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2015 Winter Newsletter
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   Winter 2015

   BPLA Newsletters
 BPLA NEWSLETTER
 Volume 45, Issue 3

President's Message by Donna M. Meuth

It is hard to believe that this is my final message as President of the BPLA.  I want to take this opportunity to thank all the members for their support.  I’d also like to thank the Committee Chairs and the BPLA Board of Governors for their support, time, and hard work over this past year.

 

It has been a very busy year and much has been accomplished.  We have had many programs and events, such as the Judges Dinner, the Invented Here! Competition, the BPLA Writing Competition, the PCT Seminar, and the many other Committee planned events.  We have also filed written comments in response to U.S. Patent and Trademark Office requests for comments as well as amicus briefs in important cases.

 

As I mentioned during last year’s Annual Meeting, my focus for the year was on education and working with the local universities.  With the changes under the America Invents Act now being seen in prosecution and with the surge in Inter Parties Review cases as well as the first Post-Grant Review cases being filed and also the many recent Supreme Court cases directed to IP, education of our members is a priority.  Many of our committee events were directed to these issues.  In addition, we have expanded the case law review sessions to be the BPLA IP Case Law Club to include cases not just relating to biotechnology but to cases relating to other technologies as well.

 

We have also had several special events in conjunction with local universities.  In the spring, we cosponsored with the Broad Institute a program on “Hot Topics in European and US Patent Law.”  We had a terrific turnout with over one hundred members registered, and heard about pressing issues in both the US and Europe, from a great panel of speakers.

.

 "It has been a
very busy year
and much has been accomplished"

 

 

After many years of hosting the TTAB in Boston, for the first time, we welcomed both the TTAB and PTAB to Boston, as they held hearings in the Moot Court Room on the campus of Northeastern University School of Law.  The morning program focused on trademarks at the TTAB. Chief Judge Rogers first explained "Why the TTAB is not like the PTAB or District Court," followed by John L. Welch, TTABlog and Lando & Anastasi, who shared his views on "The Top 8 or 9 Losing TTAB Arguments." A three judge panel of the TTAB then heard the final argument in an inter partes proceeding.  The luncheon keynote speaker was Kevin Johnson, Associate General Counsel, The Gillette Company, who gave a great presentation and discussed "Brand Intellectual Property"; his presentation included many interesting examples showing the importance of...


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Table of Contents


Downloads


The theme of this issue is patent eligibility in the wake of the Supreme Court’s recent opinion in Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). We have included five articles from BPLA members dissecting the opinion, examining USPTO subject matter eligibility guidelines, and discussing the potential effects on patent prosecution and litigation. We hope you enjoy these articles.




Alice Doesn't Live Here Anymore:  A Critique of the Supreme Court’s “Abstract Ideas” Test
by Erik Paul Belt, McCarter & English LLP




Erik Paul Belt

In Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Supreme Court held that certain computer-implemented method and system claims of the challenged patents are invalid under 35 U.S.C. § 101 because they are drawn to an “abstract idea.”  Never mind that nothing in § 101 expressly excludes the patenting of abstract ideas.  This exception to § 101’s otherwise broad scope of patentability has been the judicially-created rule for over 160 years.   Whether the rule is wise or sound from either a legal or policy perspective is a debate for another day.  What matters is that the Court has applied the rule without actually defining (and perhaps understanding) what “abstract” means.  Judging by the post-Alice cases in the courts and Patent Office, this failure or refusal to define the term, or even to understand it in the context of patent law, will lead to the unwarranted invalidation of numerous and otherwise meritorious patents both in the software realm and beyond.

 

In this article, I attempt to explain what the Court now means when it says that a claim is drawn to an “abstract idea” and why the Court’s analysis may have unintended consequences.  By understanding the Court’s analysis, patent prosecutors and litigators may develop better strategies for drafting, enforcing, preserving, or challenging patents directed to computer-implemented methods and systems.

