I am especially proud of the great turnout we had at our 4th Annual Symposium. This was our second in person Symposium, held on April 10th and 11th at the Morgan Lewis offices in downtown Boston, and nearly 100 IP professionals joined us for the event! In addition to one and a half days of excellent content, we also enjoyed the opportunity to re-connect during two breakfasts, two lunches, a mixer on the 10th, and an exciting off-site cocktail reception sponsored by Kilburn & Strode LLP.
The next big event on the calendar is our annual Celebration of the Judiciary. Please join us for dinner at the John Joseph Moakley United States Courthouse on Tuesday, June 18, 2024 (save the date!) as we celebrate this year’s Honoree, The Honorable Indira Talwani of the United States District Court for the District of Massachusetts.
As we all settle back into what feels more and more normal after the Pandemic, we ask that everyone make a special effort to renew your membership and to encourage others in your practice or legal community to become members. The BIPLA is proud of the role it plays in advancing intellectual property discourse and building an important community among its practitioners throughout the First Circuit. Thank you for your ongoing commitment to our association, and do not hesitate to reach out with any questions, comments, or concerns. I can be reached at president@bipla.org. I would love to hear from you.
Joshua Dalton
President, Boston Intellectual Property Law Association
Editor's Notes | Minutes of the Annual Meeting | 2023 Writing Competition First Place |
Welcome to the Winter/Spring 2024 Edition of the BIPLA Newsletter. As is customary, this newsletter includes the minutes from our last Annual Meeting. We also congratulate our 2023 Writing Competition winners, Sara Sam-Njogu (First Place; JD Class of 2024 at Western New England University School of Law) and Ben Silvers (Second Place; JD Class of 2024 at Boston University School of Law). Further, there are recaps of exciting events from the past few months, including the BIPLA’s fourth installment of its Annual Symposium. There are also some great member- and guest-submitted articles on IP-related topics, including developments from the USPTO and other jurisdictions. Finally, please note upcoming events, including the BIPLA’s annual Celebration in Honor of the Judiciary, as well as our calls for participation by submitting BIPLA memories in honor of its centennial and joining our new mentorship program. | President McNeil presented welcoming remarks, in which she expressed gratitude for being able to meet in person, recognized and welcomed past presidents of the Boston Patent Law Association, and recapped events that took place over the course of the year. She observed a moment of silence to remember those BIPLA members that had passed away during the year, particularly David Brooks. She thanked Constance Brennan for their support, as well as the Board and committee co-chairs for their efforts in staging events during 2023, such as the very successful symposium. She also thanked her Activities Chair Eileen Ennis for her efforts and support throughout the year. <<Read More>> | We congratulate our 2023 Writing Competition First Place winner, Sara Sam-Njogu, J.D. Class of 2024 at Western New England University School of Law. Below is Sara’s winning paper, “Quitting Miss Chiquita: Reconsidering Trademark Abandonment Doctrine in the Post-George Floyd Era of Socially-Motivated Non-Use of Disparaging Marks.” |
2023 Writing Competition Second Place | BIPLA Case Law Committee Event | USPTO Releases New Guidelines |
We congratulate our 2023 Writing Competition Second Place winner, Ben Silvers, J.D. Class of 2024 at Boston University School of Law. Below is Ben’s winning paper, “The Substan-dard Similarity Test: The Substantial Similarity Test Applied to Musical Works and Sound Recordings.” <<Read More>> | The case law committee held a hybrid meeting, in person at Barnes & Thornburg and via Zoom, on January 24, 2024. Nearly 50 members attended and engaged in a lively and thoughtful discussion about the prosecution laches order in Sonos v. Google. Thanks again to Barnes & Thornburg for hosting, Rory Pheiffer for leading the conversation, Michael Bergman for participating and sharing a picture of the event, and all of the people who participated! | On January 10, 2024, the United States Patent and Trademark Office (USPTO) released Guidelines for use in assessing enablement during examination of utility patent applications and review of granted utility patents in view of the Supreme Court decision in Amgen v. Sanofi. To meet the enablement requirement, a patent specification must describe the invention in such terms that one skilled in the art can make and use the full scope of the claimed invention. |
Implementation of Mexico’s Intellectual Property Law | USPTO Guidance on AI-assisted Inventing | Update from the USPTO Patent Pro Bono Team |
Since the entry into force of the Federal Law for the Protection of Intellectual Property (FLPIP) on November 5, 2020, Mexico’s IP firms have grappled with constantly evolving criteria established by the Mexican Institute of Intellectual Property (IMPI) regarding the acceptance of divisional patent applications originating from another divisional application. <<Read More>> | The United States Patent and Trademark Office (USPTO) recently published guidance on whether a natural person may be an inventor of an AI-assisted invention. This guidance from the USPTO stems from President Biden’s Executive Order No. 14110 titled “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence,” mandating that the USPTO publish such guidance for patent examiners and applicants, and has evolved from years of actively engaging in seeking and listening to stakeholder comments on inventorship and the patentability of AI-assisted inventions. <<Read More>> | The USPTO recently released a report to Congress, as required by the Unleashing American Innovators Act of 2022, assessing the health and functionality of the participating patent pro bono programs. Details regarding the study findings, as well as a copy of the full report, are available here. The study found that the programs are successfully expanding access to the patent system to financially under-resourced independent inventors and small businesses. This is thanks to the volunteer efforts of practitioners working on the USPTO Patent Pro Bono Program. <<Read More>> |