Israel says the year has gone by quickly. “Keeping everything running on time can be an achievement in and of itself,” she told AIPLA Daily Report. “There have been some new efforts that we have tried as well, so we are always doing what we can to enhance and improve what we do.”
Examining patent eligibility
One of Israel’s earliest actions was to appoint a 12-member task force to focus on patent subject matter eligibility. One of the issues it was charged with considering was whether the Patent Act should be amended to include a clearer, more predictable, and more-easily-applied standard than the current one delivered by the judiciary.
“They have been looking at some of the latest developments in the area of patentable subject matter with a group that covers a pretty broad base of industry experience,” says Israel, who is a partner with a focus on patent litigation at Mayer Brown LLP in Houston. “They have been trying to examine the problems that exist and what the potential solutions are in that area.”
Israel will bring the process full circle on Saturday morning at 8am with a President’s Forum on patent eligible subject matter titled “The Search for Solutions to a Growing Problem.”
“We will have an open discussion of some of the work of the task force and possible solutions going forward,” she says. “What I’ve asked the task force to do is to worry a little bit less about implementation and tell us what they think is the right solution. Let’s figure out what we think the right solution is and then we’ll work on how we get that implemented, knowing that we’re going to need to have consensus on the way.”
The USPTO has an important role to play in the future of subject matter eligibility. It released new guidance on the issue in the past year. “One thing I think we continue to do is maintain and hopefully enhance our dialogue with the USPTO,” says Israel.
Another hot issue during the past year has been the increasing popularity of AIA trial proceedings at the Patent Trial and Appeal Board. AIPLA collaborated with the USPTO in a series of roadshows with the Office in Santa Clara, Dallas and Alexandria focusing on patent quality and AIA trial proceedings.
Israel says AIA trials have become extremely important. “I think they are becoming the new normal,” she says.
The USPTO proposed new rule changes at the end of August, following some quick fixes in May. The Office last week extended the comment period on the new rules to November 18, after initially giving a deadline of October 19. AIPLA will be submitting its views, as it did last year.
“It is certainly something that is on everybody’s mind to try and make those proceedings as fair and balanced as possible and hopefully get them to where they need to be to operate as intended,” says Israel. “I think I can say pretty fairly that some of the changes that they proposed match up very closely to some of our comments from last October. There are certainly ones that I think are going in the direction we were looking for. It is an evolving process and the USPTO has been very open about wanting public input on what they can do to improve things. This is going to be evolving for a while.”
Member outreach has also been a big focus for AIPLA. It has appointed a dedicated communications staff member at its headquarters. Israel also appointed a communications task force to improve content, such as through the Notes + News newsletter.
There have also been a number of events for members. These include the Trade Secret Law Committee holding a summit in December, the annual Patent Prosecution boot camp was held on the west coast for the first time, and electronic and computer law and biotechnology roadshows.
“One thing that we tried this year that I think was really successful, and I hope to see this model as something we can use more in the future, is we worked with our IP Law Associations Committee to do a webinar that was part of our Front and Centre Discussion Series,” says Israel. “We did it on the specific topic of patent demand letters and what is happening at a state level. The IP Law Association Committee helped publicize the program through regional and local groups and some other associations. It was really a great way to get the word out about a topic that I think is growing in importance to our membership.”
Denise DeFranco will be taking over as AIPLA President after this year’s Annual Meeting. Israel identifies a number of issues for her successor.
“A big part of the job is keeping things moving along the course that they are moving,” she says. “There are still a lot of challenges coming up. Patent reform was a big area this year, and we are always waiting to see what will happen in Congress next. The patentable subject matter issues and the challenges dealing with AIA trial proceedings are all issues that she will be dealing with. In addition, on the legislative side there is copyright reform that is being looked at as well.”
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