Advocacy Articles - Standard List
-
AIPLA Comments on Discretion to Institute Trials Before the Patent Trial and Appeal Board
December 3, 2020
The American Intellectual Property Law Association today filed a response to the USPTO’s October 20, 2020 request for comments on discretion to institute trials in inter partes review (IPR) and post grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB). The USPTO’s request solicits input on whether rulemaking is necessary and the type of rules it should adopt, but does not propose any rules. -
UNITED STATES OF AMERICA, Petitioner, v. ARTHREX, INC. ET AL., Respondents. Case No. 19-1434, 19-1452, amicus brief filed 12/2/2020.
December 2, 2020
AIPLA’s brief supports reversal of the Federal Circuit’s decision and argues that Supreme Court precedent does not support such a rigid, factor-specific approach, instead favoring a flexible analysis to assess whether an officer is “principal” or “inferior.” The brief explains that, while the question is a close one, the totality of the circumstances under this flexible approach supports finding that APJs are inferior officers who are constitutionally appointed. -
AIPLA Comments on Revised Trademark Examination Guide 3-19 Examination of Specimens in Commerce: Digitally Created/Altered or Mockup Specimens
October 12, 2020
AIPLA appreciates the Trademark Office’s efforts to address the issue of fraudulent trademark specimens that incorporate digital alterations, thereby creating the false impression of use of a trademark in the marketplace. We also appreciate the Office’s transparency in providing clarity as to how the USPTO and Examiners will address fraudulent specimens. While AIPLA further recognizes the need for the USPTO to focus its attention on the authenticity of submitted specimens and whether they show marks as actually used in commerce as required by the Trademark Act, AIPLA has suggestions and comments on the revised Examination Guide. -
AIPLA Comments on Proposed Rule Changes in Representation of Others Before the USPTO
September 29, 2020
AIPLA appreciates the USPTO’s willingness to continuously improve the conduct rules applicable to practice before the USPTO. AIPLA previously provided substantive comments to the last major revision of the USPTO Rules of Professional Conduct (“USPTO Rules”), which overhauled the landscape of practice before the USPTO from being based upon the former American Bar Association (“ABA”) Code of Professional Responsibility to the more current Model Rules of Professional Conduct. Within those comments, AIPLA addressed concerns regarding the confidentiality rules. In response to comments, USPTO clarified the ability of a representative to withdraw in certain situations. See, e.g., 78 FR 21090. -
AIPLA's Comments on the H.R. 6196, the Trademark Modernization Act of 2020
September 8, 2020
AIPLA supports the Trademark Modernization Act, legislation amending the federal Lanham Act to authorize the administrative invalidation by the Director of the U.S. Patent and Trademark Office of registrations covering marks that either have never been used in commerce, or are not used in commerce by the relevant date under the statute for obtaining a registration. -
Comments Submitted Pursuant to Sovereign Immunity Study: Notice and Request for Public Comment, 85 Fed. Reg. 34,252
September 2, 2020
AIPLA's comments in response to the above-referenced U.S. Copyright Office Notice and Request for Public Comment, in the wake of the U.S. Supreme Court’s ruling in Allen v. Cooper, 140 S.Ct. 994 -
AIPLA Comments on Proposed Rulemaking for the Proposed Trademark Fee Schedule
July 31, 2020
AIPLA appreciates the Trademark Office’s efforts to take into consideration the comments previously submitted by AIPLA and other stakeholders regarding new trademark fees. AIPLA understands the needs of the Office to generate additional revenue from its users in order to facilitate effective operations. For this reason, our comments are limited to a small number of proposed fees. -
AIPLA Comments to USPTO on the Proposed PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence
June 26, 2020
AIPLA supports the proposed rulemaking that is the subject of this comment, including updating the rules to comply with the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), expressly providing for filing of sur-reply briefs, and removing the presumption favoring petitioners on contested facts based on pre-institution testimonial evidence from the patent owner under 37 C.F.R. §§ 42.108(c) and 42.208(c). -
Comments to Copyright Office on Registration Modernization
June 1, 2020
AIPLA supports and appreciates the Copyright Office’s efforts to modernize the copyright registration system. -
AIPLA Comments to USPTO on the “Small Entity Government Use License Exception”
March 24, 2020
AIPLA agrees that the proposed 37 CFR §1.27(a)(4)(i)(B) will provide clarity regarding the exception for a government use license under 15 U.S.C. § 3710d(a) that a Federal employee is obligated to grant if he/she is allowed to retain title to the workplace invention. -
Recommendations on the Position of Register of Copyrights
March 23, 2020
AIPLA discusses the traits the association views as essential for the position of Register of Copyrights. -
Comments to Copyright Office Pursuant to Notification of Inquiry Regarding Online Publication
March 23, 2020
In AIPLA’s view, issues and confusion regarding “online” publication arise from the statute itself. If such issues are to be resolved, we believe that this is best done by Congress. -
AIPLA Comments to USPTO Regarding the Updated Examination Guide for Mandatory Electronic Filing of Trademark Applications
February 26, 2020
AIPLA believes that the revised guidance regarding the submission of an acceptable email address for a trademark owner who is represented by counsel is subject to various interpretations, leading to significant uncertainty for our members. -
United States Patent and Trademark Office v. Booking.com B.V., U.S., No. 19-46, amicus brief filed 1/13/2020.
January 13, 2020
AIPLA argues that the addition of a generic top-level domain (gTLD) to an otherwise generic term can, under certain circumstances, create a protectable trademark. However, a per se rule that a mark consisting of a generic term and a gTLD is generic should be rejected by the Supreme Court. -
Google LLC v. Oracle America Inc., U.S., No. 18-956, amicus brief filed 1/13/2020.
January 13, 2020
AIPLA asks the Supreme Court to hold that Java API software is eligible for copyright protection as a literary work; argues that the scope of copyright does not extend to the declaring code portions of the Java API as a method of operation under section 102(B); and contends that fair use factors must be weighted on a case-by-case basis. -
AIPLA Comments to USPTO on Request for Comments on Intellectual Property Protection for Artificial Intelligence Innovation
January 13, 2020
AIPLA submitted these comments in response to the Department of Commerce’s Request regarding issues related to copyright, trademark, and other intellectual property rights impacted by artificial intelligence innovation. -
AIPLA Comments to USPTO on Rules of Practice To Allocate the Burden of Persuasion on Motions To Amend in Trial Proceedings Before the Patent Trial and Appeal Board
December 23, 2019
AIPLA appreciates the Office’s efforts to improve AIA trial proceedings, which have become pervasive since their initial implementation in September 2012. -
AIPLA Submits Amicus Brief to PTAB in Hunting Titan, Inc. v. Dynaenergetics & Co. Kg
December 20, 2019
The Patent Trial and Appeal Board should make any determination of unpatentability based on the arguments and evidence of record. -
AIPLA-IPO Joint Letter to Senate Judiciary Committee in Support of Counterfeit Goods Seizure Act
December 9, 2019
The American Intellectual Property Law Association submitted a letter to the Senate Judiciary Committee in support of the Counterfeit Goods Seizure Act of 2019. -
AIPLA Comments to USPTO on Patent Term Adjustment Reductions in View of the Federal Circuit Decision in Supernus Pharm., Inc. v. Iancu
December 3, 2019
AIPLA agrees that that many of the Office’s proposed revisions to 37 CFR §§ 1.704(c)(1) through (c)(14) are consistent with the requirement set forth in the Supernus decision that a reduction in patent term adjustment correspond to “the period from the beginning to the end of the applicant’s failure to engage in reasonable efforts to conclude prosecution.”