We have many exciting opportunities for you to get involved and in person this year! From committee meetings to our bigger events, I hope we all look forward to reconnecting with each other. Mark your calendars for our 3rd annual Symposium. This year we will meet in person on May 3rd and 4th for one and a half days of interesting speakers and meaningful connections with each other, including two breakfasts, two lunches, and access to a reception on May 3rd. We have opened registration with an early bird pricing schedule during the month of March and welcome sponsors for this event. We are still finalizing a few speaking slots, so if you have suggestions or would like to join the roster of speakers, please reach out to President-Elect Josh Dalton at president-elect@bipla.org. And when you see him this year, please thank Past President Michael Bergman for first envisioning the Symposium for the BIPLA!
I invite you to volunteer for the 2023 Giles Sutherland Rich Moot Court Competition, which will be held in person on March 17th-19th. The Moot Court Committee is looking for volunteers to judge briefs and volunteers to hear and grade oral arguments. This competition provides law students with valuable opportunities to practice their advocacy skills and interact with attorneys whose shoes they want to fill in the future.
As the weather gets warmer, you can also look forward to our annual Celebration of the Judiciary. We will be returning in person for dinner at the John Joseph Moakley United States Courthouse on Wednesday, June 21, 2023 (save the date!) where we can again network and visit with old friends and new ones, as well as to honor members of the Judiciary who play a crucial role in our American legal system.
Thank you for your ongoing commitment to our association. Please continue to remain active, invite your friends and colleagues, and take advantage of the opportunities our association provides for you. I look forward to hearing from you. You can reach me at president@bipla.org.
Rebecca M. McNeill
President, Boston Intellectual Property Law Association
Editor's Notes | A Look At The Legal Intersection Of AI And Life Sciences | Keeping Tabs on the TTAB® |
Welcome to the Winter 2023 Edition of the BIPLA Newsletter. Although the BPLA Newsletter has been a longstanding tradition, which many may remember back to its paper mailing days, I am excited to announce this first issue of our newsletter as the Boston Intellectual Property Law Association! At the 2022 Annual Meeting the organization voted resoundingly in favor of changing our name and we are thrilled to move forward as the BIPLA. | This article was not written by ChatGPT. Will all articles have to start with a statement like this? And will any statement like this be true? ChatGPT uses artificial intelligence, or AI, to develop written work product. While this application of AI has grabbed the news, there are many other exciting applications of AI, including in the domain of life sciences. In this article, we start by defining AI in the context of data, algorithms and AI systems. Next, we touch on leading regulatory efforts in the U.S. and abroad, followed by a brief overview of some key issues in compliance. After that, we assess the intersection of AI and intellectual property law. And finally, we mention some of the applications of AI in life sciences. <<Read More>> | The Trademark Trial and Appeal Board (“TTAB”) issued more than 600 final decisions and numerous interlocutory rulings in 2022. Thirty-eight of the Board’s opinions were deemed precedential. This article collects ten decisions – listed in no particular order – on a variety of issues that the author finds of importance or interest. It is worth noting that, in keeping with a recent trend in TTAB cases, three of the decisions conclude that the mark in question is unregistrable because it fails to meet the basic requirement that it serve as an indicator of source: either because it “fails to function” as a trademark, or is generic (a sub-set of the failure-to-function concept). |
Minutes of the Annual Meeting | MTAS and the Common Law of Bailment | Panel Discussion with UPC Technically Qualified Judge |
President Keith Toms called the meeting to order at 12:10 and welcomed all those in attendance. President Toms presented welcoming remarks, in which he expressed gratitude for being able to meet in person, recognized and welcomed past presidents of the Boston Patent Law Association, and recapped events that had returned to in-person format over the course of the year. He thanked the committee co-chairs for their efforts in staging events during 2022. He also emphasized the need to increase membership, for example, by increasing the Association’s outreach to non-patent practitioners. <<Read More>> | We congratulate our 2022 Writing Competition winners, Andrea McCollum (First Place) and Brittany Reeves (Second Place), both J.D. Candidates at University of New Hampshire Franklin Pierce School of Law. A publication of Brittany Reeves’s second place winning paper, “MTAs and the Common Law of Bailment: Minimizing Misunderstanding, Avoiding Dispute, Managing IPR, and Accelerating Innovation” is included in this newsletter. | On February 12, the BIPLA presented a panel discussion titled “Essential Strategies for U.S. Patent Counsel at the EPO and UPC” featuring Michael Fleuchaus, a Technically Qualified Judge at the Unified Patent Court, along with Craig Smith and Tom Sullivan of Lando & Anastasi, Ken Thompson, Senior Vice President and General Counsel of Cantor Fitzgerald, and Kent Robbins, Senior Director at TransPerfect IP. The audience learned about recent developments at the nascent UPC as well as practice tips for proceedings at the court, followed by a networking reception at the University of Massachusetts Club in Boston. The BIPLA thanks Lando & Anastasi and TransPerfect IP for co-sponsoring the event. |
2023 BIPLA Comment on Expanding Criteria for Admission to Practice | 2023 BIPLA Comment on Patent System Robustness and Reliability | Optimising prosecution strategy for patent term extensions in Europe |
The Patent Office Practice Committee of the Boston Intellectual Property Law Association authored a January 2023 Response to USPTO Request for Comments regarding proposals to expand the criteria for admission to practice before the Office. The Response supported the USPTO’s proposals to periodically review applicant degrees for inclusion in the “Category A” of degrees that automatically qualify an applicant to sit for the examination for registration to practice in patent cases before the USPTO (commonly referred to as the “patent bar exam”), to allow for computer sciences degrees to so qualify an applicant regardless of whether they are accredited by the Computer Science Accreditation Commission of the Computer Science Accreditation Board or by the Computing Accreditation Commission of the Accreditation Board for Engineering and Technology (“ABET”). | The Patent Office Practice Committee of the Boston Intellectual Property Law Association authored a January 2023 Response to USPTO Request for Comments regarding proposed initiatives to ensure the robustness and reliability of patent rights in the US that have recently become the focus of inquiries and actions in both the Executive and Legislative branches of the US government. | One of the requirements for an SPC is that the authorized product is protected by a basic patent in force. The meaning of “protected by” has been the subject of much debate at the Court of Justice of the European Union (CJEU) over the years. In its most recent judgment on the topic (C-650/17 Royalty Pharma), the CJEU confirmed that the authorised product must be “specifically identifiable” to the skilled person from the patent, the common general knowledge, and the prior art. |
What is the current threshold for support of a patent claim in New Zealand? |
The Patents Act of 19531 has long been the legislative pillar for patenting in New Zealand with very few amendments over its life. As such, the enactment of the Patents Act of 20132 (with assent on September 13, 2013; hereinafter ‘the 2013 Act’), was met with anticipation and some trepidation by many New Zealand practitioners, particularly on the understanding that there were going to be wide sweeping changes. |