Highlights of the 2016-17 Association Year

• Author: Amy Mandel
• Pages: 7-12

Published in Landslide® magazine, Volume 10, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved. This

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ABA-IPL SECTION FOCUS

Highlights of the 2016–17 Association Year

eligibility statute to ensure useful inventions are protected;

revise Patent Trial and Appeal Board (PTAB) proceedings

to apply the plain meaning claim constructions as applied in

district courts; and prohibit diversion of US Patent and Trade-

mark Ofce (USPTO) user fees to other agencies within the

Department of Commerce.

TRADEMARKS

Random Trademark Audits

August 18, 2016

The Section wrote to the USPTO to provide written

comments on the “Changes in Requirements for Afdavits or

Declarations of Use, Continued Use, or Excusable Nonuse

in Trademark Cases.” The Section supported the USPTO

goal of promoting the integrity of the trademark register

by encouraging accuracy in the listing of goods/services

for which use or continued use of a mark is claimed and

acknowledged that the proposed rules would facilitate the

more streamlined and effective processes.

Comments to the USPTO on

Reformatted Trademark Declarations

October 24, 2016

The Section continued its support for the goal of promoting

the integrity of the Trademark Register by reformatting the

veried statements made in connection with applications,

allegations of use, and post-registration afdavits, to separate

out the clauses to improve readability and to require the

signatory to check a box next to each statement in order to

validate an electronic submission. The Section made specic

suggestions to improve the accuracy and functionality

of the system and suggested that mere reformatting

of the declaration may not be sufcient for signicant

improvements that would achieve the USPTO’s goal.

Advocacy

Throughout the year, the Section works on behalf of its mem-

bers and the profession in identifying, watching, and analyzing

key issues and to bring attention to intellectual property issues

before Congress, the executive branch, and the judiciary.

This year, ABA-IPL’s comments included those conveyed on

a variety of IP matters: to government ofces, to the presi-

dential transition team, and in conjunction with our ABA

colleagues on matters both domestically and internationally.

Comments of the ABA Section of Intellectual

Property Law to the Presidential Transition Team

on Issues Relating to the United States Intellectual

Property System

December 21, 2016

The Section sent a letter to the presidential transition team not-

ing that protecting the industries that drive our economy is an

essential role of our federal government. The ABA-IPL Sec-

tion’s comments were submitted to aid the transition team

in identifying areas where our federal protections need to be

buttressed against the persistent threat of theft. The Section

pointed out that intellectual property laws provide the incentive

needed to promote aggressive private investment in the devel-

opment of new life-saving medicines and medical devices, new

communications technologies, and so much more.

The letter emphasized that as the United States struggles to

maintain its position as the economic and technological world

leader, our intellectual property system provides the protec-

tions necessary to keep inventors and creators from falling

victim to theft both from within and beyond the borders of

our nation. The ABA-IPL Section noted that it has taken on

issues important to the health of our IP system, and therefore

the United States economy, and it included a list of 13 rec-

ommendations that the federal government should undertake

to strengthen the intellectual property system. ABA-IPL’s

recommendations included the need to: revise the patent

From its strength within the American Bar Association, the ABA Section of Intellectual

Property Law (ABA-IPL) advances the development and improvement of intellectual

property laws and their fair and just administration. The Section further s the goals of

its members by sharing knowledge and balanced insight on the full spectrum of intel-

lectual property law and practice, including patents, trademarks, copyright, industrial

design, literary and artistic works, scientic works, and innovation. Providing a forum

for rich perspectives and reasoned commentary, ABA-IPL serves as the voice of intel-

lectual property law within the profession, before policy makers, and with the public.

By Amy Mandel