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On April 5, 2021, the US Supreme Court overturned Oracle’s copyright win over Google, holding that Google’s use of Oracle’s programming code from the Java SE Application Programming Interface (API) in their Android platform was a fair use and did not violate copyright laws. The Court determined that Google’s use of only the code that was needed to allow programmers to work in a new and transformative program was a fair use of that material. Writing for a 6-2 majority, Justice Breyer declined to address the first question on copyrightability and instead resolved the case focusing on the question of fair use by referencing the four guiding factors in the Copyright Act’s fair use provision. Justice Thomas filed a dissenting opinion that the ruling bypasses the question of whether the software code is protected by the Copyright Act. AIPLA filed an amicus brief in this case on January 13, 2020.

On March 30, 2021, AIPLA, along with IPO, LES USA and Canada, and the NY IP Law Association, submitted a letter to the Office of the US Trade Representative to express support for the United States’ opposition to the TRIPS waiver proposal being discussed at the World Trade Organization (WTO). The letter points out that the TRIPS waiver proposal would waive a variety of IP rights related “to prevention, containment or treatment” of COVID-19. The proposal incorrectly portrays IP as a barrier, but it is expressed, to the contrary, that IP protection enhances developments. The letter states that there are no known examples where IP has been used to limit access to COVID-related technology ‒ rather innovator companies have partnered and shared IP to create tools to address the pandemic. Should the proposed TRIPS waiver be implemented, it is noted that it would have an immediate chilling effect on continued research and necessary collaboration.

On March 26, 2021, AIPLA submitted comments regarding the China National Intellectual Property Administration (CNIPA) Administrative Adjudication Measures for Early Resolution Mechanism for Drug Patent Disputes. In the comments, AIPLA requests clarification of handling of patent invalidity challenges, since substantial ambiguity remains. AIPLA requests an 8-month deadline to complete the adjudication in the Draft Measures, and requests extensions of notice periods and filing deadlines. AIPLA also requests that the Draft Measures include a corresponding provision providing that if a case has been accepted by either CNIPA or the People’s Court, any case subsequently filed in the other tribunal shall not be accepted on the same asserted claims. Finally, AIPLA requests that all possible appeals have been resolved or the time within which to appeal has expired without an appeal being filed.

As a community, we stand together in condemning the acts of violence against Asian Americans that have occurred over the past year. Recent events are an awful reminder that much work remains. We must unite to support each other, both personally and professionally, now more than ever. Let us ensure that AIPLA and the entire IP community are places where we listen to and value each other’s experiences and perspectives.

On March 22, 2021, AIPLA submitted comments to Senator Thom Tillis in response to the discussion draft of The Digital Copyright Act (“DCA”) of 2021. AIPLA’s comments largely mirror and reflect AIPLA’s positions expressed on prior occasions, with comments directed to the concepts addressed and not to any specific proposed language. AIPLA’s comments support the concept of advancing the DMCA towards a “notice-and-staydown” regime. AIPLA also advocates further study into the use of a standardized unique identifier that would more effectively identify content.

On March 22, 2021, AIPLA submitted comments regarding the notice of proposed rulemaking regarding disclaimer practice in patents and patent applications. AIPLA supports the Office’s proposed revisions to the rules and includes a suggestion to clarify the rules regarding disclaimers by parties to a joint research agreement.

AIPLA's amicus brief generally supports keeping the doctrine of assignor estoppel without supporting either party’s position, but allowing for certain exceptions consistent with the findings in Westinghouse Elec. & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342, 348 (1924). The brief distinguishes assignor estoppel from the doctrine of licensee estoppel that was abolished in Lear, Inc. v. Adkins, 395 U.S. 653 (1969), and also outlines the profound risks and cloud of uncertainty around assigned patents that might occur should the Court abolish assignor estoppel.

On February 26th, AIPLA submitted recommendations on the Association’s intellectual property priorities to the Biden Administration. AIPLA advocates for top-caliber USPTO leadership, including a variety of relevant requirements for appointees. Support was also expressed for continued adequate funding for the USPTO examination process to ensure high-quality patents. AIPLA suggested a multitude of initiatives to strengthen trademark registration, including but not limited to reinforcing existing trademark-related COVID relief measures, prioritizing effective and fair implementation of the Trademark Modernization Act, and preventing abuse of the U.S. trademark system. In relation to IP rights abroad, AIPLA supports efforts in raising the minimum standard of IP protections abroad so that they appropriately protect the investments of U.S. innovators. AIPLA also looks forward to continuing to collaborate with the National Council for Expanding American Innovation (NCEAI) and the Administration to advance diversity and inclusion initiatives.

