In This Issue:
President’s Corner – Snow, Let It Snow, Let It Snow!
Dear IPLAC Members and Friends,
With the snow all across Chicagoland, I am thinking about how thankful I am to have been able to participate, from the warm comfort of my home via Zoom, in the many programs IPLAC has had over the past month. I extend a big thanks to our Committees and their leadership for organizing these past events. This past month we had guest speakers from Chicago, Washington, D.C., London, and Tokyo – none of whom had to travel through any snow storms to join us. Stay tuned to our emails and calendar for more upcoming events. We have many in the works that have not made it into this newsletter. And do not forget to nominate inventors, brand marketers, and artists for IPLAC’s annual Creator of the Year Award. (Nomination forms are here: https://iplac.memberclicks.net/creator-of-the-year).
And with more snow falling outside my window as I am writing this piece, I am also thankful for the skilled Intellectual Property Attorneys who made Snow possible. After a little bit of legal research, I can confirm that Snow has fallen, literally, into the Public Domain.
After all, it was Wayne M. Pierce, Jr. of Milford Conn who invented a method of making Snow long ago in 1949 and patented it. It is said that invention is the mother of necessity, and back in 1949, with little snow on the ski slopes that winter, Mr. Pierce’s ski manufacturing business was very slow. But he discovered that one can spray a little bit of water, combined with compressed air, into the air at below-freezing temperatures, and voila, real Snow covered slopes! His invention revitalized the ski industry and made Snow no longer dependent on Mother Nature. So remember to bring your skis next time you fly to Dubai.
And in that same vein, a heatwave in Los Angeles in 1945 necessitated Sammy Cahn and Jule Styne to co-write the song “Let It Snow.” And 70 years later, thanks to skilled Intellectual Property Attorneys, Sammy Cahn’s estate sued to obtain unpaid royalties and to make it Snow again in L.A. Unfortunately, we need to wait just 24 more years until the copyright on “Let It Snow” expires so we can sing it out loud in public to our hearts’ content.
We also have some very clever marketers at Procter & Gamble, who have sold a product since 1918 that looked like Snow, and thanks to skilled Intellectual Property Attorneys, registered the trademark “SNOW” in 1952. I assure you, you would not want to let SNOW® flakes land on your tongue, because this product is “soap in comminuted form.” There are reportedly 21 other live registered trademarks for the word SNOW only, some of which are for products that are more palatable than SNOW® soap flakes.
In conclusion, the winter is no time to relax. As an Intellectual Property Professional, there are many clients in great need of our services. With the snowy and cold winters in Chicago, many new innovations are being invented daily to keep help us warm, safe, and able to enjoy the great outdoors. Those innovations need to be protected with patents, trademarks, or copyrights. Being an IPLAC Member can help you stay abreast of the latest legal developments and provide opportunities for networking with other IP professionals that can propel your career forward and build connections in the community. IPLAC also offers leadership opportunities to help you build your credentials and expertise. With our mentoring program, and our soon-to-come pro bono connector, IPLAC is there to serve our members and help you serve the greater community. Time to make some Snow!
Stay Warm in the Snow!
Marc V. Richards
136th IPLAC President
IBF Lawyers Care Fund: A Resource for our Colleagues in Local Bar
This month, we have a helpful resource brought by our colleagues at the Illinois Bar Foundation for any members or associates of our members who may be struggling in these unprecedented times:
We at the Illinois Bar Foundation (IBF) wanted to ensure you and your bar association are aware of a resource available to help attorneys and their families during times of crisis: the IBF Warren Lupel Lawyers Care Fund. As an officer of an ISBA-affiliated bar association, we hope that you will feel free to share this information with any of your members or colleagues in need. If you have any questions, or would like any additional information, please don’t hesitate to let me know.
The Warren Lupel Lawyers Care Fund provides economic aid to lawyers and/or their families to help ensure their needs for adequate housing, medical care, and other essentials are met. While funding is not intended to be long-term or a recipient’s primary form of support, monthly Lawyers Care payments fund necessities like physical therapy, treatment & counseling services, prescription medications, medical bills, rent and utilities, and more during trying times.
