August/September 2017

NYIPLA The Report 


Annemarie Hassett, President’s Corner
As the alarm sounds for that wake-up call aka September (whoa, did I take a vacation this summer, or was that only a dream?), brace yourselves: It’s a bumpy year ahead for the IP world. SCOTUS will decide next term, via Oil States v. Greene’s Energy Group, the constitutionality of the USPTO (through the Patent Trial and Appeal Board (PTAB), its Article I court) revoking granted patents in inter partes review proceedings (IPRs), and various tech sectors are lobbying Congress for and against efforts to amend Section 101 (the patentable subject matter eligibility statute). Read more>>

An Interview with 2017 NYIPLA Inventor of the Year Award Winner Dr. Adrian Krainer
By: Mitch Hadley, Inventor of the Year Award Committee
The New York Intellectual Property Law Association (NYIPLA) annually presents an Inventor of the Year Award to an individual who, through his or her inventive talents, has made worthy contributions to society by promoting “the progress of Science and useful Arts.” Earlier this year, the NYIPLA was pleased to name Dr. Adrian Krainer the Inventor of the Year for 2017. Read more>>

August/September 2017 IP Media Links By: Jayson L. Cohen
August 2017 saw issues relating to Chinese policies and practices concerning technology innovation and IP protection in the mainstream news, as reflected in articles published in the New York Times. On August 1, Keith Bradsher published an article entitled, “Trump Administration Is Said to Open Broad Inquiry Into China’s Trade Practices.” Read more>>

Increasing Trademark Scams Discussed at USPTO Forum 
By: James L. Bikoff and Darlene Klinksieck
In late July, the USPTO and TPAC (the Trademark Public Advisory Committee) hosted a public roundtable entitled “Fraudulent Solicitations to Trademark Owners.” The roundtable was chaired by Mary Denison, Commissioner for Trademarks; opening remarks were provided by Joseph Matal (currently performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO). Read more>>

Historian’s Corner: As Time Goes By - IP & Longevity By: Dale Carlson
If you are a master of IP trivia, you may know that our nation’s longest-lived, active federal judge was also a patent lawyer. Judge Giles S. Rich of the U.S. Court of Appeals for the Federal Circuit passed away at ninety-five years old, having spent nearly half his life on the Bench.
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Supreme Court 2016-2017 IP Case Review By: Charles R. Macedo, Chester Rothstein, Jung S. Hahm, Marion P. Metelski, Jessica A. Capasso, David P. Goldberg, Amster, Rothstein & Ebenstein LLP
In the past term, the Supreme Court continued to show a keen interest in intellectual property issues. The Court issued opinions in five patent cases, one design patent case, one trademark case, one copyright case and even a trade secret case. Read more>>

 NYIPLA Point and Counterpoint

IPRs Are a Constitutional Exercise of Congressional Authority to Empower an Administrative Agency to Determine the Validity of Patents By: Melvin C. Garner
On June 12, 2017, the United States Supreme Court granted Oil States Energy Services’ (“Oil”) petition for certiorari to review the Federal Circuit’s summary affirmance of a Patent and Trial Appeal Board (“PTAB”) decision. The grant of certiorari was to determine: “Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.” Read more>>

Oil States Energy Services, LLC v. Greene’s Energy Group, LLC: Patent Rights, Public or Private and Whose Thoughts and Ideas are They Anyway? By: Robert J. Rando
“[C]ommunal ownership violates every instinct of human nature. It destroys initiative, nullifies free agency, suppresses inventive exploration, minimizes the dignity of the individual and makes a god out of an abstract thing called ‘The State’- to which is delegated complete, unrestricted control over life, liberty and property. . . . Like so many other weak systems of government, it can survive only in an atmosphere of a slave state, ruled by a king or a dictator.” Read more>>

 NYIPLA Past Events

Mentoring Program Kick-Off Event

On July 11, 2017 from 6:00 p.m. to 8:00 p.m. at Latitude Bar & Lounge, the NYIPLA held a kick-off event to start its new Mentoring Program. The event was a social gathering that was open to all mentors, mentees, and NYIPLA members. Read more>>

The NYIPLA Sponsors Its Fourth Successful Annual Summer Associate Moot Court Program at the Court of Appeals for the Second Circuit
 By: Robert J. Rando
On July 18, 2017, the Court of Appeals for the Second Circuit (the Second Circuit) once again graciously hosted NYIPLA’s Annual Second Circuit Summer Associate Moot Court Argument CLE Program. This year’s hypothetical fact pattern was derived from the Supreme Court’s recent opinion in Star Athletica, LLC v. Varsity Brands, Inc., concerning whether a feature incorporated into the design of a useful article is eligible for copyright protection under the Copyright Act. Read More>>

Trademark Law and Practice Committee Presents a Half-Day Program
By: Dyan Finguerra-DuCharme, Michael C. Cannata, and Frank Misiti
On July 19, 2017, the Trademark Law and Practice Committee continued its tradition of sponsoring a half-day CLE seminar and presented a program entitled “Hot Topics in IP Law.” Read more>>

Moving Up & Moving On

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Welcome New Members

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NYIPLA Publication Committee Editorial Team
​Committee Co-Chairs TaeRa Franklin and Liz Murphy
Committee Members Jayson Cohen, Bobby Greenfeld, Mitchell Hadley, 
Keith McWha, Ben Natter, Lauren Nowierski, Margaret Welsh