IPOwners Quarterly™ 12/17/2020

/IPOwners Quarterly™ 12/17/2020
IPOwners Quarterly™ 12/17/2020 2020-12-17T13:46:13-05:00

IPO President Daniel Staudt

President’s Welcome Message – Celebrating YOU, the IPO Member

Thank you for reading the fourth and final IPOwners Quarterly of 2020. It is my pleasure to begin this issue by thanking each member for the trust you have placed in me to lead IPO. I never would have imagined that my term would include a pandemic that would change not what we do but how we do it. Looking back over my first year as IPO President, so much has happened that it is hard to know where to begin. I think we can all agree that this year has been a major rollercoaster. We have all done a great job adjusting. But I want to take this time to be clear that the key component of IPO’s success amid this pandemic has been the support and dedication of you, the IPO member.

The year started, as usual, with ambitious plans to be better than the last, looking forward to the IPOwners Spring Summit™, Asian Dialogue Trip, and of course the IPO Annual Meeting in sunny San Diego. Fate had other plans, and the Covid-19 pandemic created uncertainty about what the year would bring. Dealing with workload, worrying about the health of my work colleagues, the IPO staff, family, and friends, and juggling countless other daily pressures was taxing, but did not lessen resolve. We all adjusted by adopting innovative new technologies that enabled us to meet virtually for board meetings, the annual meeting, and committee calls, and that allows us to continue to network with our IPO colleagues.

Together we have continued the advocacy activities IPO is known for, frequently engaging with offices on Capitol Hill and the USPTO and remaining actively involved in discussions concerning international harmonization. Internally, IPO created this new IPOwners Quarterly publication to provide in-depth analysis of developments and you submitted content to help increase what it and the IPO Daily News™ have been able to cover.

You, the IPO membership, also took advantage of the more abundant webinars IPO facilitated to share information and help our members keep up with their CLE requirements. Throughout the year, you participated in and attended groundbreaking IP Chat Channel™ webinars including a free series that explored the impact of the pandemic on IP law and our profession. The Women in IP Committee continued holding quarterly calls, and the D&I Committee released its Practical Guide to Diversity and Inclusion in the Legal Profession and organized webinars to examine its recommendations.

There are countless ways IPO members rallied, but none quite like the fight against Covid-19. IPO was delighted to applaud member companies that donated time, money, and resources to help combat the deadly disease in the Daily News and in a video released in celebration of Labor Day in the U.S. These contributions proved the importance of innovation and the intellectual property system to position us to respond quickly to emerging problems, and what can happen when we all work together for the greater good.

Another way you came together was for the 2020 IPO Annual Meeting, which was held virtually for the first time in IPO history. A record 1,726 attendees gathered over four days for unique networking events and educational sessions exploring timely and relevant IP topics. We added interactive workshops on Women in IP and D&I as well as a new IP operations track, which were well-received additions.

This year marked the 20th anniversary of the IPO Education Foundation. The Foundation is going strong because of IPO members and donors who gave both time and funding to help us provide free IP educational programs and events for our future innovators. The Foundation’s Stroke of Genius® podcast had its best year yet, kicking off its second season with an episode about Covid-19 and reaching over 50,000 listeners in over 115 countries. The Education Foundation ended the year with its Virtual 20th Anniversary and Awards Celebration. You again showed support and kept the spirit of this special annual occasion alive despite our inability to gather in person this year. IPO is delighted that its Education Foundation was able to honor Distinguished IP Professional Kathleen O’Malley; Executive of the Year Ken Frazier; and Inventor of the Year Pat Brown during the three-day virtual celebration.

As I look back on 2020, I am proud of the many ways we all adjusted to maintain IPO’s position as a leader in the IP community. I am very proud of and thankful for our professional staff’s grit, can-do attitude, ability to pivot to completely new formats, and maintain the excellent events, benefits, and service for which they have become known. I am proud of how the IPO Board and staff were intentional about providing more value to members and creating opportunities to connect with colleagues in the IPO community, which will continue; stay tuned for additional benefit announcements in upcoming editions of the Daily News. Primarily, I am proud that despite great adversity and uncertainty, IPO has proven that it has the strength and stamina to remain steadfast to its mission to represent IP owners around the globe.