Throughout the years, this resource has become a vital lifeline for many attorneys in need. As Illinois’ statewide bar foundation, we strive to provide funding for recipients from all parts of the state, and our program is open for all attorneys admitted to practice law by the ARDC with a primary practice in Illinois. All applicant information is kept 100% confidential. If you have any questions on guidelines or would like to refer an attorney for a confidential discussion, please contact me at any time. For more information, or to watch a few of our recent recipients tell their stories, visit our website.
Recap: Patenting Artificial Intelligence (AI) Inventions in Japan and the US
On February 18, about 70 members of IPLAC and the Japan Patent Attorney Association came together virtually to better understand the nuances in patent protection between the world’s largest economy and its third largest economy. IPLAC President Marc Richards and one of JPAA’s Vice Presidents Kenji Sugimura gave opening remarks.
Atsuko Miura (Tokai Patent) and Ryan N. Phelan (Marshall, Gerstein & Borun LLP) provided important legal context for each country’s protection of AI patents before joining Takeshi Iizuka (Iizuka International Patent Office), Naoki Okumura (Nakamura & Partners), and Daryl Lim (Professor of Law & Director, Center for Intellectual Property, Information and Privacy, UIC John Marshall Law School). The event was co-hosted by Daryl Lim and Patrick Burns, co-chair of IPLAC’s International Relations Committee.
Virtual IP Speed Mentoring!
The IPLAC Law School Outreach Committee, in partnership with Loyola University of Chicago, is happy to host its first ever Virtual IP Speed Mentoring Event on Thursday, March 4, 2021. Speed mentoring for a group of JD students from all Chicago-area law schools will take place from 5:30 – 6:30 P.M., followed by general networking for all from 6:30 – 7:30 P.M. All interested attorneys and students should register here.
Creator of the Year 2021 Nominations
Help us determine the Creator of the Year 2021 by nominating your favorite client! The IPLAC Creative Achievement Award honors those who have made a significant creative work or works protected by patents, trademarks, or copyrights. Most or all of the creative activity must have occurred in the Chicago metropolitan area. The winner(s) will be honored at IPLAC’s annual meeting in May 2021, and will be presented with a plaque in recognition of the award. Access the nomination form here. If you want to volunteer for the screening committee or have questions about the nominations, please contact Van Economou at Van@EconomouIP.com. Recent past winners can be found here.
Trade Secrets Summit – Part I – March 18
IPLAC’s Trade Secrets and Unfair Competition Committee present Part One of IPLAC’s Trade Secrets Summit, reviewing trade secrets case law developments in 2020 and early 2021, and what civil practitioners should know about investigations and prosecutions of trade secret misappropriation under the Economic Espionage Act. The Summit will be held virtually from 12-2:30 PM Central Time and is free for Members. Register here.
Harmonizing Individual Decision-Making Differences to Maximize Team Effectiveness – March 24
This seminar, scheduled for Wednesday, March 24, at 4-6 PM Central Time, will enhance our comprehension of why we work as we do, the nature of our compulsions, and how we can leverage our strengths and manage our limitations to operate at top effectiveness in rapidly changing business environments. IPLAC Member Ritu Chander will present how an individual’s ingrained motivations lead to cognitive specialties and weaknesses. These patterns can lend to success in negotiations and be the core of workplace conflicts in the same breath. Ritu will teach us about the different types of interaction styles and decision-making styles, including the strong and weak areas of each and how each may be perceived by others with whom you interact. You can register for this event here.
Special Feature – Get to Know IPLAC Past President Patrick Burns
Initially drawn to patent law because he “liked gadgets” and “needed a job,” Patrick has turned that early interest into a career spanning four decades. During that time he has held countless leadership positions in IPLAC, including the presidency, and is one of the founding members of Greer, Burns & Crain. With such a long involvement with IPLAC and the legal community more broadly, Patrick sees the role the organization can have throughout a member’s career.
