By Joshua Dalton, Morgan Lewis & Bockius LLP
Welcome to our Summer 2024 newsletter. I hope everyone’s summer included some time to unwind with friends and family.The BIPLA’s summer highlight was our Celebration of the Judiciary on June 18. We enjoyed an excellent dinner at the John Joseph Moakley United States Courthouse and toasted this year’s Honoree, The Honorable Indira Talwani of the United States District Court for the District of Massachusetts. We also benefited from a fascinating keynote from Professor Jessica Silbey of Boston University School of Law. The event was attended by over 130 people, and we were especially grateful to have 10 judges and magistrate judges join us.
On September 25, the BIPLA and the Association of Corporate Counsel Northeast are co-sponsoring a live event entitled “Intellectual Property in the Age of AI” at the offices of Finnegan Henderson at Two Seaport Lane. Stay tuned for announcements regarding our annual PCT Seminar and our terrific Invented Here! Awards ceremony this fall. And, of course, we look forward to seeing everyone at our Annual Meeting on December 4, 2024 as we cap off our Centennial year.
Thank you for your energy and support. As always, 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 | Celebration of the Judiciary | Comments Regarding the USPTO Notice of Proposed Rulemaking on Terminal Disclaimers & Double Patenting |
Welcome to the Summer 2024 Edition of the BIPLA Newsletter. This newsletter includes highlights from our annual Celebration of the Judiciary, updates regarding upcoming activities, and articles from our colleagues and membership regarding IP-related issues in the US and internationally. Finally, please note our call for submission of BIPLA memories in honor of its centennial. | On June 18, 2024, the BIPLA gathered for its annual Celebration in Honor of the Judiciary at the John Joseph Moakley United States Courthouse. Honorable Indira Talwani of the U.S. District Court, District of Massachusetts, was the 2024 recipient of the BIPLA’s Distinguished Public Service Award while Dr. Jessica Silbey, a professor at Boston University School of Law and author of “The Eureka Myth: Creators, Innovators, and Everyday Intellectual Property,” as well as “Against Progress: Intellectual Property and Fundamental Values in the Internet Age,” gave the keynote speech. | The in-house committee hosted a hybrid brown-bag lunch meeting at Alnylam Pharmaceuticals to discuss career development for IP practitioners. We considered the career paths to become Head of IP or General Counsel/Chief Legal Officer. We talked about the pros and cons of each path, how to increase the breadth of legal experience needed, and how the size of your company affects exposure to learning experiences. We had great participation from both in-person and online attendees, and an in-house committee happy hour is being planned for late summer. Stay tuned! |
In-House Committee After Hours | Review of Recent Antibody Case Law at the European Patent Office | Updated Guidelines for AI Inventions |
On August 14, the In-House Practice Committee hosted an After Hours event in Kendall Square, Cambridge. It was a beautiful summer evening with lively and engaging conversation, pizza, and drinks in a relaxing environment. We thank everyone who attended. | This review will be of interest to USA patent professionals, companies, scientists, and inventors working in the antibody field. The US PTO and the EPO take very different approaches when considering antibody inventions, with the EPO’s approach being continuously developed by the case law of its Boards of Appeal. A working knowledge of the latest EPO case law will therefore assist those in the USA when preparing patent applications in this field, by helping to avoid pitfalls that may arise later during prosecution in Europe. Accordingly, in this regular review we examine Board of Appeal decisions relating to antibody inventions that were published by the EPO in 2023. | On March 1, 2024, updated Guidelines for examining AI inventions at the European Patent Office (EPO) came into effect. These updated guidelines can be found in the official “Guidelines for Examination in the European Patent Office,” which contains instructions for Applicants seeking to obtain a European patent. With a granted European patent, Applicants can further seek protection in both member and non-member countries of the European Patent Organization. |
New Test for Obviousness of Design Patents Presents Uncertainties and Opportunities | Review of Recent SPC Case Law in the UK – Little Appetite for Divergence From the EU | Noncompete Ban Turns Patents, Copyrights Into Corporate Shields |
In a recent case, the Federal Circuit overruled the existing test for determining whether a design patent is invalid as obvious and outlined a new approach. The Federal Court decision in LKQ v. GM Global Tech. Operations LLC, No. 2021-2348 (Fed. Cir. May 21, 2024) (“LKQ”) overrules the pre-existing design patent obviousness requirements, known as the Rosen-Durling test, as being improperly rigid. In the Rosen-Durling test, the primary reference used to determine obviousness must be “basically the same” as the challenged design claim, and any secondary references must be “so related” to the primary reference, that features in one would suggest application of those features to the other. What this meant was that Examiner’s rejections could be easily overcome, and challenges to the validity of design patents were difficult to make. | This review will be of interest to USA patent professionals and pharmaceutical companies, particularly those working on combination therapies. Most will be aware that supplementary protection certificates (SPCs) are the European equivalent/alternative to the system of Patent Term Extension (PTE) operated in the USA. The basic requirements for grant of SPCs are similar to those for PTE, but there are subtleties of interpretation which are continuously developed by case law both at the national and European level. Despite leaving the EU, the UK’s SPC system still largely follows that of the EU, but divergence is now theoretically possible. It is therefore important to consider the case law that has recently emerged from the UK courts in this area caught our attention. | The new Federal Trade Commission ban on noncompete agreements will unleash two contradictory threads: more innovation and inventions, and more intellectual property theft. Effective use of patents, copyrights, and other IP protections can address both situations. |
Brazil's Accession to the Hague System: Milestones, Impact, and Future Prospects |
Brazil's accession to the Hague System has significantly expanded the geographic scope of WIPO's International Design system, now covering 96 countries. The inclusion of Brazil, which has the largest economy in Latin America, not only increased the global reach of the Hague System, but also strengthened its position as a truly global and effective option for ensuring the protection of designs. Furthermore, Brazil's participation contributes to the harmonization of design protection practices on a global scale, promoting innovation and competitiveness of Brazilian companies in the international market. |