 

I. THE ALICE OPINION

Alice Corporation owns several patents directed to mitigating risk in financial transactions, particularly so-called “settlement risk,” which is the risk that a party to a financial transaction (e.g., a currency trade or stock swap) will have insufficient resources to complete the transaction when called upon to do so.  The patents solve this problem by employing a computer system as an intermediary to facilitate the exchange of obligations.  Essentially, the intermediary creates “shadow” records to keep track of each party’s account balance and then allows a given transaction only if the parties have sufficient funds to pay up.   For purposes of the litigation, the litigants agreed that Claim 33 of U.S. Pat. No. 5,970,479 represents each of the asserted method claims.  Claim 33, with key limitations highlighted, appears below.

 

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Not Ghost – Machine
by Michael Bergman Bergman & Song LLP



 

Michael Bergman

Bilski, Mayo and Alice have raised serious concerns among those who hold and seek rights under the U.S. patent system.  The standard evolving in these cases, for what qualifies as statutory subject matter under 35 U.S.C. §  101, places new focus on whether a claim is too "abstract" to be patentable.

 

It is a standard that is ill-defined, with the Court conceding in Alice that it is not prepared to draw any firm lines around the term "abstract."  The Court recognizes in Mayo, and again in Alice, that "all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas," and that without care the approach it has taken can "swallow all of patent law."

 

In Alice, this statement is offered as hyperbole, but there is real economic risk associated with the approach employed in these cases.  Effective patent protection is a linchpin of the venture capital system, which provides initial funding for a great deal of startup activity in the U.S. economy.  The instant cases have a direct impact on software, business methods and biotechnology, but there is no ready boundary that renders other technologies immune.  As a practical matter, Alice is an invitation to arbitrary case-by-case evaluation of patentability in every field, and to the invalidation of broad swaths of issued and economically important patent claims.

 

It is not hard to understand what has moved the Court in this direction.  At its root, U.S. law reflects public opinion.  As a matter of practical necessity, most of the population understands the law in terms of general impressions.  It is fair to say that the general impression of what patents have traditionally covered, and therefore should cover, involves tangible machinery and manufacturing processes.

 

At first glance, the diagnostic methods of Mayo, and the software and methods of Bilski and Alice seem not very tangible.  Such claims, in conjunction with what is arguably overreaching by some patent seekers, unscrupulous activity by a few others, and self-interested political attacks by some with extraordinary market power, have led to diminished public respect for patents and the patent system.  It is a disrespect that is especially marked in relation to software and business method claims.

 

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Slaying the Jaberwock of Patent Eligibility — Patent Practice Issues and Suggestions in a post-Alice World

by Daniel Lev, Ph. D., Pierce Atwood, LLP and Reza Sadr, Ph.D., Pierce Atwood, LLP




Daniel Lev, Ph.D.

 


Reza Sadr, Ph.D.

What claims are patent-eligible under Section 101 of the Patent Act? With the recent spate of Supreme Court cases addressing patent eligibility, this threshold question has turned into a formidable hurdle for prosecuting and litigating some types of patent applications. See, e.g., Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al., USPTO memorandum dated June 25, 2014 (available at http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf); see also, McRO, Inc v. Activision Publishing, Inc., Civ. No. CV 14-336-GW (C.D. Cal. 2014). The patent bar is left wondering how to navigate these recently erected barriers. In particular, academicians and practitioners are pondering the meaning of some fundamental questions invoked by these rulings, questions such as what is a “law of nature,” what is an “abstract idea,” or — for that matter — what is an “inventive concept.” The law of patent eligibility is certainly in flux.

 

We, patent practitioners, however, do not enjoy the luxury of watching from the sidelines to see how the law develops; instead, every day our clients require us to draft strong patent applications that cover their inventions. To that end, we need to constantly revisit and revise our best practices to comply with the yet unsettled law.

 

In this article, we offer some preliminary thoughts on how to capture the “inventive concept” when drafting patent applications that may otherwise be deemed directed to an “abstract idea” or a “law of nature.” We present these thoughts as small contributions to the ongoing discussion in the patent bar about how to balance ourselves on these shifting grounds. Some of these thoughts resulted from our discussions with other members of our community, and we look forward to hearing more about how others are approaching the same issues.

