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This Week in Washington IP: Ensuring U.S. Leadership in Microelectronics, Amending Section 230 Immunity for Big Tech, and the Decadal Survey for Astronomy and Astrophysics

This week in Washington IP news, committee hearings in the House of Representatives will focus on ways to ensure that America retains global leadership in microelectronics, proposed legislative amendments to Section 230 of the Communications Decency Act to rein in legal immunities for major online platform providers, and recommendations from the recent decadal survey for astronomy and astrophysics, including recommendations for building a next-generation large telescope. Over in the Senate, the Judiciary Committee will discuss several judicial nominations, including a pair of nominees to sit on the Ninth Circuit. Elsewhere, the Information Technology & Innovation Foundation will host the annual Global Trade and Innovation Policy Alliance summit, while the American Enterprise Institute explores ways that Congress can make minor changes to current antitrust law to increase regulation against anticompetitive Big Tech practices while limiting negative impacts on consumers. 

Rethinking Innovation with Michel, Iancu, and Watts

In early November, the University of Illinois Chicago (UIC) School of Law held its 65th Annual Intellectual Property Law Conference. The program consisted of five plenary sessions and ten breakout sessions featuring candid discussions and networking sessions with judges, senior government officials, and leaders of supranational IP offices, multinational corporations, law firms, academia, and nonprofit organizations. IPWatchdog’s Founder and CEO, Gene Quinn, moderated the second plenary session, “Global Patent Issues.” The program kicked off with a featured panel consisting of Andrei Iancu, Partner at Irell & Manella, Former Under Secretary of Commerce for Intellectual Property, and Former Director of the U.S. Patent and Trademark Office; the Honorable Paul R. Michel (ret.), former Chief Judge of the U.S. Court of Appeals for the Federal Circuit; and Brad Watts, Minority Chief Counsel for the United States Senate Judiciary Committee, Subcommittee on Intellectual Property. Professor Daryl Lim, Director of UIC’s Center for Intellectual Property, Information and Privacy Law, moderated the discussion.

IP Goes Pop! Season 2 Episode #3: Taking Back the Music

This week on IP Goes Pop! fellow Volpe Koenig Shareholder Robert Leonard joins Michael Snyder to talk about artists’ rights and attempts by musicians to regain rights to their original recordings. This episode begins with a brief overview of the “bundle of rights” that copyright owners hold. From there the discussion turns to “master” recordings. Master recordings are the music recordings that serve as the basis for the marketable form of music whether that be vinyl, CDs, mp3s or streaming platforms. When musicians sign record contracts with recording studios they typically sign over the copyrights to their master recordings often without a full understanding of the value of these rights.

Can You Refile a Provisional Patent Application?

The question that we receive most frequently from inventors, usually independent inventors, relates to whether a provisional patent application can be refiled with the United States Patent and Trademark Office (USPTO).  Before giving the correct answer, it is critically important for everyone to understand that if a provisional patent application is refiled it may become impossible for a patent to ever be obtained, period.  Can a provisional patent application be refiled? The short, easy answer to the question is yes, of course you can refile the provisional application. The USPTO will be happy to have you refile the application, take your filing fee, and send you a new filing receipt. The problem for you, as an inventor, however, is the consequence of refiling a provisional application. So, while it may be very easy to do, and seem like you’ve just extended the life of your original provisional application, that is precisely NOT what has happened, and you may have – indeed likely have – made it impossible to ever obtain a patent anywhere in the world.

The 10 Most Active Patent Prosecution Attorneys of 2021

Earlier this year, we published our findings on some of the best performing patent firms of 2021. Now, we have evaluated this data at the attorney level, meaning that we can compare the activity and performance of patent attorneys and rank them based on their work. To calculate this ranking, our Data Science Team had to develop an AI-based tool to read tens of millions of PDF documents available through the U.S. Patent and Trademark Office’s (USPTO’s) Public Pair website and then use neural networks to identify the attorney responsible for each application.

Patent Filings Roundup: Light Week Leading up to the Holidays Sees Record District Court Terminations

Happy Holidays! Thanksgiving has come and gone. A light week last week headed into the holidays saw 20 Patent Trial and Appeal Board filings (two more against MemoryWeb, and a lot of one-offs, including one by gaming company Zynga against IGT). District courts saw 58 patent filings, with a whopping 115 terminations again this week—at least a few attributable to transfers, but many, many more attributable to file-and-settle settlements headed into the end of a very lucrative year in monetization, as quarterly statement-minded licensing entities look to wrap things up before the holidays.

Thank You! From Trademark Amendments to Mentors, IP Stakeholders Get Grateful

It’s been another challenging year. At the end of 2020, we were all hopeful that 2021 would bring with it a chance to get back to normal, but that has so far eluded most of the world. However, the year did bring with it a lot to be grateful for—the various COVID-19 vaccines, made possible by science and arguably made viable by intellectual property rights—were initially rolled out in the United States beginning in late 2020 and became available to the masses in the spring of 2021. Today, about 60% of the U.S. population is fully vaccinated, and there would be many hundreds of thousands more deaths without the vaccines. IPWatchdog was able to have its first annual LIVE! event as a result of the vaccines as well, and it was a huge success. I’m very thankful to be part of such a great team and to have such truly genuine and wonderful bosses in Gene and Renée. Below are responses to our request for comments on what the IP community is thankful for this year. If you’d like to be added to our mailing list for these roundup perspective pieces, please write us at editors@ipwatchdog.com.

