Volume 49, Issue 3
It’s hard to believe that our summers are winding down and that fall is basically upon us. I hope our members had an opportunity to find some time to enjoy summer in New England and/or traveled for enjoyment outside of New England. Whatever the case may be, I can attest that the summer has been chock-full of successful collaboration amongst members and others with common interests.
“Alone we can do so little; together we can do so much.”
The unofficial kick-off to the BPLA Summer began with the Judges Dinner on May 31. As detailed in the newsletter, we dialed up a picture-perfect evening to honor the Federal judiciary, including 21 judges from the Federal Circuit, the District of Massachusetts, and, for the first time, the Patent Trial and Appeal Board (PTAB). We also recognized the collaboration that led to the implementation of the new Local Rule 16.6, which went into effect on June 1, honored this year’s recipient of the BPLA Distinguished Public Service Award, The Honorable Judge F. Dennis Saylor, IV, and listened to interesting and entertaining remarks from our keynote speaker, Dr. Latanya Sweeney. Thank you to our sponsors, the members of the judiciary and their guests, as well as our members and their guests, who attended, and those who helped the evening run smoothly.
On Friday, August 10, Governor Charlie Baker signed into law an economic development bill, which included adoption language for the Uniform Trade Secrets Act and language that restricts noncompete agreements. However, the Governor explicitly vetoed a section of that bill—Section 20—designed to create a new cause of action in the Commonwealth for “bad faith assertions of patent infringement,” which would have become a new section under Chapter 93 claims. While you may know this development, what you may not know is that the BPLA was on the frontlines of this issue, and, through a collaborative effort with other interested parties, the BPLA helped put a “pause” on the adoption of this cause of action.
The issues arose rather quickly. The possibility of the new Chapter 93 cause of action was not brought to the Board’s attention until the beginning of August. After learning about some of the concerns of the proposed language of Section 20, and in particular some changes to the language in this version of Section 20 versus a previous version that was introduced in the Massachusetts senate in earlier legislative sessions, members of the BPLA Board became concerned that Section 20 may be implemented with too much haste. While the BPLA Board was not prepared to take a position about whether creating this cause of action was a good or bad idea, it did think more time was needed to adequately assess the merits of such a cause of action. The Board feared there may be unintended consequences if the legislation, as worded, was enacted.
The BPLA discussed this issue with other concerned parties and ultimately spoke with both Governor Baker’s office and Secretary Jay Ash’s office prior to the veto, recommending action be taken that would allow this portion of the legislation to be further vetted before enacting a new cause of action under Chapter 93. Subsequently, Governor Baker vetoed this section, reasoning that the language was not tailored narrowly enough and could have unintended consequences. Governor Baker and Senator Eric Lesser, the senator who championed the Section 20 provisions, have both indicated a desire to revisit this cause of action in the future. The BPLA plans to work with the offices of Governor Baker, Secretary Ash, and Senator Lesser to determine if creating a cause of action of this nature is advisable, and if so, what the language tied to such legislation should state. Collaborating together was central to getting the government to hit pause on this issue, and will again be key to consider the issue in the future.
Speaking of successes, our Amicus Committee once again found success, and this time against great odds. As previously detailed, the Amicus Committee filed an amicus brief requesting that the Supreme Court grant a writ of certiorari in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. Nine others did as well, including the American Intellectual Property Law Association (AIPLA), the Intellectual Property Owners Association (IPO), the Massachusetts Biotechnology Council, and the Biotechnology Innovation Organization (BIO). Having a writ of certiorari granted at the Supreme Court is extremely rare. Empirical data illustrates a success rate for all writ of certiorari petitions is less than five percent. Despite these odds, on June 25, 2018, the petition was granted. Congratulations to our Amicus Committee, and the other organizations who also supported granting a writ of certiorari. Together we can do so much.
