president_message
President's Message
grewal_monica
Since the first newsletter in February, the last couple months have flown by with much happening in our Boston Patent Law Association community as well as in the national IP community. Our 25 Committees, thanks to President Elect Rory Pheiffer, have successfully convened several meetings and socials to get their constituent members discussing their committee agendas, and have already delivered results from these collective planning exercises in the form of more relevant and robust programming for the BPLA membership. Rory’s report in this newsletter regarding the events hosted to date provides the details of the BPLA’s educational programming. I was pleased to attend the first BPLA Case Law Committee meeting regarding some of the more contentious rules adopted by the Patent Trial and Appeal Board (PTAB) that concern the burdens placed on patent owners in AIA post-grant proceedings. A panel decision by the U.S. Court of Appeals for the Federal Circuit (CAFC) in May 2016, In Re Aqua Products, originally appeared to have confirmed that the PTAB’s rules regarding amended claims are proper. However, on August 12th, the full Court vacated the earlier decision and granted rehearing en banc. The discussion at the Case Law meeting revolved around the Court ordered supplemental briefing and argument on the following issues: (a) When a patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the United States Patent and Trademark Office (USPTO) require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. § 316(e)? (b) When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim? If so, where would the burden of persuasion, or a burden of production, lie? The ability to amend patent claims is often critically important to patent owners – but any shift in the burden of proof to the petitioner is expected to make post-grant reviews more difficult for patent challengers. I share this exemplar detail discussed at our Case Law Committee meetings to encourage our members to join in these open forum discussions regarding the recent decisions that keep us all in the know. Our agenda to cement the pathways between the BPLA and the USPTO has been well served already by at least the January visit by Trademark Trial Appeal Board’s (TTAB) Chief Judge Gerald F. Rogers who educated our members as to the recent rule changes, the April joint visit of the Judges from the TTAB and Patent Trial and Appeal Board (PTAB) who sat in session at Suffolk University Law School as well as a joint program with the Federal Circuit Bar Association Bench & Bar and the BPLA regarding the evolution of patent litigation that included Judges from our District of Massachusetts, the PTAB and the Federal Circuit Court of Appeals and was moderated by our immediate Past President, Erik Belt. At the national level, the PTAB Bar Association hosted its Inaugural Conference in Washington DC on March 1st – 3rd. (PTAB Bar Conference) It was a gathering that brought PTAB practitioners together with the PTAB Judges, Industry members, Judges from District Courts and the International Trade Commission (ITC) to discuss the impact of the decisions of the PTAB, appeals therefrom, interplay with patent litigation and the procedural postures in all these venues due to the Post Grant Procedures. It was both exciting and humbling to moderate a panel entitled “Complex Issues in PTAB Practice” that focused on motions to amend, joinder and consolidation, and requests for rehearing. I encourage our members to consider participating in these national Bar Association efforts as it is both gratifying to be a part of the camaraderie in our profession as well as having the benefit of enhancing our practice given that Post Grant Procedures have impacted both the litigation and prosecution of the patents in our individual practice areas. Chief Judge David Ruschke of the PTAB provided the keynote address early in the conference and provided statistics that documented the success and the popularity of the Post Grant Proceedings. A link to these statistics that illustrates the popularity and impact of these proceedings can be found here: 35 U.S.C. Section 101 and potential legislative solutions has been very much in the news as well. I had the pleasure of attending and discussing the problems and potential “cures” to the Alice tests at a President’s Forum hosted by the NYIPLA and moderated by David Kappos, who served as the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office from 2009 to 2013. Representatives of the National Bar Associations of the IPO, AIPLA and the ABA attended the closed door Chatham style forum. Drawing from the BPLA’s rich history of providing comments to the USPTO Section 101 initiatives and guidelines, our articles and even member Amicus Briefs, and with the support of the Patent Law Committee, the BPLA contributed to the discussion as documented in a report by Jonathan Roses in this edition of the newsletter. The report provides a timeline and summary of the evolution of the case law with respect to subject matter patentability that is a useful resource to understanding the issues being discussed with respect to the two-step inquiry of the Alice test. A couple of photographs from the Presidents forum are below.
PDF
homefacebookgpluslinkedInmail
NEWSLETTER ARCHIVE
Volume 48, Issue 2
BPLA-logo
TOC
Index
Community Calendar Read more >
Table of Contents
Message from the President Monica Grewal
Read more >
Report of the Giles Rich Moot Court Competition
Read more >
< Back
The BPLA Files Amicus Curiae Brief in Wi-Fi One, LLC v. Broadcom Corp.
Read more >
Announcement of 7th Annual Invented Here! Program
Read more >
TTAB Proceedings Hosted by BPLA and Suffolk University Law School
Read more >
Annual Judges Dinner
Read more >
BPLA’S 2017 Annual Writing Competition Is Now Accepting Entries
Read more >
IP Due Diligence: The Five Questions You Must Ask in Corporate Transactions
Read more >
BPLA Committee Report
Read more >
Undiscovered “discovery”: Measures available in European civil law systems to obtain evidence in possession of the counterpart
Read more >
Report from the NYIPLA Section 101 Forum 2017
Read more >
Limitations on Enforceability of Patent Rights
Read more >
calendarcalendar__2_
PTAB Proceedings Hosted by BPLA and Suffolk University Law School
Read more >
BPLA International and Foreign Practice Committee Hosts Event on Strategies for Prosecuting Biotech and Life Science Patents in China
Read more >
2 Ways Courts Approach Willful Infringement After Halo
Read more >
4 Factors Influencing Enhanced Damages After Halo
Read more >
Trademarks and Bankruptcy – The Difficult Mission to Harmonize Continues
Read more >
Message from the Editor-in-Chief
Read more >
Members on the Move
Read more >
TOC