Other Barks & Bites for Wednesday, November 23: Senate Democrats Renew Call for TRIPS Waiver, SCOTUS Denies Right of Publicity and Initial Interest Confusion Appeals, and Apple Files Petition for Cert on Licensee Standing to Challenge Patent Validity

This week in Other Barks & Bites: the Supreme Court denies petitions for certiorari in cases over Lanham Act claims asserted by professional models against strip clubs using their likenesses in nightclub ads, as well as an appeal challenging the Eighth Circuit’s determination that a product’s expense doesn’t create higher buyer sophistication as a matter of law in initial interest confusion cases; Samsung announces plans to build a $17 billion computer chip plant in Taylor, TX; a successful mediation between Nike and Skechers leads to a settlement of patent infringement claims between those two footwear rivals; Senate Democrats, along with Bernie Sanders (I-VT), renew calls for a TRIPS waiver on COVID-19 vaccines; amendments to national copyright law increasing copyright protections go into effect in Singapore; Apple files a petition for cert asking the Supreme Court to reverse the Federal Circuit’s finding that its license with Qualcomm eliminates Article III standing to challenge the validity of the licensed patents; and the Fifth Circuit finds that the mere availability of a website without anything targeting a forum state cannot meet the “purposeful availment” requirement for personal jurisdiction to sustain a copyright and trade dress infringement case.

Hindsight Bias: An Ovine Survey

The arrival of a U.S. Patent and Trademark Office (USPTO) office action citing no less than six earlier patents directed to various sub-combinations in the features of the main independent claim in an application which I was handling prompted the present note. Readers may recall the decision of Judge Rich In re Winslow 365 F.2d 1017 (C.C.P.A. 1966): “We think the proper way to apply the 103-obviousness test to a case like this is to first picture the inventor as working in his shop with the prior art references — which he is presumed to know — hanging on the walls around him.” However, Boltzmann’s entropy formula S = k log W where S represents entropy, a concept associated with a state of disorder, randomness, or uncertainty, and W represents the number of possible states in the relevant system, leaves an unforgettable impression on those who have studied it. Even if the fields from which the earlier patents might be selected are restricted to relevant general classifications, the number of combinations of six references which might have been collected together from the body of prior art in the relevant technical field randomly and without knowledge of the invention is mind-boggling.

Marshall, Gerstein & Borun Seeks An Associate, Patent Agent or Technical Specialist

Marshall, Gerstein & Borun is seeking a a talented Associate, Patent Agent or Technical Specialist to join our Electrical/Computer Science practice group.  This full-time, permanent position will be located in their Chicago, IL office.

Marshall, Gerstein & Borun Seeks an Intellectual Property Associate or Patent Agent

Marshall, Gerstein & Borun is currently seeking a talented Associate or Patent Agent to join their Chemical and Biotechnology practice groups.  This full-time, permanent position will be located in their Chicago, IL office.

The U.S. Patent System is Still Worth Saving

Much deserved criticism has been leveled at the U.S. patent system in the last decade or so, from all sides. No one branch of the system seems to much appreciate what the other branches are doing. The Supreme Court and Federal Circuit are issuing decisions that seem innocuous at first, but then inevitably snowball into wrecking balls. Regulatory policies, guidelines and statutory prescriptions that are well intended when the ink dries turn lethal to patents—witness the creation of the Patent Trial and Appeal Board (PTAB). But, despite this situation, in the late summer/early fall of this year, in a brief burst of face-to-face patent events, I began to re-appreciate the value of the system and what it means to the country and our collective future.

This is What’s at Stake if WTO Removes Protections for Lifesaving Medicines

Experts agree: The COVID-19 vaccines are one of humanity’s greatest achievements. The previous record for vaccine delivery was almost five years; today’s innovators delivered the COVID-19 vaccines in less than one. The achievement is a testament to the dedication of those innovators, as well as the strength of the policy framework that supports their work. Unfortunately, some people want to destroy that framework. Some nations are promoting a dangerous proposal, supported by the administration, to waive intellectual property (IP) protections – such as patents and trade secrets – for COVID-19 vaccines. At the end of November, at a World Trade Organization (WTO) ministerial meeting, they’ll present this proposal as the best way to defeat the pandemic. But what they won’t mention is that their approach will actually threaten ongoing vaccine production, hurt our successful health care innovators, patient safety, economic competitiveness, American leadership, and the discovery pipeline in the process. 

When the Secret Enables the Brand: The Long-Lasting Listerine License

Question: how do you make money from a secret formula for a product that smells and tastes horrible and that no one wants? Answer: you make everyone believe they have a medical problem that only this stuff can solve. Back in 1879, Joseph Lawrence, a St. Louis doctor, was experimenting with surgical disinfectants. This was a new thing. In the 1860s, a British surgeon named Joseph Lister was the first to perform surgery antiseptically, using carbolic acid as a disinfectant. Inspired by Lister, Lawrence came up with a compound of alcohol and essential oils that seemed to kill whatever bugs it touched. To honor Lister (and presumably to take advantage of his fame), Lawrence named the concoction “Listerine.”

Marshall, Gerstein & Borun is Seeking a Trademark Associate Attorney

Marshall, Gerstein & Borun is seeking a Trademark Associate Attorney for their Trademark Practice Group.  This full-time, permanent position will be located in their Chicago, IL office.