 

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Submitted on October 28, 2014


PIERCE ATWOOD LLP. PH 617.488.8163



USPTO Guidelines on Patent Eligibility of Natural Products/Laws of Nature Are Strongly Criticized by Stakeholders and Intellectual Property Experts

by Leslie McDonell, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP




Leslie McDonell

 



            Like the business method and software industries, the biotechnology, natural-product pharmaceutical, and medical-diagnostic industries have been significantly affected by the recent spate of U.S. Supreme Court decisions involving patent eligible subject matter.  In response to these decisions, particularly Mayo v. Prometheus and Association for Molecular Pathology v. Myriad, the USPTO issued guidelines for its examiners explaining its interpretation of these cases.  This March 2014 Guidance substantially changed the methodology employed by the USPTO to evaluate patent eligibility of  claims that “recite or involve a law of nature/natural principle, natural phenomenon, or natural product.”

 

            After a number of public appearances by USPTO officials to explain the basis for and implementation of the Guidance, during which the USPTO received strong comments from industry groups, stake holders, and intellectual property attorneys, the USPTO invited written comments from the public on the March 2014 Guidance. Comments from approximately 80 industry and intellectual property organizations, academic and research institutions, public interest groups, companies, law firms and individuals were submitted by the July 31, 2014 deadline.  Of this total, five public interest groups and professional associations (AARP, ACLU, College of American Pathologists, Center for Food Safety, and the Association for Molecular Pathology), and two individual commenters reacted favorably to the USPTO Guidance.  The majority of the remaining comments express sentiments ranging from concern to predictions of disastrous consequences. Some commenters provide suggestions for specific changes to the Guidance.  Others focus more on the “big picture,” criticizing the USPTO’s interpretation of the case law and allegedly unauthorized change in legal standards.  

 

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Measured Response, Thus Far, Following Supreme Court Decision on Software Patent

by David Powsner and Michael Visconti, Nutter, McClennen & Fish, LLP




David Powsner

 


Michael Visconti

 




In June 2014, the United States Supreme Court issued a decision in Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). Although the decision may yet have broad-reaching implications on software patents, the response by the United States Patent & Trademark Office and the lower courts has been measured, thus far. 

At issue in Alice was whether claims to use of a computer as a third-party intermediary in the exchange of financial obligations were eligible for patenting under 35 U.S.C. § 101.  The Court said they were not—holding that they covered no more than a generic computer implementation of an abstract idea and, as such, were unpatentable under the statute.  Alice, 134 S. Ct. at 2352, 2360.

The Court applied a two-step analysis based largely on its prior decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012).  The first step, the Court reiterated, requires determining whether a claim at issue is directed to a patent-ineligible concept, to wit, a law of nature, a natural phenomenon or an abstract idea.  Alice, 134 S.Ct. at 2355.  If so, the Court continued, the arbiter must determine whether that concept is transformed into something inventive by recitation of an element or combination of elements which “in practice amount[s] to significantly more” than the concept itself.  Id.

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Job Postings




 

 

 

Patent Paralegal, Eisai Inc

 

Assistant General IP Counsel, Fresenius Medical Care

 

Patent Attorney, Sunstein Kann Murphy & Timbers LLP

 

Technology Specialist, Wolf Greenfield

 

Patent Paralegal (U.S. Filings), Ropes & Gray LLP

 

Litigation Associate, Sunstein Kann Murphy & Timbers LLP

 

IP Docketing Supervisor, Ropes & Gray LLP

 

Patent Attorney, Daly, Crowley, Mofford & Durkee LLP

 

The Nomination Committee of the Boston Patent Law Association convened and present the following nominations for the upcoming BPLA election of Officers at the Annual Meeting on December 9, 2014.

 

Officers and Board Member Nominations for 2015 are as

 

President-Elect: Erik Paul Belt, Vice President: Monica Grewal,

Treasurer: Rory Pheiffer, Secretary:ᅠDeirdre Sanders

Board of Governors: Donna Meuth (Immediate Past President), Michael Bergman, Daniel Young, Nikhil Patelᅠ ᅠ

 

The Nomination Committee consists of BPLA Past Presidents Joseph M. Maraia, Grant Houston, and Neil Ferraro.