Looking ahead to 2021, we begin with that same vision to improve and address the issues our members face. IPO has a new mission to promote high quality and enforceable intellectual property rights and predictable legal systems for all industries, technologies and strategic priorities to shape the future of IP and foster diverse engagement. With new mandates to help increase diversity in the IP profession and broader innovation ecosystem, and to reach underrepresented groups with IP education, IPO and the IPO Education Foundation plan to leave even bigger marks on the IP landscape in the new year and to bring more people along for the ride. I am happy we are all working together toward to this goal. I wish you and your families a safe, healthy, and happy holiday season and a prosperous new year. Prosit! to 2021.

U.S. Intellectual Property Policy Developments

Samantha Aguayo

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

2020 has been a heck of a year. When we set out to create this publication in January, we had no idea this year would be so extraordinary. Nevertheless, the U.S. Congress, USPTO, and other government agencies continue to evaluate and address important issues of intellectual property law and policy.

Congress is running down the clock on its 116th session, but several IP measures may still be enacted into law before Congress adjourns. Three different IP bills are still under serious congressional consideration.  The first is the Trademark Modernization Act (TMA), which was reported out of the House Judiciary Committee in September.  It codifies the current USPTO practice of accepting third party submissions during trademark examination. It also creates two new post-registration review proceedings at the USPTO and clarifies the USPTO Director’s authority to re-consider decisions of the TTAB, including those that result from new ex parte proceedings created by the bill. The Copyright Alternative in Small-Claims Enforcement Act (CASE Act), which passed the House by a 410-6 vote last October and passed the Senate Judiciary Committee without objection awaits a vote in the Senate.  It establishes a voluntary small claims tribunal operating under the U.S. Copyright Office, called the Copyright Claims Board. Last week Senate Judiciary Subcommittee on IP Chair Thom Tillis (R-N.C.) released the text of a bill titled the “Protecting Lawful Streaming Act of 2020” to close the “felony streaming loophole.” Current law does not allow piracy via streaming—an infringement of a copyright owner’s public performance right—to be charged as a felony. The draft bill would permit the Department of Justice to bring felony charges against streaming services that stream copyright works without the owner’s permission for commercial, for-profit purposes.

Looking ahead to 2021, most IPO members are anxious for news about who President-Elect Biden will select to be the next Director of the USPTO. Last week IPO shared the Board’s recommendations about the qualifications that should be possessed by the Director. History suggests that that appointment is probably still months away. In the meantime, news surfaced last week that President-elect Joe Biden will select Katherine Tai, the current chief counsel for the House Ways & Means Committee, to serve as the United States Trade Representative (USTR). Tai was instrumental in crafting the Democratic demands for final changes to the United States-Mexico-Canada Agreement (USMCA).

The 117th session of Congress will commence in January with a few changes in the makeup of the leadership of the House and Senate Judiciary Committees. In the House, Jerrold Nadler (D-N.Y.) will continue as Chair of the full committee and Jim Jordan (R-Ohio) will continue as Ranking Member. Hank Johnson (D-Ga.) will likely continue as the Chair of the IP Subcommittee. Darrell Issa (R-Calif.), who is returning to Congress after a two-year hiatus, is expected to be appointed Ranking Member. In the Senate, we don’t know yet which party will be in the majority. In any event, Chuck Grassley (R-Iowa) will return as the top Republican on Judiciary Committee and Dick Durbin (D-Ill.) will be the top Democrat. Thom Tillis and Chris Coons (D-Del.) will likely return as the leaders of the IP Subcommittee.

Senator Tillis has already signaled that he has ambitious plans for the IP Subcommittee. This month he initiated a new round of negotiations concerning legislation to amend 35 U.S.C. § 101 to clarify the law on patent subject matter eligibility. IPO supported the 101 legislative effort during this session of Congress and will continue our involvement and efforts to bring attention to this important issue. Tillis is also working on reforming the Digital Millennium Copyright Act. After extensive review, he is expected to unveil a discussion draft soon that is expected to form the basis of legislation to be considered in the new year. And depending on the fate of the TMA, CASE Act, and felony streaming bill, any or all of those pieces of legislation might remain on the agenda.

I look forward to another year of advocating IPO’s positions to Congress and the USPTO in furtherance of our mission to promote high quality and enforceable intellectual property rights and predictable legal systems for all industries and technologies. I am delighted to have the opportunity to share our message about the importance of IP to accelerate innovation, creativity, and investment necessary to improve lives. Finally, I am committed to continue our timely reporting on U.S. and international policy developments here and in the IPO Daily News in my role as editor-in-chief.

But first, I hope we all enjoy safe, restorative holidays. Onward to 2021.