On February 23, 2021, AIPLA filed comments in response to the USPTO’s Notice regarding the National Strategy for Expanding American Innovation. AIPLA's comments include suggestions for the support of individuals, including the implementation of shared workspaces, hubs, and labs, workshops, internships, and promotion of meetings and clubs, among other ideas. Some of AIPLA's comments regarding lowering the barriers to innovation in underrepresented groups include adjusting internal culture and increasing representation in leadership. READ MORE

On February 22, 2021, AIPLA filed comments in response to the USPTO’s Sovereign Immunity Study: Notice and Request for Public Comment, 85 Fed. Reg. 70,589 (November 5, 2020) (Docket Number: PTO–T–2020–0043). With respect to patent and trademark infringement, AIPLA believes that the record of reported cases provides support for abrogation of state immunity. With respect to trademark infringement, however, there are critical differences between those cases and patent and copyright infringement actions. READ MORE

AIPLA provided feedback to the USPTO on the implementation of the Trademark Modernization Act (TMA). The feedback three aspects of the TMA: general comments, comments on flexible response times, and comments regarding ex parte expungement and ex parte reexamination proceedings. AIPLA continues to advocate for a shorter response period to Office Action refusals that include only ministerial or procedural objections. AIPLA also provided feedback on a number of subsections regarding ex parte expungement and ex parte reexamination proceedings.

On February 2, 2021, AIPLA filed comments in response to the USPTO’s Notice regarding the Article of Manufacture Requirement for Design Patents under 35 U.S.C. 171. AIPLA indicated its support for a change in the interpretation of eligibility guidelines for computer-generated images to accept other articles of manufacture associated with the underlying programmed computer, instead of requiring that the image appear on a display screen.

The American Intellectual Property Law Association (AIPLA) appreciates the opportunity to comment on the Draft Implementation Rules of the Chinese Patent Law. Attached is a table listing our detailed comments, some of which are also summarized in the file download section.

AIPLA filed a response to the USPTO’s request for comments on proposed continuing legal education guidelines objecting to ongoing efforts by the USPTO to institute a de facto federal CLE requirement and reporting system, noting that the biennial registration requirements and reporting systems are unnecessary and may lead to an active practitioner fee. AIPLA also expressed concern that the proposal would eventually result in a mandatory CLE program requiring a costly infrastructure which would ultimately result in fees increases to support it. AIPLA expressed further concern that the rulemaking efforts may not have complied with rulemaking requirements.

On December 3, 2020 World Intellectual Property Organization (WIPO) Director General Daren Tang announced the newly appointed Deputy Directors General and Assistant Directors General, including former AIPLA Executive Director Lisa K. Jorgenson who will serve as Deputy Director General, Patents and Technology Center. Ms. Jorgenson will assume her new duties beginning January 1, 2021. For more information about WIPO, please visit www.wipo.int

AIPLA 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. ​

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.

As General Counsel, Mr. Berdan will serve as the principal legal advisor to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Mr. Berdan will also supervise the Office of General Counsel and its three component offices: the Office of the Solicitor, the Office of General Law, and the Office of Enrollment and Discipline. Over the past 25 years, Mr. Berdan has served in a variety of important legal positions, most recently, as General Counsel and Compliance Officer of Gaming Arts. Mr. Berdan will begin his new role at the USPTO on Monday, November 16.

On October 9, The USPTO published a notice seeking public input on proposed guidelines regarding continuing legal education (CLE). As we noted in an earlier notice, the final rule published on August 3, 2020, will require beginning March 1, 2022, that registered patent practitioners and individuals granted limited recognition to practice before the USPTO in patent matters, biennially submit a mandatory registration statement.

On October 13, 2020, the Supreme Court agreed to decide whether the Patent Trial and Appeal Board, as created by the AIA, violates the Appointments Clause in Article II of the Constitution. The Court granted certiorari in three consolidated cases (United States v. Arthrex, Inc., et al. 19-1434; Smith & Nephew, Inc., et al. v. Arthrex, Inc., et al., 19-1452; and Arthrex, Inc., v. Smith & Nephew, Inc., et al., 19-1458), but limited its review to two specific questions