Last week I had the pleasure of attending the 61st Annual Intellectual Property Conference of the John Marshall Law School in Chicago, IL. The conference, which took place at both the law school and the Union League Club, covered current developments in patents, trademarks, copyrights, trade secrets and antitrust laws. This year, the forum of discussion was made up of panels of a Who’s Who of Intellectual Property expert speakers from government, the judiciary, corporations, academia, NGO’s and practitioners.
The Keynote speaker of the day was Donald Dunner, Partner at Finnegan and Chair of the John Marshall IP Advisory Board. His Keynote topic covered The Supreme Court and whether they are a help or hinderance to the Federal Circuits Mission. The morning continued with three Expert panels on Developments in Copyright Law, Developments in Trademark Law and Developments in Patent, Trade Secrets and Antitrust Law.
After the morning sessions, I asked a few individuals to tell me what they felt was a key message that they took from the morning sessions.
Partner, Loeb and Loeb
In order for the United States to compete in a Global Stage, we need to harmonize our competition on Intellectual Property laws to not only protect the innovations that are coming out of the United States, but also to create a fair, equitable marketplace for US based companies to reap the rewards of those innovations. I believe that, like all issues, to accomplish this, it has to come from the top. The Executive Branch of the United States could appoint a commission made up of bipartisan practitioners from the private and public sectors, along with folks from academia, then, regardless of political philosophy they could work together to figure out how we can improve the innovations that traditionally did occur in the Unites states, which can, once again, our economy forward, relative to other industrialized nations.
Adam Kelly is a nationally-acclaimed counsellor in intellectual property law with extensive experience in the U.S. and abroad.
The George Washington University Law School
My biggest take from today’s sessions, was to hear from Don Dunner and Judge Newman and others about that great ideas that we could all share in to bring increased economic growth, increased innovation, increased opportunity for the market, for consumers and for manufacturing by returning to an approach to the IP Antitrust interface that is politically diverse, that both President’s Carter and Reagan embraced. That kind of pivoting could really help the system and it could be done by getting professionals within the community to just talk together in a different way. I know that sounds small because it’s just talking, and talking in a different way. But sometimes those little things can have big payoffs.
Scott Kieff is a the former Commissioner of the U.S. International Trade Commission, having been nominated to that post by President Barack H. Obama, recommended unanimously by the U.S. Senate’s Committee on Finance, and confirmed by unanimous consent of the Senate on August 1, 2013. Originally joining the faculty of the George Washington University Law School in the Summer of 2009, Scott resumed his role as a Fred C. Stevenson Research Professor upon his retiring from the ITC in the summer of 2017.
McDonnell Boehnen Hulbert & Berghoff
I was interested to hear the colloquy between Scott Kieff, who recently left the ITC, and Susan Munck from the FTC. These are two agencies with very different agendas regarding IP and the balance between competition and protection (IP as well as customs/borders) and their interaction illustrates what can happen when these two points of view clash (which they do often). Now, Scott and Susan were perfectly civil, let’s be sure about that. But do I think that generally the FTC has a view on their own side of the Angels. Always. I’m not sure that’s always true, but what I am sure of is that if that’s your position, it makes it very hard to compromise. It makes it very hard to say that maybe the other guy has a point. Or that maybe I should look at it a different way, because, after all, the Angels are with you.
And you can get that with any agency, of course, or any political party or really any debate. But what the Myriad case showed patent people was that there is another point of view and you can’t just dismiss it (both politically and if you want to get to the right outcome for everyone). And the outcome from the Myriad case is actually bad, because the women didn’t get what they thought they would (state-of-the-art diagnostics at cheaper prices) and the case has put at risk more convention products like drugs and antibiotics, in ways that even the ACLU says they didn’t want.
Kevin E. Noonan is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Biotechnology & Pharmaceuticals Practice Group.
Greer Burns and Crain
My biggest takeaway from today was Judge Newman’s inspirational talk about the US being less competitive than the before innovation and what can we do to reverse the trend. It’s similar to what happened when the Federal Circuit was initiated in 1982. I think that Judge Newman’s main suggestion was that the government organize a lot of smart people from various disciplines, to work together to make the changes, similar to what was done before. But the reality was that under the current administration, that that was going to be difficult to accomplish. The supreme court is causing a big problem with innovation. The case law doesn’t seem to be considering the issues of innovation and the problems that innovators have and the decisions are more negative to patents.
Lawrence Crain is a founding shareholder at Greer, Burns & Crain in Chicago, and is an attorney with unusually extensive experience counseling clients on the most efficient strategies and techniques for protecting their intellectual property.
I was very impressed that they were able to bring in judge Newman via teleconference. We have a lot of thinking to do about expanding our system to better capture our intellectual property and grow our own economy. I think there needs to be a concerted effort, particularly in the software area where we seem to be stifling innovation, and the various court decisions of many of these cases are just not consistent with one another.
Perry Hoffman concentrates his practice in business law and intellectual property protection, patent procurement, and technology clearance, including licensing in the fields of electronics, computers, communications, controls and software.
Davis McGrath LLC
I am most interested in copyright law. I thought the morning copyright session was excellent as it talked about a whole host of issues. The Star Athletica case was a good discussion, and we followed up with that in our afternoon session. In this morning’s session they spoke in more general aspects of it, including the view of the copyright office. But this afternoon we dug down into real practical issues with examples of useful articles that have been or could be involved in litigation. The courts opinion was quite roundly criticized by most of the panelists today at least on the tests that they set up. No one is quite sure if it is any easier to separate out the artistic aspects of these things from the functional aspects.
Bill McGrath has practiced intellectual property and business law since 1976. He is nationally recognized for his work in the field of copyright law, though his areas of concentration also extend to trademark and information technology law, as well as publishing law, trade secret law, and software licensing.
McAndrews, Held and Malloy
I’d first like to speak to the format of the conference this year which was very interesting because it was really set for conversations; small conversations amongst leading voices and thought leaders in the IP world from academia, private practitioners, and in-house counsel and they really stuck to that format through the entire conference and allowed for some really great discussions. The copyright discussions really tackled the three biggest copyright issues, from this year any way. We talked about the Star Athletica case, and how although apparel in and of itself is not copyright protectable, should theses designs, or 2 dimensional art, be protected as eligible copyright protectable matter.
We also talked about the continuing evolution of the fair use doctrine, where we had some divergence of opinions of how those cases came out. And then we talked about the idea of exhaustion of rights with digital files and used digital files. There was some discussions of really pushing for a legislative fix to this particular issue, because there is a desire for a robust secondary market with respect to used digital content and digital information. There is a consumer desire for that and it will be interesting to see if the legislative
Christopher Carani is a partner and shareholder at McGrath and has been at the firm since 1995. He practices in all areas of intellectual property law with particular emphasis on design law.