Report of the Delegation of the Intellectual Property Law Section of the California Lawyers Association to Washington, D.c.

• Jurisdiction: United States,Federal,California
• Publication year: 2019
• Citation: Vol. 44 No. 3

Report of the Delegation of the Intellectual Property Law Section of the California Lawyers Association to Washington, D.C.

DC Delegation Meets with USPTO leadership: Commissioner for Patents Drew Hirshfeld; Angus MacDonald; Todd Iketani; Tom Hassing; PTAB ChiefJudge Scott Boalick, USPTO Director Andrei Iancu, Michele Ferri, Deborah Greaves, Rebecca Chen

April 29, 2019 to may 1, 2019

The Intellectual Property Section of the California Lawyers Association sends a delegation to Washington, D.C. each year to meet with government agencies and officials of importance within the IP community.

This year, the delegation returned to Washington, D.C. amid exciting new developments in intellectual property. Notably, the Senate Judiciary Subcommittee on Intellectual Property was recently revived, the U.S. Supreme Court issued its opinions in Fourth Estate Public Benefit Corp. v. Wall-Street.com, and the USPTO set forth patent subject matter eligibility guidance.

The 2019 Delegation consisted of the following representatives from the IP Section:

• Rebecca Chen, Chair of the DC Delegation, Executive Committee Member, U.S. Bar-JPO Liaison Council Representative
• Tom Hassing, Chair of the IP Section, Executive Committee Member;
• Michele Ferri, Programming Chair of the Technology, Internet, and Privacy Law Interest Group, Co-Vice Chair of the Entertainment & Sports Interest Group;
• Deborah Greaves, Former Chair of the IP Section, Executive Committee Advisor;
• Todd Iketani, Executive Committee Member;
• Angus McDonald, Chair of the Copyright Interest Group, Executive Committee Member.

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Senator kamala harris

The first meeting of the Delegation on Monday, April 29, 2019 was with Senator Kamala Harris' office, where we met with senior counsel Nicholas Wunder. Senator Harris is a member of the recently reconvened Senate Judiciary Subcommittee on Intellectual Property, a subcommittee which had been dormant for a number of years until early 2019, but has become quite active over the past several months.

Following the passage of the Music Modernization Act in late 2018, the Senate has bandwidth to address other areas of intellectual property. Both the chairman of the subcommittee (Sen. Thom Tillis) and the ranking member (Sen. Chris Coons) are looking for areas to find agreement on bipartisan, noncontroversial intellectual property matters.

A key focus in the Senate for the foreseeable future, especially within the Subcommittee on Intellectual Property, will be on patent eligibility standards. Other focal points for the Senate will be modernization efforts in the Copyright Office and strengthening the laws relating to trademark counterfeiting and trade secrets misappropriation.

Senator Harris is a sponsor of a bill called the DEFEND Act, which was introduced on December 12, 2018. This bill addresses the problem of foreign actors developing increasingly sophisticated methods of stealing American intellectual property. Mr. Wunder explained that Senator Harris is seeking a legislative vehicle to move this bill forward, as the Senate has recently not been getting much passed even with bipartisan support, unless a bill was attached to "must pass" legislation.

Senator Harris is particularly interested in how intellectual property interacts with algorithms and artificial intelligence (AI) and determining what can be "owned" by innovators so that AI-related innovations can be protected. On a related note, Senator Harris has concerns about how AI may incorporate and even perpetuate bias, both on the consumer side and the government side. For example, facial recognition technology, which is increasingly dependent on AI, is being employed by the FBI. But there are some questions as to whether such technology has adequate safeguards for accuracy over all demographics and protecting against bias. The difficulty in creating these legislative safeguards lies in the fact that technology is evolving so rapidly.

Privacy is a key area the Senate is paying close attention to. There is a renewed interest in creating a federal version of Europe's GDPR or California's recent privacy law, the CCPA. This growing interest stems partly from the rash of data breaches since so many constituents on both sides of the aisle have been harmed by data breaches. Consumer groups, in particular, are urging Congress to undertake federal privacy legislation.