TTAB & PTAB Come To Boston

by Tiffany Kwong (2L), Jin Lin (2L), Nana Liu (3L), and Nicholas Eliades (3L), Northeastern University School of Law (NUSL)





 


 

The United States Patent & Trademark Office’s Trademark Trial & Appeal Board (TTAB) and Patent Trial & Appeal (PTAB) held hearings at Northeastern University School of Law on Friday, October 3, 2014, as part of a program co-sponsored by BPLA and NUSL. Area practitioners and law students alike attended the hearings for the rare opportunity to learn more about the TTAB and the PTAB and to watch them conduct live hearings. The opportunity was made more exciting by the fact that this was the first time the PTAB has held hearings outside its Alexandria Headquarters in Virginia. The hearings were extremely popular, with overflow rooms established for both sessions.

 

Before the TTAB hearing, Chief Justice Gerald Rogers of the Trademark Trial & Appeal Board gave a presentation on “Why the TTAB is not like the PTAB or District Court.” He provided valuable advice for attorneys to build better records and take appropriate discovery for their clients. He also recommended attorneys consider pursuing Accelerated Case Resolution (ACR) as an alternative approach that is less costly and timelier than traditional trying of cases. ACR is especially attractive when facts can be stipulated.

 

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The Invented Here! 2014 Recognition Event

by BPLA Invented Here! Committee Chairs: Mark Solomon, Esq., Hamilton, Brook Smith & Reynolds, P.C.; Rory Pheiffer, Esq., Nutter McClennen & Fish LLP; and Aaron Connor, Esq., Vecna Technologies, Inc.





 Invented Here! 2014 Honorees


 

The annual recognition event for the BPLA’s Invented Here! program took place on Massachusetts Inventors’ Day, Tuesday, October 21, 2014, in the Skyline Room of the Museum of Science, Boston.  The well-attended event presented the opportunity to gather prominent leaders in intellectual property and technology from New England companies and universities. 

The Invented Here! program is run by the Boston Patent Law Association (BPLA) to honor New England innovators and their inventions.  Numerous inventions, patented in the past five years, were nominated by corporations, law firms, research labs, colleges, and universities from across New England.  As in past years, two rounds of selections narrowed the pool of nominees down to 12 honorees, including three featured honorees. The program also acknowledged three honorees in the published patent application (patent pending) category.  Robin Young, host of WBUR-FM’s magazine “Here & Now,” served as emcee for the evening and led a Q&A session with the three featured honorees to understand more about the origin of each invention and its value to society. The three featured honorees were

  • Brian Anthony, who co-developed a handheld, force-controlled ultrasound probe for the Massachusetts Institute of Technology.
  • Mark Banash represented Peter Antoinette and David Lashmore, who co-developed nanostructured antennas and a system for the formation and harvesting of nanofibrous materials for Nanocomp Technologies, Inc.
  • Marin Soljacic, who co-developed a method for wireless energy transfer across variable distances for the Massachusetts Institute of Technology.

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Pro Bono IP Clinic Pilot Progam


The Boston Patent Law Association and the IP Clinic of Northeastern School of Law are starting a pilot program to refer pro bono clients of the IP Clinic to members of BPLA. The IP Clinic has recently referred the first pro bono case to one of our BPLA members, the work will involve preparing a provisional patent application on an invention in the field of electrical engineering. If you are interested in working on future pro bono cases from the IP Clinic of Northeastern School of Law, know someone who may be interested, or have any question about this program or the Northeastern Law School IP Clinic in general, please contact Chelsea Loughran (
Chelsea.Loughran@WolfGreenfield.com) or Rex Huang (huang@fr.com).





The BPLA Files Amicus Curiae Brief in I/P Engine v. AOL, INC.

by Jennifer Itzkoff, McCarter & English LLP





 


 

The BPLA filed an amicus curiae brief supporting I/P Engine’s petition for en banc review of the Federal Circuit’s per curiam opinion in I/P Engine v. AOL, Inc., 576 F. App'x 982 (Fed. Cir. Aug. 15, 2014).  The BPLA is one of several amici who urged the Federal Circuit to conduct an en banc review of the panel’s decision.  Law school professors Craig A. Nard, Daniel B. Ravicher, Michael Rish, and Sean B. Seymore all joined together to file another amicus curiae brief, and i4i Limited Partnership joined the Medical Device Manufacturers Association to also file a third amicus curiae brief supporting en banc review.

