Coalition Updates
- On July 26, C4IP submitted comments to the NIH regarding the agency’s upcoming workshop, “Transforming Discoveries into Products: Maximizing NIH’s Levers to Catalyze Technology Transfer.”
- On July 26, C4IP Chief Policy Officer and Counsel Jamie Simpson participated in a US Inventor webinar and spoke on the recently introduced Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL).
- On July 24, C4IP and the University of Maryland co-hosted a roundtable, “Prince George’s County and The Innovation Ecosystem,” with Special Guest Congressman Glenn Ivey (D-MD). The event’s speakers — which also included UMD Dean Samuel Graham, Jr., UMD Chief Innovation Officer Dr. Dean Chang, venture capitalist Bob Nye, and C4IP Co-Chair David Kappos — discussed growing innovation in Prince George’s County. You can find more on the roundtable event here.
- On July 19, former USPTO Deputy Director Russell Slifer published an opinion essay in Bloomberg Law arguing that the USPTO should enact reforms that curb PTAB abuse in its upcoming round of rule changes.
- “More than a decade ago, the America Invents Act made sweeping changes to the US patent system. Without meaning to, the AIA, like all other legislation, contained opportunities for abuse…[the] upcoming round of agency rulemaking [is] a great opportunity to bring stability and clarity to a policy area at the heart of American innovation.”
- On July 17, C4IP Executive Director Frank Cullen, C4IP Board Member Judge Kathleen O’Malley (ret.), and C4IP Chief Policy Officer and Counsel Jamie Simpson participated in Inventing America’s event, “Separating Fact from Fiction: The Patent System in an Age of Geostrategic Competition.”
- On July 11, C4IP released a policy agenda detailing 11 important policy actions that Congress, the Biden Administration, and the USTR should take in order to strengthen intellectual property rights in the United States and secure the country’s position as the innovation hub of the world.
- The agenda was accompanied by a press release and featured in an IPWatchdog article.
- On July 11, C4IP Co-Chair Andrei Iancu and C4IP Board Member Judge Kathleen O’Malley (ret.) joined New York-based law firm Sullivan & Cromwell as a partner and of counsel, respectively.
- The news was covered by IPWatchdog, Reuters, and Bloomberg Law.
- On July 10, C4IP issued a statement expressing concern with sections 601 and 602 of the draft Pandemic and All-Hazards Awareness Act (PAHPA).
- “Against the backdrop of critical innovation success, it is ill-considered to now propose government intervention in innovators’ use of their intellectual property. Such interference is bound to send innovative companies looking elsewhere to invest their resources, with predictably devastating consequences for the next health crisis.”
- On July 6, C4IP Co-Chair Andrei Iancu spoke to ABC News 10 in New York regarding concerns with a state bill banning all noncompete agreements.
- On July 5, C4IP published a statement underscoring precisely why the Council supports the recently introduced Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL).
- “The PREVAIL Act provides a comprehensive set of reforms that — after a decade’s worth of experience with the Patent Trial and Appeal Board — would ensure that the PTAB meets the Leahy-Smith America Invents Act’s original goals of providing more efficiency in the patent system, while also being fair to patent owners and petitioners alike.”
- On July 5, C4IP Board Member Judge Paul Michel (ret.) was the featured guest speaker in a webinar hosted by U.S. Inventor, where he voiced support for the Patent Eligibility Restoration Act of 2023 (PERA).
- Judge Michel’s (ret.) comments were featured in an IPWatchdog article.
- ICYMI: C4IP announced the creation of a grant program for intellectual property research, scholarship, and writings. The program — which provides grants of up to $25,000 — will advance C4IP’s mission to provide lawmakers data-driven recommendations to inform IP policy. More information about the application process is available here, and any questions about the program should be directed to C4IP Chief Policy Officer and Counsel Jamie Simpson at jamie@c4ip.org.
- The program was covered by IPWatchdog, Legal Scholarship Blog, and SSRN.
Government Events Rundown
- NIH Workshop, Transforming Discoveries into Products: Maximizing NIH’s Levers to Catalyze Technology Transfer: On July 31, the National Institutes of Health will host a virtual workshop to discuss various policies and practices pertaining to biomedical innovation, including the patenting and licensing of inventions. Additional details on the workshop can be found here. (NIH, 7/31)
- Senate Committee on the Judiciary, Subcommittee on Intellectual Property Hearing: Oversight of the United States Patent and Trademark Office: On July 26, the Senate Committee on the Judiciary, Subcommittee on Intellectual Property, held an oversight hearing to examine the current state of the USPTO. USPTO Director and Undersecretary of Commerce for Intellectual Property Katherine Vidal testified as the sole witness. Among other updates, Director Vidal noted:
- The USPTO will soon announce which of the ANPRM proposals they will not be pursuing, and it was suggested that the Office might issue two separate NPRMs.
- The USPTO, along with NIST, will soon issue a Federal Register request for comments on standard-essential patents (SEPs) to inform a “whole-of-government” approach in response to the recent EU proposal to establish a SEPs “competency center.”