So far, much of the conversation among many stakeholders, both small and large, is that they want a privacy bill as strong as the CCPA with one federal standard that allows for preemption of the patchwork of state privacy laws. In particular, technology companies are seeking a federal standard with federal preemption. However, many privacy advocates are reluctant to back this approach because they see privacy as a developing area of law with constant changes, and the states are likely more nimble in responding to the new threats. Federal preemption, therefore, is a concern to such advocates. The other key issue to be addressed is whether to allow private rights of action under a federal privacy law. Mr. Wunder acknowledged this is a tricky space for Congress to navigate through.

Mr. Wunder also discussed the connection between immigration and innovation. California's ability to remain at the forefront of innovation is dependent on immigration. Senator Harris has been devoting her attention to increasing the pipeline of high-skilled immigrants through the removal or lifting of per-country caps on immigration visas for such skilled foreign workers. There had been some optimism following the 2016 election of broad immigration reform; however, these days, the only bills that have a chance to get passed have only piecemeal approaches.

Finally, Senator Harris is working toward promoting equality for women and minority inventors. She is aware of the need for heavy investment in the K-12 curricula in STEM fields, especially for minorities and girls, as public schools are lacking resources. Senator Harris is looking for new ways to bring in such investments and to increase STEM-related curricula in schools nationwide.

Senator thom tillis

Our next meeting was with Senator Thom Tillis' office, where we met with counsel Brad Watts. Senator Tillis is the Chairman of the Senate Judiciary Subcommittee on Intellectual Property that was revived earlier this year. The subcommittee has been an exciting platform for change with broad bipartisan agreement. The key priorities of the Senate Judiciary Subcommittee on Intellectual Property are (1) patent eligibility reform, (2) Copyright Office modernization, (3) diversity among inventors in the IP system, and (4) Patent Trial and Appeal Board reform.

Current efforts are primarily focused on patent eligibility reform. The subcommittee has solicited stakeholder input and held roundtables with over 60 organizations, practitioners, and companies. They are looking to receive as much feedback as possible in drafting legislation. Specifically, they are seeking pragmatic solutions to determine statutory categories of ineligible subject matter and the creation and use of specific terms of art to achieve the intent without making it overly broad. The subcommittee is also working closely with Hank Johnson, Chair of the House Judiciary Subcommittee of the Courts, Intellectual Property and the Internet on patent eligibility issues.

Mr. Watts noted that efforts to modernize the Copyright Office will likely be prioritized later this year, although progress in this area is also currently underway. Section 512, which provides a system for copyright owners and internet service providers to address online infringement outside the context of litigation, ofthe Digital Millennium Copyright Act ("DMCA") enacted in 1998, is also due for an update. The subcommittee will look to the Copyright Office for guidance and research in this area.

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Another area of interest that is currently under review is a similar system for trademarks. There is currently no statutory framework for trademark notice-and-takedown procedures. Mr. Watts noted that final proposals for the notice-and-takedown procedures within the copyright sphere will very likely be considered within the trademark sphere as well.

The Senate IP subcommittee continues to seek stakeholder input on intellectual property issues that directly affect consumers and the global economy. The subcommittee held a hearing the day after our meeting on "The Role of Intellectual Property in Sports and Public Safety." The hearing was to cover a broad array of IP issues to include copyright issues, illegal streaming in the U.S. and overseas, notice-and-takedown policies, counterfeit trademarks, and design patent infringement with particular emphases made to the effects on public safety. Senator Tillis' office is considering statutory change to allow for the seizure of counterfeit products regarding public safety as they relate to design patent infringement. Senator Tillis is also looking to harmonize copyright laws and impose criminal liability to illegal streaming.

Also of great interest is the participation of women and minorities within the patent ecosystem. The USPTO released a report earlier this year that outlined trends in women inventors named on U.S. patents from 1976 to 2016. The report showed that women are grossly underrepresented. The IP subcommittee is working on a bill to address this issue. When looking at the patent ecosystem, the USPTO is at the very end of the path. The solution needs to begin much earlier in the patent ecosystem and starts with opportunity and access to education. Culture also plays a significant role in the systemic problem of underrepresented women inventors and is difficult to address at the legislative level. Women and minorities must be encouraged to follow the path of STEM education at a younger age. Resolution of the issue requires a broader approach at the educational and cultural levels.

U.S. Patent And Trademark Office

The Delegation then visited the...