In Patrick’s view, IPLAC allows for new members to learn the business of practicing IP law and the big players in the industry. Personally, he feels that IPLAC gave him the rare chance as an experienced attorney to “get on his feet and talk about IP issues.” For existing members who would like to rise to new leadership positions, Patrick lays out a simple strategy: go to committee meetings and speak up. The common thread here is to take every opportunity to get noticed and make a name for oneself. Beyond opportunities for professional development that are central to IPLAC’s mission, Patrick reflects on how much he enjoys seeing longtime members and meeting new ones, while lamenting that such opportunities for meeting face-to-face have been sparse over the past year.
During his tenure as IPLAC President in 2009, Patrick led several initiatives to grow the organization. By encouraging committees to file amicus briefs, comment on judicial appointments, and host seminars for foreign associates, Patrick sought to raise the profile of IPLAC from a local organization to one with a broader national and international profile. Judge Newman of the Court of Appeals for the Federal Circuit was the guest of honor at the annual Judge’s Dinner that he hosted as President, a special point of pride for him. Within Chicago, Patrick pushed for greater outreach to students at local law schools, providing a bridge between future and experienced attorneys.
Though the pandemic has been a challenge for all, Patrick has been able to make time for one of his longstanding hobbies: woodworking. Humble as ever, he says that he has the experience of a “second semester sophomore” in the woodworking world, but has learned a lot this year building furniture.
Special Feature – Get to Know IPLAC Member Rachel Miller
Rachel, an associate at Latimer LeVay Fyock, focuses her practice on trademarks and copyrights, as well as business litigation. Though she joined IPLAC as a “1L” in 2017, Rachel has continued her involvement with the organization and is now the chair of the Internet and Advertising Committee, Vice-Chair of the Young Members Committee, and Vice-Chair of the Mentorship Committee. Rachel is also the newsletter Trivia contributor.
Rachel was certain from a very young age that she wanted to be an attorney, possibly before she understood what the term meant. It makes sense, however, considering she grew up in a family with strong ties to innovation and technology, spanning generations. For example, her grandfather invented semiconductor materials that are still found in computer chips today. As a child, she recalls visiting her father’s office at Hewlett Packard as a child and admiring the wall of plaques showing patents invented by scientists there. From these fundamental experiences, Rachel understood how much the patents meant to the inventors and wanted to be involved in the process of helping the inventors protect their creations.
Rachel appreciates the mentorship, knowledge, and experience she has gained from IPLAC membership, both as a law student and as a new attorney. IPLAC membership (and, in particular, committee involvement) introduced her to the relatively small and close-knit IP community in Chicago. Guidance from experienced members proved invaluable during her time in law school and reassured her that she could achieve her goals. At the same time, IPLAC’s programming gave her practical knowledge that she still uses in everyday practice. Going forward, Rachel hopes to get more involved, especially with the mentorship program. Having benefited greatly from mentorship as a law student, Rachel hopes to give back and help others find their paths.
Each year, Rachel looks forward to planning and attending the Rosé tasting event, and hopes to get one on the books for 2021. And because COVID-19 hasn’t stopped law school or the bar exam, she also has some great events planned for the mentorship committee – look for details in upcoming newsletters. Over the past year, Rachel has gotten into plant collecting and is the proud parent of over 40 new succulents, so don’t be surprised to hear if she’s leading a new gardening committee for IPLAC!
While generally credited to Frederick Graff, the original inventor is unknown, because the Patent Office in Washington, D.C. burned down in 1836, destroying all U.S. patent records. Ironically, this item could have likely helped. The name of the invention can be found here[RM1] .
The invention was the fire hydrant. Read more about the fire hydrant here.
 U.S. Patent No. 2,676,471, Method of Making and Distributing Snow, to Wayne M. Pierce, Jr., Assignee: TEY Mfg. Corp.
 This is not to be confused with the earlier patented invention in 1927 of “Artificial Snow” (white fluffy crystalline calcium sulphate) by local Joliet native, Ralph W. Simpson. U.S. Patent No. 1,746,717.
 This assumes that legislation is not revised to extend copyright duration beyond 95 years from first publication of the song.
 U.S. Trademark Reg. No. 0564311.
 See id.
 See, e.g., U.S. Trademark Reg. No. 4671158 for G&S: Beer, etc.