was this the first all-virtual conference, it was the first with four concurrent tracks, the newest one focused on IP department operations, attracting the second highest attendance! IPO’s professional committees held workshops that transitioned into networking sessions. These sessions were well-received and generated productive conversations and sharing of best practices about how to improve business and professional development. Additionally, I was delighted to hear that many enjoyed the networking experience and said it exceeded expectations, offering a much needed and enjoyable opportunity to connect with colleagues.

The significantly reduced registration fee this year in acknowledgment of the virtual format and the economic challenges organizations are facing attracted new demographics.  More attendees from outside the U.S. participated as well as attorneys who might not have otherwise been approved for travel to the in-person annual meeting. These diverse perspectives were reflected in the richness of the dialogue throughout the meeting. Overall, while many of us were disappointed that we were not able to meet in person, the first virtual IPO Annual Meeting demonstrated, once again, that the IPO community is strong and comes together whatever the circumstances. If you were registered for the meeting but missed some sessions, or if you would like to register now to view sessions on-demand, both are possible until October 31 (CLE deadline is October 9).  I am pleased to share with you select highlights of some of the content delivered by the excellent speakers at the 2020 Virtual Annual Meeting.

The conference began with opening keynote addresses from EPO President António Campinos, USPTO Director Andrei Iancu, and JPO Commissioner Kasutani Toshihide, addressing the operations of their respective Offices, including actions taken in response to the COVID-19 pandemic.  The conference ended with an interesting closing address by Poppy Crum, Chief Scientist at Dolby Laboratories who spoke about the future of empathetic technology, which uses machine learning and artificial intelligence to collect data about and respond to our emotional and physical states.  She said that empathetic technology “will transform the relationship we have with each other, and with the spaces where we work, train, heal, and live” by enabling this personalization.

Committees hosted workshops that allowed for interaction and real-time discussion with the audience. IPO’s Diversity & Inclusion Committee hosted a How to Be a Better Ally for Diversity & Inclusion Workshop, which was so popular that we have received requests to package the discussion with other content from the Committee’s newly released Practical Guide to Diversity and Inclusion in the Legal Profession, as a series on the IP Chat Channel™. The Women in IP and Next Generation Leaders Committees hosted a workshop on Lessons in Leadership, discussing issues ranging from leadership styles and achieving leadership success to budget management. The Women in IP Committee also hosted a presentation and networking event featuring former USPTO Director, Michelle Lee who gave advice about achieving professional goals and taking advantage of the increased value of diverse perspectives in the workplace. The Patent Litigation and Corporate IP Management & Operations Committees hosted a workshop on Effective Communication Between In-House and Outside Counsel where they discussed challenges that IP attorneys face in communicating when dealing with complex legal and technical subject matter. The Corporate IP Management & Operations Committee also debuted two new tools called Chief IP Counsel in a Box and How to Speak to the C-Suite and shared preliminary results from the 2020 Corporate IP Management Survey.

IPO President Dan Staudt presented several awards including the Carl B. Horton Distinguished Service Award to Sandra Nowak, Chief IP Counsel of 3M’s Consumer Business Group, for her contributions to moving the needle toward gender parity by leading a committee in developing the Gender Diversity in Innovation Toolkit.  Ms. Nowak is the first female to receive this prestigious award.  Mr. Staudt also presented the Outstanding Committee of the Year Award to the Asian Practice Committee for preparing extensive comments on the many different IP law proposals that have been issued by the People’s Republic of China. The leadership of this Committee includes Jimmy Cheng (Qualcomm Inc.) and Hsin Lin (Exxon Mobil Corp.), Brad Chin (Bracewell LLP), Michael D’aurelio (Thomas|Horstemeyer, LLP), Robert Siminski (Harness, Dickey & Pierce, P.L.C.), and Kurtis Macferrin (Google Inc.). Congratulations to all!

And finally, this Annual Meeting was fortunate to have the participation of our loyal sponsors and exhibitors without whom we could not have had such a successful event. A hearty thanks for your support.

It is unclear what the future brings for the return of in-person conferences. However, I can say with certainty that IPO will continue to bring this extraordinary community together in some manner.  We have learned that we can be effective convening virtually and will likely find ways to incorporate more virtual access for education and networking moving forward – including as a part of what we hope is an in-person 2021 IPO Annual Meeting in Austin, Texas. Thank you to all of you who attended this year; it was wonderful to see you if even just virtually. I look forward to reconnecting with you at the IPO Education Foundation’s 20th Anniversary and Awards Celebration on December 8-10, 2020.

