You Cannot Step in the Same River Twice

AuthorMark K. Dickson
PositionMark 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...
Pages3-3
Perspective
Published in Landslide® magazine, Volume 11, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 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.
Heraclitus, a Greek philosopher
who lived around 500 BC, is rec-
ognized as the rst person to coin
the phrase “change is the only constant
in life.” Nothing is forever, and trans-
formation is universal. Whether any
particular change is necessarily good or
bad may be debatable, but regardless of
whether you are prepared for it or not,
change is always just around the corner.
Intellectual property (IP) law itself
has changed signicantly over the last 50
years. Some may argue that much of the
change has only been incremental but, like
nancial interest, change is often cumu-
lative: compounded over 50 years, it still
adds up to a lot. In addition, the major
shifts in the law that occur infrequently,
like the 2011 Leahy-Smith America
Invents Act (AIA), the 2017 U.S. Supreme
Court decision in TC Heartland on pat-
ent venue, and the 2017 Matal v. Tam case
on disparaging trademarks, have long-
term effects. And the resulting collective
changes on IP law are major.
The ABA-IPL Section has long
played an active role in advocating for
legislative change and inuencing judi-
cial decisions on IP law. The Section’s
recommendations contained in its White
Paper: Agenda for 21st Century Patent
Reform helped lead to the AIA, the rst
major revision of patent law in decades
and legislation having the most signi-
cant impact on patent practice since
1952. ABA-IPL has continued to pro-
vide substantive recommendations and
to work with the United States Pat-
ent and Trademark Ofce (USPTO)
on implementation and improvements
in the procedures that govern the AIA
inter partes review (IPR) proceedings
and general patent application examina-
tion. Most recently, since this August,
the Section provided comments to the
USPTO on determining whether a claim
element is well understood, routine, or
conventional for purposes of subject
matter eligibility, as well as comments
on the draft USPTO 2018–2022 Strate-
gic Plan. The Section also wrote to the
House and Senate Judiciary Committees
calling for renewal of the USPTO fee
setting authority and provided comments
and testimony to the Patent Public Advi-
sory Committee hearings on the new
proposed patent fee schedule.
ABA-IPL activities are not limited
to issues of patent law. Just recently, the
Section joined with the ABA’s Antitrust
Section to submit comments on IP issues
to the Federal Trade Commission (FTC)
in advance of the FTC Hearings on Com-
petition and Consumer Protection in the
21st Century. ABA-IPL also provided
comments to the USPTO concerning
changes to the Trademark Rules of Prac-
tice to mandate electronic trademark
ling, and to the American Law Institute
on the Restatement of the Copyright Law.
This September, at the recommendation
of the Section, the ABA led an amicus
brief in the U.S. Supreme Court in Fourth
Estate Public Benet Corp. v. Wall-Street.
com, LLC on the issue of when a copy-
right registration claim has been made for
purposes of ling a copyright infringe-
ment litigation.
More changes are around the corner
for IP law in 2019, and we don’t know
yet if they will be small adjustments
or big developments. By the time this
column is published, the United States
will have elected a new Congress that
will include a cadre of returning faces
and a whole crop of new ones. Regard-
less of which party emerges victorious
in the election shufe, there will be new
committee chairs in both the House and
Senate Judiciary Committees, which
have primary jurisdiction over IP law.
Well-known friends of IP law in Con-
gress are retiring, and new members,
hopefully just as friendly, will take their
place. New leadership means new pri-
orities, concerns, initiatives, and focus.
And the new U.S. Supreme Court will
be halfway through its current term,
which will address several IP matters.
Despite the political strife that
generally accompanies elections, intel-
lectual property remains one of the last
few truly bipartisan areas of concern
in Congress. The AIA, Hatch-Wax-
man Act for generic drugs, and nearly
unanimous passage of the Music
Modernization Act in September are
examples of successful bipartisan-
ship. The stakes for our economy and
business consequences that ride on IP
legislation and litigation continue to
increase. Senators and representatives
from both sides of the aisle have always
found common ground to work together
to achieve a better system of IP laws,
with long-term benets for the econ-
omy and its constituents. Hopefully,
this bipartisan process will continue.
But only one thing is truly certain:
change itself. n
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
You Cannot Step in the Same River Twice

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