Founded in 1884, the Intellectual Property Law Association of Chicago is the country's oldest bar association devoted exclusively to intellectual property matters. Located in Chicago, a principal locus and forum for the nation's authors, artists, inventors, scholarly pursuits, arts, creativity, research and development, innovation, patenting, and patent litigation, IPLAC is a voluntary bar association of over 1,000 members with interests in the areas of patents, trademarks, copyrights, and trade secrets, and the legal issues they present. Its members include attorneys in private and corporate practices before federal bars throughout the United States, from law firm attorneys to sole practitioners, corporate attorneys, law school professors, law students, and judges, as well as the U.S. Patent and Trademark Office and the U.S. Copyright Office. IPLAC members prosecute thousands of patent applications and litigate many patent lawsuits in Chicago and across the country.
A principal aim of IPLAC is to aid in the development and administration of the patent, trademark, copyright, trade secret, and associated fields of law and the manner by which they are applied by the courts and by the United States Patent and Trademark Office.
IPLAC is dedicated to maintaining a high standard of professional ethics in the practice of patent, trademark, copyright, trade secret, and associated fields of law.
IPLAC submitted the following comments to the USPTO:
IPLAC Comments in response to the proposed “Notice of Proposed Rulemaking: Electronic Patent Issuance" as originally published on December 15, 2021 in the Federal Register (FR Doc. PTO-P-2021-0007).
IPLAC Comments in response to the “Changes to Implement Provisions of the Trademark Modernization Act” as originally published on May 17, 2021 in the Federal Register (37 CFR Parts 2 and 7).
IPLAC Comments on Proposed Administrative Updates to the General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases.
IPLAC Comments on Secondary Trademark Infringement Liability in the E-Commerce Setting here.
- The SHOP SAFE Act of 2020. In light of the COVID-19 pandemic, Congress enacted the SHOP SAFE Act of 2020, H.R.6058 -116th Congress (2019-2020) in response to the surge of counterfeits in online marketplaces to hold online third-party marketplaces liable for contributory infringement of a counterfeit mark in "connection with the sale, offering for sale, distribution, or advertising of goods that implicate health and safety". To avoid liability, e-commerce platforms must: (1) require sellers to be subject to service of process in the United States and (2) take ten steps which include conspicuously displaying the verified principal place of business, contact information, identity of the seller, the country of origin and manufacture of the goods, and the location from which the goods will be shipped. Id. Currently, this requirement applies only to health and safety products. However, IPLAC believes the SHOP SAFE Act should be evaluated to possibly extend to all product categories.
[1] https://www.congress.gov/bill/116th-congress/house-bill/6058/text
Summary:
As an initial matter, IPLAC's members agree with the proposed rule to adopt the claim construction standard utilized in district court and International Trade Commission (ITC) litigation - i.e., the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and its progeny - for IPR, PGR, and CBMR review proceedings. That said, IPLAC has identified two points that it believes are worthy of the USPTO's consideration:
1. IPLAC believes that the last clause of the first sentence of each of 42 C.F.R. §§ 42.100(b), 42.200(b), and 42.300(b) invites confusion. These clauses state the claim construction standard "include[s] construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent." This clause, however, refers to some but not all of the Phillips factors. As such, this clause may suggest the recited factors in the proposed rule would take precedence over the remainder of the Phillips standard.
2. IPLAC also believes the Phillips standard should be further applied to ex parte examination reviews because such proceedings also challenge the validity of an already granted patent just like an IPR.
Summary:
IPLAC joins the IPO, AIPLA, ABA and other bar associations across the country to propose revisions to 35 U.S.C. § 101. IPLAC believes that the revisions to subject matter eligibility that have been proposed by IPO and AIPLA represent the most straightforward and comprehensive revisions to Section 101. IPLAC recommends a harmonized proposal by adopting language from each and replacing in its entirety the current statutory language of 35 U.S.C. § 101 with language substantively consistent with the following:
101(a) Eligible Subject Matter: Whoever invents or discovers, and claims as an invention, any useful process, machine, manufacture, composition of matter, or any useful improvement thereto, shall be entitled to a patent for a claimed invention thereof, subject only to the exceptions, conditions, and requirements set forth in this Title.
101(b) Sole Exceptions to Subject Matter Eligibility: A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole exists in nature independently of and prior to any human activity, or exists solely in the human mind. In determining eligibility, each claimed invention shall be considered as a whole.
101(c) Sole Eligibility Standard: The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to (i) the requirements or conditions of sections 102, 103, and 112 of this Title, (ii) the manner in which the claimed invention was made or discovered, or (iii) the claimed invention's inventive concept.
Summary:
As part of the USPTO’s Enhanced Patent Quality Initiative, a Post-Prosecution Pilot (P3) program ran through January 12, 2017 to test the impact on enhancing patent practice during the period subsequent to final rejection and prior to appeal. Effective features of two programs currently aimed at improving this area of prosecution, (1) the After Final Consideration Pilot (AFCP) 2.0 program and (2) the Pre-Appeal Brief Conference Pilot program, have been incorporated into the P3 program that adds new, requested features, such as providing applicants an opportunity to present arguments to a panel at a conference.
As part of the pilot nature of the program, the USPTO solicited commentary on the program and proposed rules. In late 2016, IPLAC’s Patent Committee met to review the proposed rules and submitted comments to the USPTO on the proposed program. Among other suggestions, IPLAC identified and suggested changes to the rules to fix a possible loophole relating to the timing of a P3 Notice of Decision and the unintended effect it could have on termination of the P3 review.
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