Recent 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

As 2020 draws to a close (thankfully), the courts have not ignored intellectual property.  While no momentous rulings were handed down by the Supreme Court, they did take several steps forward in high visibility IP cases.  The Court heard oral arguments in what is shaping up to be a bellwether copyright case, Google v. Oracle, a case examining Google’s use of Java source code in Android smartphones.  During the oral argument, the Justices struggled to parse the distinctions between declaring code, which Google argues is too functional to be copyrighted, and implementing code.  The decision is expected next year.

The Supreme Court also granted certiorari in the Arthrex case to answer the burning question of whether PTAB judges are principal or inferior officers under the Appointments Clause of the Constitution and whether the Federal Circuit’s proposed constitutional fix passes muster.

The Federal Circuit has certainly not slackened its pace as we approach 2021.  American Axle v. Neapco generated yet another Federal Circuit opinion, this time addressing whether issuance of the mandate holding some claims of American Axle’s patent ineligible under Section 101 should be stayed pending the patentee’s petition for certiorari.  The panel, in an opinion authored by Judge Dyk and joined by Judges Taranto, and Moore, denied the stay holding that American Axle had failed to establish irreparable injury.  However, Judge Moore, in a concurring opinion, again highlighted the Federal Circuit’s lack of unanimity in applying Section 101.  According to Judge Moore: “What we have here is worse than a circuit split—it is a court bitterly divided.”  “As the nation’s lone patent court, we are at a loss as to how to uniformly apply § 101.” Can we get an Amen!

Perhaps the most significant Federal Circuit decisions were in the Hatch-Waxman pharmaceutical litigation space.  In Valeant v. Mylan, Judge O’Malley (joined by Judges Newman and Taranto) held that an “act of infringement” for purposes of § 1400(b) venue only occurs “in districts where actions related to the submission of an [ANDA] occur, not in all locations where future distribution of the generic products specified in the ANDA is contemplated.”  And in GlaxoSmithKline v. Teva, Judge Newman (joined by Judge Moore) held that Teva had actively induced infringement of GSK’s patent even though Teva’s product label did not directly refer to the claimed indication. “When the provider of an identical product knows of and markets the same product for intended direct infringing activity, the criteria of induced infringement are met.” Chief Judge Prost dissented.

In a rare application of the printed matter doctrine, the Federal Circuit in Bard v. Angiodynamics held that the presence of printed matter in a claim does not per se render the claim patent ineligible.  In an opinion authored by Judge Reyna and joined by Judges Schall and Stoll, the Court held that the accused infringer had failed to prove that the “ordered combination of elements” in the claims lacked an inventive concept, even if “the sole focus of the claimed advance was the printed matter.”

On the trademark side, the Federal Circuit issued one precedential opinion in Corcamore v. SFM, an appeal of the Trademark Trial and Appeal Board’s entry of default judgment as a discovery sanction, resulting in cancellation of Corcamore’s trademark registration for the mark SPROUT.  In an opinion authored by Judge Reyna (joined by Judges Chen and Hughes), the Court held that the Lexmark zone-of-interests and proximate-causation requirements control statutory standing under § 1064 and held that SFM had standing to bring or maintain the petition for cancellation.  The Court also affirmed the Board’s entry of judgment as a sanction against Corcamore for litigation misconduct, including Corcamore’s refusal to cooperate with SFM’s counsel on discovery issues, violations of Board orders not to file non-germane papers, and violation of Board orders to properly serve documents.

The Trademark Trial and Appeal Board issued a flurry of recent precedential opinions, including opinions in a trio of “failure-to-function” cases.  In In re Texas With Love, LLC, the Board affirmed the U.S. Patent & Trademark Office’s refusal to register the TEXAS LOVE mark finding that it failed to function as a trademark for clothing because, the Board found, it is a widely used expression of a “well recognized sentiment, specifically, enthusiasm and support for or from Texas or Texans.”  Similarly, in In re Mayweather Promotions, LLC, the Board affirmed the Office’s refusal of Floyd Mayweather’s trademark application for the PAST PRESENT FUTURE mark in connection with t-shirts, also finding that the mark “would be perceived by purchasers and prospective purchasers as a widely used commonplace expression of a familiar concept and not as a source indicator for t-shirts.”  Lastly, in In re Vox Populi Registry Ltd., the Board affirmed refusals to register the .SUCKS mark for domain registration and registry services, finding that consumers will view .SUCKS “as only a non-source identifying part of a domain name, rather than as a mark.”

