Dear Colleagues,
Welcome to our fall newsletter! We’ve had a busy fall as an organization. Among other interesting events, BIPLA was very pleased to welcome for our annual PCT seminar a distinguished delegation from WIPO: Lisa Jorgenson, Deputy Director General; Garrett Levin, Senior Policy Officer, IP and Frontier Technologies Division; Debbie Roenning, Director, Madrid Legal Division; Matthias Reischle-Park, Deputy Director, PCT Legal and User Relations Division; and Viviane Gross, Head, PCT International User Outreach and Support Section. We thank them for visiting us and for their very informative presentations.
We are excited to gather with many of you at our Annual Meeting on December 3 to conclude the year’s business and celebrate together. We look forward to hearing from our keynote speaker, Jack Cushman, Director of the Harvard Library Innovation Lab, who will address issues at the intersection of information science, AI, and the law.
We welcome everyone’s participation to help us continue BIPLA’s role in advancing intellectual property discourse and building community among intellectual property practitioners throughout the First Circuit. If you would like to get more involved, please consider serving as a committee co-chair for 2026 – volunteering now will allow consideration for openings in next year’s roster. Many thanks to the 2025 committee co-chairs, my fellow Board members, and Spencer Jawitz, our excellent Events & Communications Manager, for all of their efforts this year. And thank you to everyone who has attended and sponsored events this year for helping to keep our community vibrant.
I have appreciated the opportunity to serve as BIPLA President in 2025 and hope you will continue to reach out with questions or suggestions. You can reach me at president@bipla.org.
Emily R. Whelan President, Boston Intellectual Property Law Association
Editor's Notes | Announcement of Selection Process for New Committee Cochairs | BIPLA Breakfast with the USPTO and Copyright Office |
The BIPLA had a busy summer program including a pair of programs from the International & Foreign Practice Committee on European Supplementary Protection Certificates and the Unified Patent Court. Our annual PCT seminar was an in-person event featuring a delegation from WIPO. The In-House Committee also continued their series of after hours meetups with an event on October 8 at Area Four in Cambridge. | Looking toward 2026, the BIPLA Board invites members to consider whether they wish to serve as a committee cochair. Committee cochairs have an opportunity to lead in our organization through planning both social and educational programs and engaging in substantive legal work by responding to USPTO proposed regulations, policies, or requests for comment or by preparing amicus briefs on important issues. Committee cochairs increase their profile in the greater Boston legal community through increased opportunities to network and by demonstrating their leadership abilities. The Board invites both returning cochairs to express their interest in continuing in their positions and new potential cochairs to volunteer. | On an early Tuesday morning, BIPLA members gathered for a visit from the USPTO and Copyright Office in WilmerHale’s Boston office. After members had the pleasure of mingling with other attendees, including international colleagues who were in town for the IPO’s annual meeting, attendees eagerly took their seats, ready to learn about the USPTO’s and Copyright Office’s recent initiatives." <<Read More>> |
The EPO relaxes its assessment of formal priority entitlement | Why Should I Do an FTO? – Benefits of a Diligent Freedom-To-Operate Search and Best Practices | Potential Implications of US Copyright Office Determination on AI-Generated Work |
On September 16, 2025, the International & Foreign Practice Committee hosted a virtual session on “Key Updates and Insights in European Supplementary Protection Certificates.” This session was presented by Michael Pears of the European firm Potter Clarkson. Michael has extensive experience with European Supplementary Protection Certificates (SPCs), a form of IP that can provide an additional period of exclusivity beyond patent expiry for medicinal and plant protection products. Michael provided an excellent introduction to SPCs, followed by a clear explanation of the conditions that need to be met to obtain an SPC, key case law developments, the SPC manufacturing waiver, and proposed legislation reform. Many thanks again to Michael and those who attended for an extremely informative and engaging session. <<Read More>> | Running a successful company is a battle that must be won. A company’s survival depends on sound, informed decision making by its leaders. Competition is–or soon will be–all around you. Conceiving, designing, and building a commercially successful product is never easy. Product development is resource intensive, both in terms of time and money. Launching a new product in any industry is a gamble. There are innumerable factors beyond a company’s control that will determine whether a product is economically successful. Consequently, it is beneficial to identify what market factors are controllable and then act accordingly. Of prime concern is whether your product can be made and sold in the target markets without infringing on one or more claims of a competitor’s patent. At a minimum, this requires conducting a search of issued, in-force patents to clear the product and establish freedom to operate; i.e., a product clearance or “FTO” search. | First, in its February 2023 decision regarding a graphic novel comprised in part of images generated by the AI art platform Midjourney, the Copyright Office reiterated the well-established standard that only works created by a human author, with at least a minimal degree of creativity, are protectable by copyright. In that case, the Copyright Office concluded that images that had been created solely by Midjourney in response to textual prompts entered by a human were not protected by copyright. <<Read More>> |