IPO Education Foundation to Hold 20th Anniversary and Awards Celebration December 8-10

IPO Education Foundation is pleased to announce a new format for its 20th Anniversary Awards Dinner. This year, to protect the health and safety of the community, we will hold a free virtual event December 8-10 rather than an in-person gala. The event will celebrate IPO Education Foundation’s 20-year history educating the public on the importance of intellectual property protections and will feature educational sessions and networking opportunities. IP experts from across industries will discuss topics such as how intellectual property incentivizes innovation and how it is being leveraged during the pandemic as well as how IP has changed over the years to capture new innovations. Additional sessions feature the 2020 honorees:

Executive of the Year, Ken Frazier, CEO of Merck & Co. Inc.
Ken Frazier will give a keynote address about diversity in innovation as well as the importance of intellectual property education to build a diverse workforce in IP and innovation.

Distinguished IP Professional, The Hon. Judge Kathleen O’Malley, U.S. Court of Appeals for the Federal Circuit
Judge Kathleen O’Malley, explores how the pandemic has changed the courts and what she sees in store for the future. She will also provide insight into how to successfully present your case in the new virtual environment.

Inventor of the Year, Pat Brown, CEO of Impossible Foods
Pat Brown will share why he decided to make a career change and start Impossible Foods and how he is positively impacting the environment with his plant-based meat products.

Full program details are available at IPOEF.org. Stay tuned for registration information. You can Support IPO Education Foundation by donating or becoming a sponsor of the 20th Anniversary and Awards Celebration. For more information about sponsor opportunities, contact Kristen Lurye, klurye@ipo.org or 202-507-4502.

3rd Quarter 2020 Update on U.S. Intellectual Property Policy Developments

Samantha Aguayo

By Samantha Aguayo, IPO Deputy Executive Director & Chief Policy Counsel

Since the last issue of the IPOwners Quarterly™ was published on June 30, there has been an uptick in IP policy activity even as the pandemic has significantly changed the way the U.S. Congress, USPTO and other administrative agencies, and the rest of us conduct business.

USPTO 

The issue most likely to impact IPO members most immediately is patent fee increases due to take effect on Friday, October 2. On August 3, the USPTO published in the Federal Register the final rule setting patent fees for fiscal year 2021. The notice indicates that the final rule incorporates stakeholder feedback and that implementation was delayed in light of economic fallout of the coronavirus pandemic. Two significant changes to the final rule include the elimination of a proposed Annual Active Patent Practitioner fee and the postponement of a $400 surcharge for non-DOCX filings. IPO is especially pleased about both of these omissions, having stressed the organization’s significant concerns about both in written comments and discussions with USPTO officials. We appreciate that the USPTO took our feedback into consideration.

The USPTO is also in the process of adjusting trademark fees. At the end of June, the agency published a notice of proposed rulemaking in the Federal Register.  The proposed fee adjustments are based on the same assumptions concerning revenue and workload as a 2019 proposal discussed in a September 2019 public hearing by the Trademark Public Advisory Committee, but the notice explains that circumstances have changed since the last year. Specifically, “fee collections have been lower than anticipated, in part due to lower than expected application filings as a result of the COVID-19 outbreak, and the assumed implementation date [of August 2020] is no longer accessible.” The notice states that “[w]ithout the proposed fee adjustments … budgetary requirements would exceed revenues and available operating reserve balances beginning in FY 2022 through FY 2025.” IPO submitted written comments on August 3.

The USPTO committed to “consider the state of the U.S. economy, the operational needs of the agency, and public comments” before the final rule is issued. As of today, the proposed rule has not been published, meaning the earliest new fees would take effect is around the beginning of December.

U.S. Copyright Office 

On September 21, the U.S. Library of Congress announced the appointment of Shira Perlmutter to be the next Register of Copyrights and Director of the U.S. Copyright Office. Perlmutter, a longtime friend of IPO, most recently was Chief Policy Officer and Director for International Affairs at the USPTO, where she was responsible for all areas of intellectual property including copyrights. She was Associate Register for Policy and International Affairs at the U.S. Copyright Office from 1995-99 in addition to holding positions in the private sector.

Maria Strong has served as Acting Register since January of this year. With Perlmutter’s appointment she will return to her previous role of Associate Register for Policy and International Affairs.

U.S. Congress 

Over the past three months, the House and Senate Judiciary Committees renewed their focus on IP legislation.

