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. 


The Good Faith, the Bad Faith and the Ugly

Katherine Hunziker

If a person1 has a federally registered trademark, that person enjoys all the rights and protections provided by the Lanham Act across the country, excluding areas in which another person was using the mark prior to federal application. A federal registration confers constructive notice of priority throughout the country beginning at the time of application. Thus, an owner of a registered trademark can enjoin any subsequent user from using that mark. An unregistered trademark owner, however, has common law rights to their mark, but only in the areas in which it is being used in commerce and known by the relevant public. As a result, the first to use the unregistered mark (the senior user) cannot claim priority over a subsequent remote use of the mark by another person (the junior user) who adopted the mark in good faith.

The issue addressed here arises when one or both of the users of the same or similar unregistered mark expand into one another’s territory. Of course, the senior user can not enjoin the junior user without first proving that he has a protectable mark and that the junior user’s use of the same or similar mark is likely to cause consumer confusion. Thus, once the junior and senior user expand, and their respective uses of the marks are likely to cause consumer confusion, the junior user can raise the affirmative defense provided by the Tea Rose-Rectanus doctrine. Once the junior user has established that she adopted the mark in good faith, the senior user may not oust the geographically remote junior user, regardless of the fact that the senior user was the first to adopt the mark. 


Preclusive Effect of the International Trade Commission’s Patent Decisions: Can District Courts Ignore Texas Instruments Inc. v. Cypress Semiconductor Corp.?

Emre Yuzak

Section 337 of the Tariff Act of 1930, as amended, gives complainants a powerful remedy against unfair practices in import trade. It permits the United States International Trade Commission (“ITC”) to exclude certain items from importation, directing Customs and Border Patrol to deny their entry. Section 337, with its liberal grants of exclusion orders, attracts mainly intellectual property disputes, including several high-profile smartphone cases.

Litigants in section 337 cases may also bring their disputes to state or federal court, raising the question of what preclusive effect the ITC’s decision has. In Texas Instruments Inc. v. Cypress Semiconductor Corp., the Federal Circuit ruled that parties cannot rely on the ITC’s decision in patent cases to apply claim preclusion or issue preclusion in other cases. 

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