That’s all for now.  Please stay safe until we can meet again.

Unitary Patent Article Series

Edited by Thomas L. Irving, Partner Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Many patent owners are interested in trying to draft a single patent application that will serve them in several countries. This is ambitious, since there are many differences between various countries’ patent systems, but
perhaps not impossible. The patent drafter just needs to be aware of and try to balance all the different
requirements in the single patent application. This series of articles outlines important considerations
when drafting a single patent application.

Article One: Grace Period Provisions 

Article Two: Data Considerations When Drafting

Article Three: Mind Your Language!

Patent Litigation at Brazil’s Supreme Court: An Attempt to Invalidate Sole Paragraph of Section 40 of the Brazilian Patent Law

By Luiz Edgard Montaury Pimenta, Senior partner at Montaury Pimenta, Machado & Vieira de Mello , and President of ABPI ( Brazilian IP Association )

The Supreme Court of Brazil is about to schedule the judgment session of the lawsuit (ADIN) 5529 filed by the Federal District Attorney’s Office seeking the invalidation of the sole paragraph of section 40 of the Brazilian Patent Law, which provides for a minimum term of 10 years of validity of patents after their grant by the Brazilian Patent Office.

ABPI, the Brazilian IP Association, the major IP Association in Brazil, that I am proud to lead since 2018, has been accepted in the lawsuit to defend the legality of this provision, and consequently presented strong arguments on behalf of the validity of this section in our Patent Law, requesting the rejection of the lawsuit.

As a matter of fact, such provision implements an international rule to which Brazil and other countries freely accepted (section 62, 2, of the TRIPs Agreement), being essential for patent holders to enjoy the exclusive exploitation of their invention by a minimum period of 10 years.

In fact, this rule should hardly ever be applied, being only a guarantee for a 10 year minimum period of a patent after its grant by the Brazilian Patent Office.

The Brazilian IP Association (ABPI) has recently published a full-page MANIFESTUM in the major Brazilian business newspaper (Valor) in favor of innovation and of the maintenance of the term of patents in Brazil. A copy of the publication can be found here with the corresponding English translation.

Since August 2019, the Brazilian Patent Office has implemented a program through which they seek the elimination of the long standing (and unacceptable) patent backlog, which has been contested on a regular basis during several years by ABPI and other entities. We hope to succeed in carrying out an extraordinary and meritorious effort to reduce the examination term of patent applications in Brazil, so that in the near future only rarely a patent will be granted after a period of 10 years.

We hope and believe that the Brazilian Supreme Court will share this same understanding and will maintain the validity of this provision in our Patent Law.

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 with the 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

APPLY TODAY for round two of the corporate mentoring program!

IPO Education Foundation Kicks Off New Strategic Initiative at 20th Anniversary Celebration

The 20th Anniversary and Awards Celebration, which was held virtually on December 8-10, recognized outstanding achievements in the fields of innovation, creativity, and IP rights. The event began with a keynote address by Executive of the Year Ken Frazier (Merck & Co. Inc). He addressed the importance of diversity in innovation and improving our quality of life, saying  “I urge you to continue your efforts to increase diversity and inclusion in your ecosystem, among both inventors and IP professionals.” He highlighted IPO and Foundation programs like the Stroke of Genius podcast episode “The Right to Invent” and encouraged attendees to listen.

Mr. Frazier’s remarks were consistent with IPO Education Foundation’s new strategic initiative announced by the board of directors in October. The strategic framework provides more information about IPOEF’s new goals.

“We are working with strategic partners to help create programs in 2021 that provide awareness about intellectual property in diverse communities where the creativity already exists, but the IP rights do not.  If IPOEF and its strategic partners are successful, education about IP will drive innovation and economic prosperity in underrepresented communities. We hope you will support us as we take on this new initiative.” Jessica Landacre, Executive Director 

Kathleen O’Malley holding Distinguished IP Professional Award

Additional sessions during the 20th Anniversary virtual event featured Inventor of the Year Pat Brown (Impossible Foods), who spoke about why he started Impossible Foods and how he hopes to positively impact the environment, and  Distinguished IP Professional Kathleen O’Malley (U.S. Court of Appeals for the Federal Circuit) who spoke about her time on the bench and the impact of changes since the pandemic. Board members Dave Kappos (Cravath, Swaine & Moore LLP) and Robert DeBerardine (Johnson & Johnson) led panel discussions about the importance of intellectual property protection to accelerate innovation as well as to respond quickly in a crisis.