On September 10, the House Judiciary Committee approved H.R. 6196, the Trademark Modernization Act of 2020 by a majority vote. The bill will codify the USPTO’s practice of accepting third-party submissions of evidence during trademark examination, give the USPTO the authority to set flexible response periods for office actions, and create two new post registration proceedings to remove marks from the register on the basis of non-use. An expungement proceeding will allow third parties to petition to remove a mark from the register on the basis that it has never been used in commerce in connection with some or all of the goods or services recited in the registration. A reexamination proceeding will allow third parties to petition to reexamine a registration on the basis that the mark was not in use in commerce in connection with some or all of the goods and services recited in the registration on or before the relevant date.

The bill would also codify a rebuttable presumption of irreparable harm for plaintiffs seeking injunctive relief upon a finding of infringement. Finally, the bill includes a section titled “Amendments to Confirm the Authority of the Director,” which clarifies the USPTO Director’s authority “to reconsider, and modify or set aside, a decision of the Trademark Trial and Appeal Board.” It aims to resolve concerns about whether the Federal Circuit’s Arthrex opinion, which found that Patent Trial and Appeal Board judges were principal officers whose appointments by the USPTO Director violated the U.S. Constitution’s Appointments Clause, similarly applies to TTAB judges.

A video of the markup is available on the Judiciary Committee’s website. The bill will be reported favorably to the full U.S. House of Representatives for a vote. It is also expected to be considered by the Senate Judiciary Committee.

On the copyright side, Senate Judiciary IP Subcommittee Chairman Thom Tillis (R-NC) continued the series of hearings he is holding in anticipation of drafting legislation to modernize the DMCA for todays’ internet by December 2020. On June 2nd, the Senate IP Subcommittee held the third DMCA hearing titled “Is the DMCA’s Notice-and-Takedown System Working in the 21st Century?” On July 28th, they held the fourth DMCA hearing titled “How Does the DMCA Contemplate Limitations and Exceptions Like Fair Use?” On September 16th they held the fifth hearing titled “Are Reforms to Section 1201 Needed and Warranted?”

Also, the fate of the Copyright Alternative in Small-Claims Enforcement Act of 2019 (CASE) Act (H.R.2426/ S.1273) hangs in the balance. The bill would establish a voluntary small claims tribunal operating under the U.S. Copyright Office, called the Copyright Claims Board. It passed in the House by a 410-6 vote on October 23, 2019. The bill, which has 20 Senate cosponsors, is stalled in the upper chamber due to a hold by Senator Ron Wyden (D-OR).

With the recent death of U.S. Supreme Court Justice Ruth Bader Ginsburg, the outlook for IP legislation takes on a new challenge because a Supreme Court nomination will be the main item on the Senate’s agenda through October. President Trump has already nominated 7th Circuit judge Amy Coney Barrett to fill the position. Lindsay Graham says his Senate Judiciary will begin on October 12 with introductions, followed by two days of questions, with a markup on October 15. They’ll report out the nomination on October 22, and then it’s up to Senate Majority Leader Mitch McConnell to set the schedule for a floor vote. McConnell says he will vote before the election.

In the House of Representatives, Majority Leader Steny Hoyer’s schedule indicates that Friday, October 2 is the last legislative day before the election. This week House Democrats are negotiating with the White House concerning the updated version of the HEROES Act, a $2.2 trillion stimulus package, that House Dems unveiled this week. This is likely to be the last thing they do this week before leaving town to campaign.

The best hope for getting any IP legislation enacted before this session of Congress ends is during a lame duck session. The government funding bill passed last week expires on December 11, so Congress will need to convene at least a brief lame duck session to deal with that. What else they will take on is, in my professional opinion, anybody’s guess.

U.S. IP Case Law Roundup

Eric Moran and Paul Berghoff

by Eric Moran, McDonnell Boehnen Hulbert & Berghoff LLP and IPO Amicus Brief Committee Co-Vice Chair Paul Berghoff, McDonnell Boehnen Hulbert & Berghoff LLP

The recent IPO Annual Meeting was a virtual success!  Though most of us would have preferred a live get-together in San Diego, we will have to wait to meet next year in Austin.  In the meantime, IPO demonstrated that a virtual meeting can provide a full plate of informative panels and a good level of networking.  Bravo to the program committee, the IPO staff, and all of the panelists!

The second quarter of 2020 saw a veritable explosion of Supreme Court cases in intellectual property.  By contrast, the last three months have been considerably quieter with the Court’s decision in Booking.com being its only recent IP decision.  Booking.com was a much-anticipated opinion on what it means for a trademark to be generic.  The specific issue was whether an online business’s addition of a generic top-level domain (i.e., “.com”) to an otherwise generic term can create a protectable trademark. The Court declined to impose a per se rule, as urged by the U.S. Patent and Trademark Office (“USPTO”), and instead affirmed the Fourth Circuit, holding that “[w]hether any given ‘generic.com’ term is generic … depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”  The Supreme Court went on to affirm the district court’s prior holding that “Booking.com” was not generic.