Many of our members were likely part of the 16,000+ attendees of the BIO International Convention this past June. For those who made time for two programs that piggybacked on the tail end of BIO, you surely were not disappointed with the content of the collaborative programs the BPLA organized with the European Patent Office (EPO). On June 7, our International and Foreign Practice Committee and our Computer Law Committee teamed with members of the EPO to put on a morning workshop about technical inventions in European patent law. The next day our Biotechnology Committee and our Chemical Patent Practice Committee teamed with members of the EPO to put on a morning workshop about patenting biotech at the EPO. By accounts from those who attended, the information exchange and discourse was top notch. Thank you to our committee chairs for working together with the EPO to put on such high quality events.
Our Patent Office Practice Committee has been particularly hard at work this summer. On July 9, 2018, the Committee Co-Chairs Jonathan B. Roses (lead author), Timothy V. Fisher, and Nicole A. Palmer, in collaboration with Contested Matters Committee Co-Charis Andrej Barbic, Rachel L. Emsley, and Stephanie L. Schonewald, and other members of the BPLA, submitted Comments on the Notice of Proposed Rulemaking for Changes to PTAB Trial Claim Construction Standard. In the Comments, the BPLA articulated, among other positions, that it did not oppose replacing the Broadest Reasonable Interpretation (BRI) Standard with the Phillips Standard applied in federal district courts and International Trade Commission proceedings.
On August 20, 2018, the Committee Co-Chairs Fisher (lead author), Palmer, and Roses, in collaboration with other members of the BPLA, submitted Comments on Changes in Examination Procedure Pertaining to Subject Matter Eligibility. In the Comments, the BPLA indicated its support for the changes in examination procedure, and provided some suggestions for changes to the particulars of the examination procedure. Thank you to Tim, Jon, and Nicole, and the others involved in these two comment submissions. It truly was a team effort to tackle both comments.
I would be remiss if I did not thank all of those who helped make the return of the BPLA Summer Outing an enjoyable experience. Despite inclement weather, over 100 members and guests came to the New England Aquarium to celebrate BPLA Family Day at the Aquarium. You can read a bit more about the event, and see some pictures, in this issue of the newsletter. I owe a tremendous debt of gratitude to the many people at Nutter—particularly Marissa McMahon, Colleen Bidgood, and Derek Roller—as well as Constance Brennan for the BPLA, for their help in making this event worthwhile.
As we move into fall, there will be plenty of opportunities to benefit from the fruits of ongoing collaborations. In September, the Trademarks and Unfair Competition Committee is collaborating with the Trademark Trial and Appeal Board (TTAB) to host an event at which TTAB Judge Peter Cataldo will be the featured speaker, and the Contested Matters Committee is collaborating with the Arthur J. Gajarsa Inn of Court to host a panel of judges that include a District Court judge, a PTAB judge, and The Honorable Arthur J. Gajarsa (Ret.) of the Federal Circuit.
Two of our more popular and well-known events will be hosted in October: Making Connections in Boston’s IP Community, which is hosted by the Law School Committee, and the Invented Here! Final Program, which is hosted by the Invented Here! Committee. Both of these events are the result of many hours of hard work with many members of the BPLA. And in November, we will again partner with the World Intellectual Property Office to host our annual PCT and Madrid Protocol Seminar. This year’s Seminar will be held in Concord, MA, carrying on our efforts to alternate this programming between the city and the suburbs.
As you can see, many members of the BPLA, and outside of the BPLA, are working together to achieve many successes—providing input on important legislation and administrative rules, and hosting wonderful educational and social events. Let’s use this fall to continue to find ways to work together, and in doing so, in the words of Helen Keller, continue to “do so much.”
2018 Ⓒ Boston Patent Law Association
Message from the President Rory P. Pheiffer
Officers and Board of Governors
2nd Annual Summit on Life Sciences IP Due Diligence
Community Calendar
10 Millionth Patent
Supreme Court Allows Recovery of Profits Outside of US
Read more >
New District Of Massachusetts Local Rules
BPLA Family Day at the Aquarium
Message from the Editor-in-Chief
Job listings
BPLA Comments on Notice of Proposed Rulemaking for Changes to Patent Trial and Appeal Board Trial Claim Construction Standard
Members on the Move
Judges Dinner Summary
Comments on Changes in Examination Procedure Pertaining to Subject Matter Eligibility
9th Annual Invented here! Program