I am pleased to welcome you to the Spring 2022 BPLA Newsletter.
As IP practitioners, we are members of a global community. We have clients, colleagues, and friends around the world, which helps the world feel smaller and more human. It also makes the tragedy of the war in Ukraine all the more heartbreaking. The BPLA supports the free peoples of Ukraine and condemns the ongoing war and the needless human suffering it is causing. If you are looking for a way to do more, please consider pro bono service to help Ukraine and its people, such as with the TPS Pro Bono Project organized by Lawyers for Good Government.
Last month, at our Town Hall meeting, we continued our conversation regarding whether changing the Boston Patent Law Association name is in the best interests of the organization. The meeting was productive and congenial. Many of the members in attendance, including several Past Presidents, supported adopting a name that is inclusive of the full IP community. The larger questions raised were not whether a change made sense, but what name would be better and how we would we navigate the brand transition to preserve our goodwill and reputation.
The views expressed at the Town Hall have been consistent with the feedback that I have received since announcing the naming initiative at the Annual Meeting. Of the members who have reached out to me, there has been broad support for changing our name to signal that our organization encompasses all forms of intellectual property. To have a more comprehensive understanding of the membership’s view on this issue, however, I’d encourage everyone to respond to the BPLA’s short naming survey, which can be found here.
So far, I have wanted to focus the organization on the “first question” — would a name change advance the mission of the organization. Given the support, however, I believe that it is worthwhile for the organization to also begin considering in parallel the “second question” of what name may better serve the organization.
I will be convening the
Open Naming Committee to help the Association fully evaluate the second question. This is an ad hoc committee that is open to all BPLA members who are interested in participating. This committee will be tasked with creating and vetting potential names, performing due diligence, and making a recommendation to the Board. The inaugural virtual meeting of this committee will be at noon on May 11, 2022. More details to follow.
I am also pleased to provide an update on the Second Annual BPLA IP Symposium, which will be held virtually on June 2, 2022. We are excited to announce that our Keynote speaker will be Jerry Ma, who is the Director of Emerging Technology for the USPTO. As the person at America’s Innovation Agency who is tasked with keeping an eye on the cutting edge, we are looking forward to Mr. Ma’s address.
Finally, the BPLA would like to congratulate Kathi Vidal on her confirmation as Under Secretary of Commerce for Intellectual Property and Director of the USPTO. We are excited for her tenure and look forward to future opportunities to work with the office to advance Intellectual Property policy.
Best regards,
Keith Toms
President, Boston Patent Law Association
Editor's Notes | DraftKings Persuades PTAB to Invalidate Competitor’s Mobile Gambling Patent | A stylish direction: how IP can support ethical fashion |
This quarter’s newsletter is loaded with insightful content. We delve into some interesting wrinkles with practice at the EPO, talk about DraftKing’s winning bet against a rival’s patent, and look at ethical fashion and copyright battles. We also suggest you take a moment for yourself and read about self-compassion in our profession. We were also honored to receive an insightful letter to the editor from Professor Peter Karol weighing in on the question of our association’s name, and (in what we think is a first), have an exciting reader poll on the same topic. Please, cast your votes! | The Patent Trial and Appeal Board found in a recent inter partes review—DraftKings Inc. v. Interactive Games LLC—that DraftKings’ proposed combination of prior art would have been obvious when Interactive Games’ mobile gambling patent was filed, and was therefore unpatentable. The outcome of this case demonstrates the ineffectuality of arguing that there is no motivation to modify the primary reference because it works as is, as well as the importance of understanding whether an invention feature is truly necessary and whether removal of such would render the invention inoperable for its intended purpose. | As the practices of fast fashion draw ire from climate campaigners ahead of Green Earth Day this month, IP can play a key role in promoting ethical apparel brands, as Danny Awdeh of Finnegan explains. |
EPO presses pause on proceedings that depend on the plausibility referral to the EBA | InHouse Practice Committee Roundtable Discussion | The Copyright Clash Between Artists: A Quiz |
Despite not having any express legislative basis in the European Patent Convention, plausibility has made its way into European patent jurisprudence. Born in the field of genomic research (JOHNS HOPKINS – T1329/04) it has meanwhile spread to all sorts of inventions (such as classical pharma inventions; see, e.g., DASATINIB – T0488/16) and become a legal concept that is mainly applied at the EPO in the assessment of sufficiency of disclosure, often for medical use-type claims (i.e., was the therapeutic effect technically made plausible at the time of filing), and in the assessment of inventive step (i.e., was the objective technical problem plausibly solved across the scope of the claim at the time of filing). | On February 27, the In-House Practice Committee hosted a virtual discussion about how to manage foreign counsel. A lively group of both in-house and law firm-based attorneys discussed the advantages and disadvantages of working directly with local associates in different countries versus having international prosecution managed by an outside US attorney. The group also discussed variations in trademark practice around the world and how to optimize both cost and accuracy when translating technically complex patent applications into the local language for filing. Many thanks to co-chairs Lydia Olson of Canon USA and Jane Hsu White of Alnylam Pharmaceuticals for organizing the discussion. | “Appropriation Artists,” such as Warhol and Koons, often take an image made by another visual artist, usually a professional photographer, without permission, and incorporate it into a new work of art that purports to make a sweeping commentary about society. These artists are controversial and attention-seeking, and they can often turn a photo worth thousands of dollars into a work of art worth millions. Appropriation Artists have been subject to many lawsuits by original artists seeking to enforce their copyrights. <<Read More>> |
Self-Compassion for Lawyers: Dispelling Doubts & Getting Started | Case Law Committee Meeting Summary - CalTech v. Broadcom |
Self-compassion really refers to three main aspects or components. One is mindfulness, being able to actually be present with what is here rather than pushing it away, suppressing it, minimizing it. The second is kindness. How do we talk to ourselves? Can we bring a sense of gentleness and kindness to ourselves? Almost like imagining you would talk to your best friend. And the third part of self compassion is shared humanity, recognizing we're not alone, we're not the only one that feels this way. | In California Institute of Technology v. Broadcom Limited, et al. (Feb. 4, 2002; Feb.22, 2022) (“CalTech”), a Federal Circuit panel overruled Shaw Industries v. Automated Creel Systems, 817 F.3d 1293 (Fed. Cir. 2016) and greatly expanded the scope of IPR estoppel under 35 U.S.C. 315(e)(2). At its March 28 meeting, the Case Law Committee discussed not only estoppel, but also other issues the CAFC decision raised. |