William J. McNichol, Jr.

Patents play an important role in American business. Their stated purpose is to incentivize innovation and there is a large body of scholarship concerning how they perform this function. Scholars have noted the patent system’s “natural connection to innovation.” Patents long played an important role in in the related function of capital formation. This is no less true in the industries now emerging around sales of Cannabis products.5 However, under a long line of authorities going back to The Highwayman’s Case in 1725, the illegality of the use, possession, and distribution of these products probably creates an insurmountable barrier to the enforcement of most patents that claim Cannabis products or their use. This means that, with respect to the Cannabis industry, the U.S. patent system is unlikely to play its customary roles of incentivizing innovation and encouraging investment. 


PTAB Practice Tips: Comparing a Motion to Strike and a Motion to Exclude

James A. Worth

Upon instituting an AIA trial proceeding, a panel of the Board issues a scheduling order that provides a timeline for discovery, for the filing of briefs, and for the date of an oral hearing. Parties may contact the Board to request an initial conference call if there is a need to propose changes to the scheduling order or propose motions that have not been provided for by the scheduling order or by the PTAB Rules. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (“TPG”); Trial Practice Guide Update (“Update”) at 24. Otherwise, parties may proceed with discovery and briefing without consulting the Board. Occasionally, parties will have a dispute about the scope of discovery or briefing that they cannot resolve on their own, and will ask the panel to resolve the issue, usually in the run up to the hearing. Disputes over the scope of argument and evidence may result in a motion to strike or a motion to exclude. 


The Current State of Innovation within the U.S. Legal System – Views on Evolving Protection for Intellectual Property Rights in the United States from the USPTO and the Courts

Andrei Iancu

Good afternoon everyone! Thank you, Pete Thurlow, for that generous introduction. It’s a great honor to open today’s panel discussion on the current state of innovation within the U.S. legal system, and I appreciate NYIPLA’s gracious invitation to be part of this outstanding annual event.

This very day 59 years ago, on March 22, 1960, the United States Patent Office issued patent number 2,929,922 to New York native Arthur Schawlow of Bell Labs and Charles Townes, a Columbia University professor and consultant to Bell Labs, for coinventing the optical maser—now called a laser. While doing postdoctoral research at Columbia University, Schawlow met Townes, and together they sought ways to extend the maser principle of amplifying electromagnetic waves into the shorter wavelengths of infrared and visible light.

In 1958, the two scientists published a proposal for the invention in an issue of Physical Review, prompting an international competition to build a working laser. Today, of course, lasers have countless applications and make it possible to play CDs, correct eyesight, scan labels in a grocery store, enable autonomous vehicles, measure time precisely, survey planets and galaxies, and even witness the birth of stars. 


PTOS Annual Meeting Keynote Address Will You Be My Valentine: Celebrating the USPTO Examiner Through History

Laura A. Peter

Today it is my honor to address so many patent and trademark examiners, and to celebrate you. You are the reason why our U.S. intellectual property system is so incredible. You are all highly educated experts in your fields. Every day, you work diligently to ensure that the patents and trademarks that this agency issues are strong and reliable. So today, I want to thank you and show you how much our agency has evolved over the last two centuries.

On this Valentine’s Day, let us start with taking a closer look at some of the jewelry, flowers, and candy associated with today through the lens of intellectual property.

When you get home tonight and your valentine gives you a special blue jewelry box, you will instantly know it’s from Tiffany & Co. Tiffany received a registered trademark for that particular blue color over 20 years ago. And the original Tiffany & Co. trademark dates back to 1893. Tiffany also holds 36 design patents and even a utility patent for a clip-on earring force tester.

The bouquet of red roses you sent to your sweetheart may even be patented. In 1931, the first plant patent issued for a climbing rose. In fact, 4% of all plant patents are for varieties of roses. 


Rossman Memorial Award 2019

Joshua Schwartz

The Rossman Committee was privileged to present the 2019 Joseph Rossman Memorial Award to Judge Hung Bui during the 2019 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. 


Federico Memorial Award 2019

Joshua Schwartz

The Federico Committee was privileged to present the 2019 Pasquale J. Federico Memorial Award to The Honorable (Ret.) Randall Rader during the 2019 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.

Judge Randall Rader is a graduate of Brigham Young University and the George Washington University Law School. Judge Rader served as Counsel, to the House of Representatives, Interior and Ways and Means Committees from 1975-1980. Then served as Chief Counsel, to the Senate Judiciary Committee Subcommittees from 1980-1988. President Ronald Reagan appointed Rader to the United States Court of Federal Claims in 1988, to succeed Robert M. M. Seto. The United States Senate confirmed the nomination by unanimous consent on August 11, 1988. He served there for approximately two years. On June 12, 1990, Rader was nominated by President George H. W. Bush to a seat on the United States Court of Appeals for the Federal Circuit vacated by Judge Jean Galloway Bissell. Rader was confirmed by the Senate on August 3, 1990, and received his commission on August 9, 1990. In 2010, Rader became Chief Judge of the Federal Circuit succeeding Chief Judge Paul Redmond Michel upon his retirement. He served in that capacity through May of 2014. Since leaving the bench in 2014, Judge Rader has founded the Rader Group, initially focusing on arbitration, mediation, and legal consulting and legal education services. 


JPTOS Editor-in-Chief Personal Notes: Two-Prongs within Step 2A

Alexander Sofocleous

Pondering subject matter eligibility, while browsing the aisles of my favorite hardware store, the following fleeting thought entertained my wandering mind: Anticipation and obviousness rejections involve the difference between a claim and prior art. Does subject matter eligibility involve a difference between the claim and a claimed judicial exception? Should it be more challenging to differentiate a claim (as a whole) from elements in the claim than to differentiate the same claim from applied prior art?

While studying USPTO’s notice of examination guidance and request for comments, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019), I found it helpful to diagram Step 2A side-by-side the former flow-chart, from 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618, 74621 (Dec. 16, 2014). 


Predicting Institution Decisions in Inter Partes Review Proceedings

Yuh-Harn Yang, Pu-Jen Cheng, and Feng-Chi Chen

Inter partes review (IPR) was introduced in Year 2012 as an adversarial, post-grant patent review process. The principle of claim construction (broadest reasonable interpretation), standard of proving unpatentability (preponderance of evidence), and shortened time to final decision (18-24 months) have made IPR a popular venue for patent challengers. Institution of an IPR mounts substantial pressures on the patentee because the challenged claims are highly likely to be invalidated in the final decision. Therefore, a reliable model to predict institution decisions is critical for patent and business management. In this study, we construct three support vector machine (SVM) models separately based on the contexts of IPR proceedings and features of the disputed patents. The ensemble model that incorporated the three SVMs can predict institution decisions with 79% accuracy and 0.85 Area under the ROC Curve. Separately, the IPR context-based models perform better than the patent feature-based model. Interestingly, most of the features traditionally regarded important for patent values are not significantly associated with institution decisions. Furthermore, models trained on earlier IPR documents can accurately predict the institution decisions in later proceedings. The prediction accuracy increases with the accumulation of training data. In addition, our approach can identify IPR context features that may influence institution decisions. Our results can provide an empirical basis for IPR policy making and business strategic planning. 

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