Justice Ruth Bader Ginsburg authored the Court’s opinion in Booking.com.  Sadly for all of us, this will be her last opinion in intellectual property law.

While there was radio silence from the Supreme Court on patent issues, the Federal Circuit has kept busy.  In the realm of section 101 patent eligibility, the appellate court has taken a step forward and a step back.  (We will let the reader decide which is which, beauty being in the eye of the beholder after all.)

In American Axle v. Neapco, the Federal Circuit addressed American Axle’s petitions for rehearing and rehearing en banc based on a panel decision affirming patent ineligibility.  The petition for rehearing en banc was denied in an evenly split 6-6 decision, with Judges Moore, Newman, Stoll, O’Malley, Reyna, and Lourie favoring rehearing and Judges Dyk, Taranto, Wallach, Chen, and Hughes (along with Chief Judge Prost) going the other way.  In a rare and interesting twist, the petition for rehearing was granted and a modified opinion was issued that actually changed the outcome.  The panel majority had originally found both independent method claims ineligible, but now reversed direction on one of those claims, remanding it to the district court (the “positioning” claim being resurrected, at least temporarily, while the “inserting” claim remained dead.)  Stay tuned for future applications of section 101 to the mechanical arts.

In Illumina v. Ariosa, the Federal Circuit had reversed the district court’s summary judgment of ineligibility for a method of analyzing fetal DNA in maternal blood samples.  In response to Ariosa’s petition for rehearing, the panel majority issued a modified opinion that reached the same result (the claims were patent-eligible), but with a beefed-up analysis.  As noted in the modified opinion, “the claimed [DNA] size thresholds are human-engineered parameters that optimize the amount of maternal DNA that is removed from the mixture and the amount of fetal DNA that remains in the mixture in order to create an improved end product that is more useful for genetic testing than the original natural extracted blood sample.”  Perhaps this will provide a path forward for claiming inventions in the medical diagnostic field.

Other recent Federal Circuit decisions include: 

  • In re Google.  Venue in Texas (where else?) can be plausibly established by an agent’s regular and established business.  In this case, the agent was responsible for refurbishing Google Pixel phones. 
  • Uniloc 2017 v. Hulu.  The Federal Circuit held that the PTAB can assess the patent eligibility of amended claims proposed in an IPR. 
  • In re Boloro Global.  The Federal Circuit extended Arthrex unconstitutionality to ex parte proceedings before the PTAB. 

Coming attractions that may yet play out during the remainder of this year include: 

  • Will the Supreme Court grant certiorari in Arthrex? 
  • How will the Supreme Court address the important copyright issues at stake in Google v. Oracle (set for argument on Wednesday, October 7, 2020)?

Everyone please stay safe until we can meet again. 

IPO Launches new IPO CONNECT featuring OPEN FORUM

This month IPO launched a new version of IPO Connect featuring a collaborative Open Forum for all IPO Members. Any IPO member can post a question or topic to the forum and get feedback from thousands of IPO members.

Here are a few conversations happening now on IPO Connect:

Speaking the Language of the C-Suite – A follow-up on the Annual Meeting panel featuring the resource created by the IPO Corporate IP Management Committee.

Markush Rejections – Posted by IPO Member Erin Dunston with seven responses from IPO members.

Jury trials in SEP/FRAND Matters – Posted by Kenneth Adamo with five responses from IPO members.

Get started on IPO Connect today by completing your profile!  Need help getting started? Email  connecthelp@ipo.org.

IPO Offers Corporate Mentoring Program

In the spring IPO launched a corporate mentoring program. Round one had twenty five pairs of mentors and mentees and lasted six months. Read below what IPO members are saying about their experience in the new mentoring program:

  • “It has been an absolute pleasure working with my mentee, sharing the insights and knowledge that my own mentors shared with me.  I’ve always believed a rising tide lifts all boats, and I’m happy any time I have a chance to pay it forward.” — Jason Skinder, Honeywell International Inc.
  • “The biggest boon to me has been the different perspective my mentor has. So much of what we do on a daily basis is colored by our corporate processes, and discussing the benefits and limitations of those processes invites critical thought about issues that can be dismissed as “the way we’ve always done it” internally.” — Alex Bridge, Hewlett Packard Enterprise
  • “I am enjoying serving as a mentor.  My mentee is now a friend, and it has been great to develop an authentic relationship with colleagues at a different corporation.” — Denise DeFranco, Johnson & Johnson
  • “The program is a great opportunity to meet likeminded professionals of other industries and other continents. For me the videocalls with my mentor have been very enriching on a personal and professional level. It was awesome to share internal issues/challenges with another and more senior professional that has no ties to your own company. I can only recommend it highly and will definitely be happy to keep in contact with my mentor also past this program.” – Anonymous participant

To apply for round two of the corporate mentoring program, click here.