To close out the three-day Celebration, FoundationBoard Member Phyllis Turner-Brim (HP Inc.) led a fireside chat with Dr. Lisa Cook (Michigan State University) about the importance of diversity in innovation. They spoke about the barriers that people of color and women face and what the innovative and practitioner communities would look like if those barriers were removed. A networking workshop led by IPO’s Diversity & Inclusion and Women in IP Committees followed, where attendees met in small groups to discuss the fireside chat in greater detail. If you were unable to attend the 20th Anniversary Celebration, recordings of the sessions can be found at IPOEF.org.

You can advance the Foundation’s important initiative by becoming a partner or donating to support programming. If your organization has a diversity and inclusion committee or an affiliated diversity-based group, please consider sharing that information with us. Partnerships and donations are necessary to implement the foundation’s vision and continue to develop high quality, effective programming. IPO Education Foundation is a 501(c)3 nonprofit and is funded entirely by contributions. You can donate on IPOEF.org or by mailing a check to IPO Education Foundation, 1501 M St NW Ste 1150, Washington, DC 20005. If you or your organization is interested in partnering with us, please contact Kristen Lurye, klurye@ipo.org.

IPO Volunteer Profile – Serena Farquharson-Torres (Bristol Myers Squibb)

Serena Farquharson-Torres is Senior Corporate Counsel at Bristol Myers Squibb. She is involved with all aspects of patent law working primarily in prep and prosecution, IP due diligence support, client counseling and most recently post-merger integration management for the law and compliance department. She is chair of Bristol Myers Squibb’s Law and Compliance D&I committee and Co-Chair of their black employee resource group STEM team.  

Dr. Farquharson-Torres has been actively involved with IPO since 2016She is a member of IPO’s Diversity & InclusionWomen in IP Law, and Pharmaceutical & Biotechnology Issues committees. She is also a recent presenter at both the IPO Annual Meeting and the IPO Chat Channel. 

How did you get involved with IPO?  

I was secretary for the Women in IP Law Committee so now more people know me on a personal and professional level. The issues we were addressing applies to other underrepresented groups. Henry Hadad, past president of IPO, appointed me to the Presidential Taskforce on Diversity and later I joined the D&I committee leadership team as Co-Chair of The Black-IP professionals along with Dr. Eldora Ellison, a partner at Sterne Kessler.

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

Building relationships and driving change in corporations and law firms to strengthen the IP profession. In 2020 I worked with the D&I committee and Black IP Professional Resource Group to create the Black IP Professional Directory, The D&I Practical Guide, a webinar on The D&I Practical Guide in a Post-George Floyd Era, a presentation on my career for the Next Generation Committee, a panel on Allyship at the Annual Meeting and zoom meeting on IP careers for students of color.

What would you say to a potential corporate member who is considering joining IPO? 

Similar to the value of having a diverse and inclusive workforce, the collective voice of the various diverse corporate members can make meaningful changes in the IP space. The way IPO is organized, there are competing agendas, but if all viewpoints are represented it leads to stronger more comprehensive policies.  

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

We all have careers and families that take time and commitment as well, thus it is best to find an area where you would like to drive change, join the committee, take on various initiatives and in the process, you grow as a lawyer and build relationships in the process. 

How has your participation in IPO committees helped you professionally? 

I have developed professional and personal relationships with a diverse group of IP professionals that genuinely care about my advancement in the profession.  I have increased my visibility across the profession as a thought leader with influence.  I developed leadership and project management skills that are now opening opportunities for me to lead teams of lawyers on substantive matters in the law department in addition to my work in IP.  

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

My faith and my family. I have been married for 16 years, I have three daughters, twins in middle school and one daughter in high school, and I am passionate about them growing up and being thoughtful girls with a voice that they are not afraid to use. I like to spend time with the family walking, biking, or if possible relaxing at the beach. 

Anything else you would like to add? 

In earning a B.S. in chemistry from Howard University, doctorate in biological chemistry from the University of Minnesota, and a law degree from the University of North Carolina, and working in private practice and in several pharmaceutical companies I have experienced the best and the worst in terms of inclusion, allyship, and fairness. I have found that Dr. Maya Angelou’s statement is true, “equal rights, fair play, justice, are all like the air: we all have it, or none of us has it”. 

Thanks to Serena for sharing her wide range of experiences with IPO. IPO has 29 active committees working on the most important areas of IP law and practice. To learn more and get involved visit IPO’s Committee Resources page.