08/21/2018

Rossman Award 2018

Joshua Schwartz

The Rossman Committee was privileged to present the annual Joseph Rossman Memorial Award during the 2018 Annual Meeting of the Patent and Trademark Office Society. The award was established in 1972 by the Society and the family of Dr. Joseph Rossman. Joseph Rossman started his career as a patent examiner and was Editor-in-Chief of The Journal back in the 1930s. He had degrees in chemical engineering and law, as well as a doctorate in psychology. In addition, Dr. Joseph Rossman was an author with a life-long interest in creativity, engineering and law. Dr. Joseph Rossman was the author of many articles in the Journal from the 1930s through the 1960s. Because the Journal was such a big part of Dr. Rossman’s life, his family approached the Society with the idea of establishing the Rossman Award in 1972. The Society enthusiastically embraced the idea and the rest is history. The Rossman Award is given to the author of the article in the Journal that, in the opinion of the judges, makes the greatest contribution to the fields of Patents, Trademarks or Copyrights. Factors that are taken into consideration include originality, timeliness of the subject, depth of research, accuracy, readability, and the potential for impact on the existing system.

08/15/2018

EDGAR M. MARBLE 1880-1883

Rising from the ranks, Mr. Marble was appointed Commissioner of Patents on April 28, 1880, by President Hayes, and served until 1884.

It was a most interesting period. The reconstruction following the Civil War was just ending, and many of the great figures of the war were still on the stage. In the field of invention, electricity was just emerging. In the practice of patent law, routine was just established.

Edgar M. Marble's qualifications for the position of Commissioner of Patents were found in the record he had already established in the Interior Department, in the position he had occupied up to that time, for executive capacity, clearness and correctness of decision and a thorough grounding in general law.

08/13/2018

Federico Award 2018

Joshua Schwartz

The Federico Committee was privileged to present the 2018 Pasquale J. Federico Memorial Award to Teresa Stanek Rea during the 2018 Annual Meeting of the Patent and Trademark Office Society.

In 1993, the SOCIETY established the Pasquale J. Federico Memorial Award. The Federico Award is intended to recognize outstanding contributions to the Patent and Trademark Systems of the United States of America. It may be given to an individual, a group of individuals, a corporation or an institution. Awards to individuals may be made posthumously. No more than one award may be given in each year. Anyone may make a nomination. The award is named in honor of Pasquale J. (Pat) Federico who was an institution within the Patent and Trademark Office. Pat entered then Patent Office in 1923 as a junior examiner in Division 43. By 1935, he was the Assistant Chief of his division and he became the Division Chief in 1940. He was appointed to the Board of Appeals in 1947 and remained there until his retirement from the Office in 1977. Pat Federico was a prolific author of articles dealing with intellectual property. Perhaps his greatest achievement was writing the first draft of the 1952 Patent Act. He was also, according to Giles Rich, the man most responsible for getting the 1952 Patent Act through Congress and enacted into law. The first Federico Award was presented to the late Giles S. Rich, who had served on the Court of Appeals for the Federal Circuit and its predecessor court, the Court of Customs and Patent Appeals for over four decades. Honorees from other years include Nick Godici, Paul Michel, Donald Banner, Charles E. Van Horn, Pauline Newman, C. Marshall Dann, Herbert Wamsley, Helen Wilson Nies, Mike Kirk, Tom Arnold, Howard T. Markey, Rene D. Tegtmeyer, Isaac Fleischmann, John Whealan, Anne Chasser, Raymond Chen, Bernie Knight, and Mark Lemley.

08/08/2018

General Paine was another Civil War hero to become Commissioner of Patents. Born at Chardon, Ohio, February 4, 1826, he was the seventh in line of descent from Stephen Paine, who emigrated from Hingham, England, to Hingham, Massachusetts, in 1638. He graduated from Western Reserve College at the age of 19, at the head of his class, taught school in Mississippi, and then took up the study and practice of law in Cleveland, Ohio. He married in 1850. 

08/01/2018

ELLIS SPEAR 1877-1878

One of the many who, after the Civil War, were anxiously looking about for civilian employment and means of making a livelihood for themselves and their families was a young officer but lately retired from the Army of the Potomac where he had achieved a reputation for courage and ability. At the age of 31 a Brevet Brigadier General, and having received from Congress on two occasions the supreme recognition of merit and valor on the field of battle, General Spear left the military service and entered upon his new duties in the Patent Office with enthusiasm and devotion.