 

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Sunstein Firm Privileged to Support Efforts of 2014 Nobel Peace Prize Winner

 




 


 

Boston, MA – October 21, 2014 - Employees at Sunstein Kann Murphy & Timbers were elated to hear that Kailash Satyarthi was one of two recipients of the Noble Peace Prize 2014. The organization that Mr. Satyarthi founded, GoodWeave, has been a pro bono client of the Sunstein law firm since 2007. 

GoodWeave was founded by Mr. Satyarthi, then Chairman of the South Asian Coalition on Child Servitude, after years of rescuing children from bonded labor in the carpet industry in India.  In founding GoodWeave, Mr. Satyarthi wanted to create a market-based incentive to stop exploitation of children on an industry-wide basis.

GoodWeave's mission is to end child labor in the carpet industry. The organization promotes the GoodWeave label (http://goodweave.org/about/rug_certification_label) as the best assurance that a certified rug was made without child labor.  Educating consumers to insist on the GoodWeave label helps create demand for child-labor free carpets.  GoodWeave works with carpet producers and importers to ensure the manufacture and sale of carpets without child labor. By agreeing to adhere to GoodWeave's strict guidelines, permitting random inspections, and paying license fees, licensees receive the right to put the GoodWeave label on their carpets. 

GoodWeave also directly rescues children from looms, and deters the exploitation of many more. After being reunited with their families whenever possible, rescued children are offered fully sponsored schooling.


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Panelists from the BPLA Biotechnology Committee’s “Orphan Drug Development: Strategies and Insights” event held on October 10, 2014, at WilmerHale in Boston.

Committees

Activities and Public Relations

activities@bpla.org

Michael McGurk, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

 

AIPLA Moot Court

mootcourt@bpla.org

Elizabeth Burkhard, Holland & Knight

Katherine Moskop, Bingham McCutchen LLP

Joshua M. Dalton, Bingham McCutchen LLP

 

Amicus

amicus@bpla.org

Erik Paul Belt, McCarter & English, LLP

Robert M. Abrahamsen, Wolf, Greenfield & Sacks, P.C.

 

Antitrust

antitrust@bpla.org

John W. Pint, Philips

 

Intellectual Property

Benjamin M. Stern, Holland & Knight

 

Biotechnology

biotechnology@bpla.org

Leslie Meyer-Leon, IP Legal Strategies LLC

Konstantin M Linnik, PhD, Nutter McClennan

Bo Han, WilmerHale

Jennifer Zarutskie Sieczkiewicz, Ph.D., Biogen Idec Inc.

 

Business & Marketplace

Jeremy Bond, Finnegan, Henderson, Farabow, Garrett & Dunner

Jamie Kemler, VP, Intellectual Property Business Strategy

 

Chemical Patent Practice

chemical@bpla.org

Lin J. Hymel, Ph.D., McLane, Graf, Raulerson, & Middleton, P.A.

Leslie McDonell, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Rebecca M. McNeill, VIVICAR Law, PLLC

Computer Law

computer@bpla.org

Edmund J. Walsh, Wolf, Greenfield & Sacks, P.C.

Michael Mattoni, Pierce Atwood LLP

 

Contested Matters

contestedmatters@bpla.org

Amelia Feulner Baur, Ph.D., Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.

Rachel Emsley, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.

Susan G.L. Glovsky, Hamilton, Brook, Smith & Reynolds, P.C.

 

Copyright Law

copyright@bpla.org

Nicole Rizzo Smith, ROPES & GRAY LLP

Lawrence T. Stanley, Jr., Bingham McCutchen LLP

 

Corporate (In-House) Practice

inhouse@bpla.org

William DeVaul, Cubist Pharmaceuticals Inc.

David Miranda, Raytheon Company

 

Ethics and Grievances

ethics@bpla.org

John J. Stickevers, Sunstein Kann Murphy & Timbers LLP

Steven J. Henry, Ab Initio Software LLC

 

International and Foreign Practice

international@bpla.org

Elias Domingo, Covidien

Sarah Gates, Lando & Anastasi, LLP

Eric Raciti, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.