Calling the Next Generation of IP Leaders!

Kirsten Donaldson

By IPO Next Generation Leaders Committee Vice-Chair Kirsten Donaldson, The Donaldson Law Group

What is the definition of leadership?  How does one become a GREAT leader?  And how can someone lead from within a team without the title of “leader”?  These “Lessons in Leadership” and more were discussed recently at the IPO Annual Meeting by notable leaders in intellectual property law in a panel session designed by the IPO Next Generation of Leaders Committee and the IPO Women in IP Committee.

For those who registered for Annual Meeting but missed the workshop, it’s not too late to check it out via the meeting platform!  And if you’re curious about how to be a better leader, we welcome you to join the IPO NGL Committee to continue the conversation. (To join the committee, click here.)

NGL Committee members include a range of leaders from those currently leading within teams, to those leading IP Departments.  The mission of the Committee is to promote, foster, and engage that next generation of leaders in IP law who will shape the field over the next 15-25 years.  We hear regularly from leadership experts across the IP community and discuss timely leadership issues — while also recognizing that being a good leader also means maximizing time management effectively.

The following list of leadership resources is designed to inspire budding leaders, regardless of whether you have 10 minutes to listen to a podcast or a few hours to read one of the recommended books.

We hope you enjoy these materials and we hope you will join the accomplished Committee of Next Generation IP Leaders within IPO to continue the discussion.

TED Talks/Podcasts

Articles:

USPTO

Books:

IPO Volunteer Profile – Elizabeth Lester (Equifax)

Elizabeth Lester, Equifax

Elizabeth Lester is the de facto head of IP and the only IP attorney at Equifax, where she works with the global business on building and implementing a strategy for protecting IP and reducing IP risks. This involves everything from educating the business about IP and its importance, working with innovative teams to identify and protect patentable inventions, clearing new product names, and collaborating with commercial legal, security, and technology teams on various cross-functional efforts.

Elizabeth is an active member of IPO’s Corporate IP Management & Operations Committee and IPO’s Membership Committee. She was a speaker at IPO’s 2020 Annual Meeting and previously served a two-year term on IPO’s Board of Directors and will begin another two-year term on January 1, 2021.

How did you get involved with IPO? 

I first became involved with IPO as a young associate at the encouragement of a partner I worked with. I began participating in committee meetings and quickly learned that volunteering to work on committee projects provided me with a unique opportunity to leverage the amazing IPO network and learn about IP from the corporate members. This led to opportunities to take on committee leadership positions and, ultimately, the Board of Directors when I moved in-house.

What do you get the most out of through your involvement in IPO?

The opportunity to network and benchmark with other IP attorneys, particularly in-house attorneys, is probably the most important benefit to me. This is followed closely by the amazing programming that is driven by IP owner needs!

What would you say to someone with a small in-house team who is considering joining IPO?

Many IP attorneys mistakenly believe that the value of IPO is directly correlated to the size of the in-house team. In my opinion, the reverse is true! Being in a small team means that each person likely is acting more as an IP generalist than IP specialist. It also likely means that if your business has a government relations team, it likely is not focused on IP issues impacting your company. IPO provides small IP teams with access to programming, networking, and other resources that can help a small team better manage all types of IP issues it may encounter, including an active government relations team that works with IP organizations and agencies around the world to harmonize and strengthen IP rights!

What is your advice for a new IPO member looking to get involved?

Join a committee and be involved. The committees are the rooms where it happens and are always looking for members that want to participate and help with different projects. There are never enough new ideas and volunteers!

What is the best advice you ever received?

Be authentic. A leadership program I participated in years ago taught me the importance of staying true to myself. This has led to some extraordinary friendships, personally and professionally!

Outside of IPO, what’s something that you’re passionate about?

Disney (I love Mickey Mouse!), family, and the Leukemia & Lymphoma Society’s Team in Training. The first two are self-explanatory. The third combines my passion for funding research for a cure for cancer with the motivation to stay physically active by slowly run/walking marathons and half-marathons.

Thanks to Elizabeth for sharing her wide range of experiences with IPO. If you are interested in finding out more about how we serve in-house IP departments large and small please contact Matt Rankin, IPO’s Director of Membership Development at mrankin@ipo.org. He will be happy to show you how our corporate members are connecting with each other to share ideas and best practices and benchmark their operations.