07/30/2018

Applying the de minimus Exception to Sound Recordings: Digital Samplers Are Neither Thieves Nor Infringers

Kayla Mullen

When a new song plays on the radio, listeners may experience a feeling of nostalgia due to the use of familiar chords that exist in the public domain. Music artists are now able to create this feeling and a resulting hit by taking sound bites from older songs and mashing them with new material, which is known as “sampling” in the music industry. “Sampling” is defined as “the actual physical copying of sounds from an existing recording for use in a new recording, even if accomplished with slight modifications such as changes to pitch or tempo.” This method of appropriation involves physically taking from a prior work, which sets sound recordings apart from other copyrightable works. Sometimes the prior work is unrecognizable, but fragments are still there. Sounds that may be undetectable to the average ear, in some cases less than a second in length, are seamlessly incorporated by the technological advances that have made digital sampling commonplace in the music industry today. While copyrighted sound recordings have been protected for over forty years by the Copyright Act of 1976, whether digital sampling constitutes copyright infringement may now depend on where in the country a copyright infringement case is litigated.

For over ten years, Bridgeport Music, Inc. v. Dimension Films was the only federal court of appeals decision to address whether the de minimis exception applied to copyrighted sound recordings. In that case, the Sixth Circuit established a bright-line rule that any copying of a sound recording, even a trivial sample, constituted prima facie copyright infringement. On June 2, 2016, the Ninth Circuit held in VMG Salsoul, LLC v. Ciccone that the de minimis exception, which excludes copying that is trivial or insignificant from actionable infringement, applies to all copyrighted works, including sound recordings. The court found that Madonna’s hit song Vogue digitally sampled .23 seconds from the song Ooh I Love It (Love Break), but the court did not find that this sampling constituted copyright infringement. Now, the question is whether a de minimis exception applies, and whether it should apply, in cases of copyrighted sound recordings.

07/25/2018

ROBERT HOLLAND DUELL 1875-1876

Robert Holland Duell was a native of the State of New York, born in Warren, on December 20, 1824. He studied in Syracuse Academy and took up the profession of law, being admitted to the bar in 1845. Three years later he removed to Cortland and established himself in law there, continuing to make this his home for the greater part of his later life, to the time of his death on February 11, 1891.

Mr. Duell early became interested in politics and became District Attorney of Cortland County in 1850, which office he held until 1855, when he became District Judge. After serving four years in this capacity he was elected as Republican representative to Congress. In all, he spent eight years in Congress, 1859-1863, and 1871-1875.

07/23/2018

Reverse Payment Patent Settlements in Antitrust

Kelly L. Moulla

In the United States, as well as in the European Union, reverse payment patent settlements, or so-called “pay-for-delay agreements,” are neither addressed by domestic competition laws, nor mentioned in international competition agreements. As those agreements seem to be out of the reach of competition laws, patent holder pharmaceuticals frequently enter into such contracts with their potential competitors, generic manufacturers, in order to benefit from their monopoly for the longest time possible, by delaying their competitors’ product entry in the market. In fact, as a patent confers its owner market exclusivity rights for a long, though limited, period of time, conciliating competition law and such intellectual property right can be challenging. Due to the lack of adequate legislation, domestic courts in both the U.S. and the E.U toiled to obtain any resolution on related matters, rendering conflicting and confusing judgments. In international intellectual property law, the governing TRIPS agreement briefly mentions competition law in the licensing of intellectual property, but does not go as far as creating a regime for pay-for-delay agreements in regard to competition rules. On one hand, the harm among consumers and healthcare providers, who have to bear the high cost of patented drugs, when they could potentially benefit from the generic drug’s reduced price, is calculated in millions of dollars each year. On another hand, those blurred lines can also harm pharmaceutical companies, as they may, or may not, be subjected to extremely burdening fines at the outcome of expensive trials. In a globalized economy, the lack of clear regulations on one hand, and international harmonization on the other hand, can cause tremendous damages to pharmaceutical companies, and can therefore affect the health market internationally.

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