 

Licensing

licensing@bpla.org

William Worden, Pierce Atwood LLP

Ian Liu, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.

Michael McGurk, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Litigation

litigation@bpla.org

Jacob K. Baron, Holland & Knight

Douglas C. Doskocil, Goodwin Procter LLP

 

Medical Devices

medicaldevices@bpla.org

Scott T. Bluni, Ph.D., Kacvinsky Daisak Bluni PLLC

Jeremy Bond, Finnegan, Henderson, Farabow, Garrett & Dunner

 

New Lawyers and Law Students

newlawyers@bpla.org

Michael Carbonello, Houston & Associates

Reza Sadr, Pierce Atwood LLP

 

Patent Agents and Technical Specialists

patagents_techspecs@bpla.org

Cristin Berkey, Duane Morris LLP

Natalie Grace, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.

 

Patent Law

patents@bpla.org

Justin J. Daniels, Proskauer Rose LLP

Nishla Keiser, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Raj Vallabh, Foley Hoag

 

Patent Office Practice

patentofficepractice@bpla.org

Emily Whelan, WilmerHale LLP

Nicole Palmer, Lando & Anastasi, LLP

 

Pro Bono

probono@bpla.org

Rex I. Huang, Fish & Richardson P.C.

Chelsea Loughran, Lando & Anastasi, LLP

 

Trade Secrets Law

tradesecrets@bpla.org

Russel Beck, Beck Reed Riden LLP

Michael Bunis, Choate, Hall & Stewart LLP

 

Trademarks and Unfair Competition

trademarks@bpla.org

John L. Welch, Lando & Anastasi, LLP

Christina Licursi, Wolf, Greenfield & Sacks

 

The Boston Patent Law Association (BPLA) is an association of intellectual property professionals, providing educational programs and a forum for the interchange of ideas and information concerning patent, trademark, and copyright laws. Through a volunteer Board of Governors and committees, it organizes and hosts educational seminars, social events, and conventions, and comments on rules, legislation, and judicial decisions impacting the profession. Visit the BPLA at www.bpla.org. The BPLA Newsletter is published four times a year by the Boston Patent Law Association. Articles appearing in the newsletter represent the views of the authors and do not necessarily carry the edorsement of the BPLA.

 

Editor-In-Chief:

Erik Paul Belt.

 

Contributors:

Donna M. Meuth, Erik Paul Belt, McCarter & English LLP, Michael Bergman Bergman & Song LLP, Daniel Lev, Ph. D., Pierce Atwood, LLP and Reza Sadr, Ph.D., Pierce Atwood, LLP, Leslie McDonell and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, David Powsner and Michael Visconti and Nutter, McClennen & Fish, LLP, Tiffany Kwong (2L), Jin Lin (2L), Nana Liu (3L), and Nicholas Eliades (3L), Northeastern University School of Law (NUSL), Mark Solomon, Esq., Hamilton, Brook Smith & Reynolds, P.C.; Rory Pheiffer, Esq., Nutter McClennen & Fish LLP; and Aaron Connor, Esq., Vecna Technologies, Inc., Jennifer Itzkoff, McCarter & English LLP

 

Boston Patent Law Association, One Batterymarch Park, Suite 101, Quincy, MA 02169-7454

 

Letters to the editor, articles and job postings are encouraged. E-Mail all correspondence to: vice-president@bpla.org

 

©2014 Boston Patent Law Association. All rights reserved.

;
Board of Governors

President

Donna Meuth

Eisai Inc.

President@bpla.org

 

Treasurer

Monica Grewal

Wilmer Cutler Pickering Hale and Dorr LLP

Treasurer@bpla.org

 

Board Member

Deirdre Sanders Hamilton, Brook, Smith & Reynolds, PC

Board@bpla.org

President-Elect

Gregory Sieczkiewicz

Flagship Ventures

President-elect@bpla.org

 

Secretary

Rory Pheiffer

Nutter McClennen & Fish LLP

Secretary@bpla.org

 

Board Member

Michael Bergman

Bergman & Song LLP.

