Lists Are Everywhere, and They Can Matter

• Author: Mark K. Dickson
• Position: Mark K. Dickson is chair of the ABA Section of Intellectual Property Law. As solo practitioner and principal of Phase M Legal in San Mateo, California, he specializes in portfolio development and evaluation, risk assessment, licensing, and litigation avoidance for a wide range of technologies, including plant patent matters. He can be reached...
• Pages: 3-3

Perspective

Published in Landslide® magazine, Volume 11, Number 4, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

From the weekly shopping list to

the daily to dos, the world revolves

around lists. Who hasn’t read one

or more “top tens” on their browser:

music hits of 2018, fastest ways to lose

weight in the new year, greatest college

football teams of all time.

Most lists are merely practical or

mildly informative, but some of these

collections can have profound and posi-

tive effects. Consider the safe surgery

checklist developed by Harvard Medi-

cal School’s Dr. Atul Gawande, which

was rst implemented in eight hospitals

worldwide as part of a 2008 study. As

a result, post-surgery death rates were

reduced in those facilities by 50 per-

cent.1 Today, the safe surgery checklist

is used around the world.

Other lists may not always turn out

as well or as hoped. In 2018, the U.S.

Chamber of Commerce released its latest

annual International IP Index, dropping

the United States from tenth to twelfth

place on its list of worldwide patent sys-

tems.2 This kind of listing cannot be

ignored or tolerated, especially for a pat-

ent system that handles more than half a

million applications a year and just issued

its 10 millionth patent in 2018.

The new Director of the U.S. Patent

and Trademark Ofce (USPTO), Andrei

Iancu, may not have acted because of

this collected data, but he did make pos-

itive changes in USPTO procedures

throughout the latter half of 2018 that

were designed for improvements. In

July, Director Iancu announced new

measures for handling patent eligibility

decisions during application examina-

tion. In September, the Director made

changes in operating procedures at the

Patent Trial and Appeal Board (PTAB),

including an increase in the number of

precedential decisions. In October, he

announced a new claim construction

standard for trials under the Amer-

ica Invents Act before the PTAB. And

in November, he unveiled new claim

amendment procedures during PTAB

trials and a redesigned home page for

the USPTO website. These initiatives in

support of the Director’s overall goal of

consistency, predictability, and transpar-

ency of the patent examination process

should elevate the U.S. patent system in

the Chamber of Commerce ranking in its

next International IP Index.

Our Section spoke in favor of many

of the initiatives that Director Iancu

implemented throughout 2018. We

lobbied in favor of the new claim con-

struction standard at the PTAB and in

support of the new procedures for claim

amendments during PTAB trials. We

advocated to sustain long-term growth

and stability in the patent system and as

necessary for improvements in the qual-

ity of issued U.S. patents. The Section

also weighed in on improvements at

the USPTO with new requirements for

electronic ling and efforts to reduce

fraud in registrations. ABA-IPL further

approved remarks for Congress in favor

of changes to the Lanham Act to permit

government agencies to register logos

and insignia for trademark protection.

The developments we monitored

and the improvements we helped fur-

ther were not solely those related to the

USPTO. The Copyright Ofce has seen

major new legislation in the last year,

and more change is in place for this

coming year. ABA-IPL supported the

Music Modernization Act, which was

passed without opposition by Congress

in September, as a welcome update

for music licensing and royalty issues

through the Copyright Ofce. We also

advocated in favor of an autonomous

Copyright Register and more recently

for modernization of Copyright Ofce

technology systems.

With a new Congress just now in

place, the ABA-IPL Section is hard at

work with our substantive committees

and Council to help effect further prog-

ress throughout the IP system. To do so,

we are starting our own new lists. n

Endnotes

1. Elijah Wolfson, The Most

Screwed-Up Employee Perk in Amer-

ica (and the Man Who Just Might

Fix It), Q  W (Dec. 10,

2018), https://qz.com/work/1481224/

the-most-screwed-up-employee-perk-in-

america-and-the-man-who-just-might-x-it/.

2. U.S. C  C G.

I P C., C: U.S.

C I IP I (6th

ed. 2018), http://www.theglobalipcenter.

com/wp-content/uploads/2018/02/GIPC_

IP_Index_2018.pdf.

Mark K. Dickson is chair of the ABA Section of Intellectual Property Law. As solo practitioner and principal of Phase M Legal in San Mateo,

California, he specializes in portfolio development and evaluation, risk assessment, licensing, and litigation avoidance for a wide range of

technologies, including plant patent matters. He can be reached at mdickson@phasem.com.

By Mark K. Dickson

Lists Are Everywhere, and They Can Matter