Board@bpla.org

Vice President

Erik Paul Belt

McCarter & English, LLP

Vice-President@bpla.org

 

Immediate Past-President and Board Member

Joseph Maraia

Burns & Levinson LLP

Board@bpla.org

 

Board Member

Daniel W. Young

Wolf Greenfield & Sacks P.C..

Board@bpla.org



Do you have a new job? Made a lateral move lately? Been promoted? We want to hear about your news. Please send your job-related news to: vice-president@bpla.org

 

PROPOSED AMENDMENT TO BPLA MEMBERSHIP BY-LAW

The Board of Governors has approved the following rule change that clarifies membership for non-attorneys (such as paralegals, patent agents, academics, and other professionals). The Board will seek a vote of the membership at the 2014 annual meeting to approve the new by-law. The complete text of the proposed rule is below. All revisions are to the section on non-attorney membership (highlighted in yellow).

 

ARTICLE III: MEMBERSHIP

The membership of this Association shall consist of three classes of membership: Attorney, Non-Attorney, and Life.

 

ATTORNEY MEMBERS.

Attorneys who are in good standing in any court of record in the United States, or any of the States or territories thereof, and engaged in the practice of patent, trademark, copyright, or other intellectual property law shall be eligible for election to Attorney membership. Attorney Members shall have the right to vote. Only Attorney Members who reside or have a principal office in the First Federal Judicial Circuit as now fixed by law shall have the right to hold office.

 

NON-ATTORNEY MEMBERS.

Persons who do not qualify for Attorney Membership but who are (1) registered in the United States Patent and Trademark Office (“USPTO”) as entitled to represent applicants before the USPTO in the preparation and prosecution of applications for patents; (2) students who are enrolled and in good standing in an accredited law school; (3) paralegals who are employed by, or provide services to, a firm or company engaged in the practice of patent, trademark, copyright, or other intellectual property law; (4) academics who teach or conduct research in patent, trademark, copyright, or other areas of intellectual property; or (5) other professionals (after specific consideration and approval by the Board of Governors) who personally are primarily engaged in consulting or providing professional or advisory services to attorneys and their clients on issues relating to patent, trademark, copyright, and/or other intellectual property law matters (i.e., whose primary role does not involve business development or sales) shall be eligible for election to Non-Attorney Membership in the Association; provided, however, that no person shall be admitted to the membership who seeks membership for the primary purpose of marketing his or her products or services to other members. The Board of Governors reserves the right to revoke membership of any person deemed by the Board of Governors to be marketing products or services to other members to the detriment of the Association. Non-Attorney Members shall have the powers, privileges, and obligations of Attorney Members of the Association except those of voting and holding office.

 

LIFE MEMBERS.

All Attorney and Non-Attorney Members upon reaching the age of seventy shall automatically become Life Members of the Association. Life Members shall continue to have all the powers, privileges, and obligations they had prior to becoming Life Members except that they shall be exempt from the payment of dues.

 

ARTICLE V: ELECTION OF MEMBERS

Section 1 - Application for membership in this Association shall be made in writing by the applicant who shall be proposed by one member of the Association.

Section 2 - Each application shall be filed with the Secretary who shall give written notice to each member of the Board of Governors of the filing thereof, the stated qualifications of the applicant, and the name of the member who proposed the applicant. If all members of the Board of Governors approve election of the applicant, or if no written opposition to his election is filed by a member of the Board of Governors with the Secretary within thirty days of such notification, the applicant shall be deemed elected upon payment to the Treasurer of such dues and fees as are then required and the applicant shall be so advised by the Secretary.

Section 3 - In the event of timely written opposition by a member of the Board of Governors to the election of an applicant for membership in this Association, the matter shall be considered at a meeting of the Board of Governors called for that purpose and upon such consideration, approval or disapproval of the application by a majority of the Board of Governors present at such meeting shall be final.

2552090.1

 

Boston Patent Law Association

One Batterymarch Park, Suite 101,

Quincy, MA 02169

Phone: 617.507.5570

www.bpla.org


 

 

 

 

Boston Patent Law Association
One Batterymarch Park, Suite 101
Quincy, MA 02169
Phone: 617.507.5570

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