- During the oversight hearing, Chairman Chris Coons (D-DE) and Ranking Member Thom Tillis (R-NC) also reiterated the importance of passing PREVAIL and PERA — two bills which would act to protect and advance Americans’ constitutionally enshrined IP rights. Congress has an important role to play in solidifying the future of U.S. innovation with reliable and balanced IP laws. (Senate Committee on the Judiciary, 7/26)
- Senate Committee on Small Business & Entrepreneurship Business Meeting: On July 19, the Senate Committee on Small Business & Entrepreneurship held a business meeting to consider numerous legislative proposals, which included the Small Business Innovation Voucher Act of 2023 and the Research Advancing to Market Production (RAMP) for Innovators Act. (Senate Committee on Small Business & Entrepreneurship, 7/19)
- House Committee on the Judiciary, Subcommittee on Courts, Intellectual Property, and the Internet Hearing: Is There a Right to Repair?: On July 18, the House Committee on the Judiciary, Subcommittee on Courts, Intellectual Property, and the Internet held a hearing examining the legal landscape of the right to repair and related intellectual property issues. Several IP experts, including Aaron Perzanowski, Thomas W. Lacchia Professor of Law at the University of Michigan Law School, and Devlin Hartline, a Legal Fellow at the Hudson Institute’s Forum for Intellectual Property, attended as witnesses. (House Committee on the Judiciary, 7/18)
- Senate Committee on the Judiciary, Subcommittee on Intellectual Property Hearing: Artificial Intelligence and Intellectual Property – Part II: Copyright: On July 12, the Senate Committee on the Judiciary, Subcommittee on Intellectual Property held its second hearing on artificial intelligence and intellectual property. Several IP experts — including Jeffrey Harleston, General Counsel and Executive Vice President of Business and Legal Affairs at Universal Music Group, and Matthew Sag, Professor of Law, Artificial Intelligence, Machine Learning, and Data Science at Emory University School of Law — attended as witnesses. (Senate Committee on the Judiciary, 7/12)
Fact Check
Claim: On June 23, the American Civil Liberties Union (ACLU) published a statement announcing that it would oppose the newly reintroduced Patent Eligibility Restoration Act (PERA) on the grounds that “If passed, the Act would allow corporations and other entities to patent laws of nature and products of nature, including naturally-occurring genes.”
Correction: The Patent Eligibility Restoration Act explicitly does not allow for the patenting of naturally-occurring genes, a fact that co-author Senator Thom Tillis (R-NC) noted in his press release and that is also clearly evident in the text of the bill. Section 101(b) of the bill reads as follows:
(b) ELIGIBILITY EXCLUSIONS.—
“(1) IN GENERAL.—Subject to paragraph (2), a person may not obtain a patent for any of the following, if claimed as such:
“(A) A mathematical formula that is not part of a claimed invention in a category described in subsection (a).
“(B)(i) Subject to clause (ii), a process that is substantially economic, financial, business, social, cultural, or artistic, even though not less than 1 step in the process refers to a machine or manufacture.
“(ii) The process described in clause (i) shall not be excluded from eligibility for a patent if the process cannot practically be performed without the use of a machine or manufacture.
“(C) A process that—
“(i) is a mental process performed solely in the human mind; or
“(ii) occurs in nature wholly independent of, and prior to, any human activity.
“(D) An unmodified human gene, as that gene exists in the human body.
“(E) An unmodified natural material, as that material exists in nature.
PERA would allow the patenting of gene sequences that have been “isolated, purified, enriched, or otherwise altered by human activity” — in other words, genes that don’t occur naturally and only exist as a product of human invention. Allowing such inventions to be patented is crucial for incentivizing future innovation in the field of genetic research, just as it is in every field where humans create new technologies that do not exist on their own in nature. But the ACLU’s argument that “naturally-occurring genes” would be subject to patents is demonstrably untrue.
Bottom Line: This claim is false.
What’s Happening in Congress
As Democratic and Republican members of Congress continue to weigh legislative priorities during the 118th session, top of mind for those who follow intellectual property policy are:
- Patent Eligibility Restoration Act of 2023: In June 2023, Senators Thom Tillis (R-NC) and Chris Coons (D-DE) just reintroduced legislation aimed at restoring patent eligibility for important categories of inventions — including life sciences diagnostics, gene therapies, and computer-implemented inventions — as well as resolving questions regarding the scope of patent eligibility. In so doing, the Patent Eligibility Restoration Act will foster the development of next-generation technologies across innovative industries.
- The Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act: In June 2023, Senators Chris Coons (D-DE), Thom Tillis (R-NC), Dick Durbin (D-IL), and Mazie Hirono (D-HI) — joined by Representatives Ken Buck (R-CO) and Deborah Ross (D-NC) on the House side — introduced legislation that will eliminate redundant patent invalidity challenges and safeguard Americans’ right to participate in a fair and accessible patent system. The PREVAIL Act contains important reforms to the Patent Trial and Appeal Board, which will return the body to its original purpose of providing an efficient alternative to district court litigation, and will curtail the practice by patent infringers of forcing inventors to defend their patents repeatedly and in multiple fora.
- The Interagency Patent Coordination and Improvement Act of 2023: In January 2023, Senators Dick Durbin (D-IL), Chris Coons (D-DE), Thom Tillis (R-NC), Chuck Grassley (R-IA) introduced the Interagency Patent Coordination and Improvement Act of 2023. The bill would create an interagency task force to share patent filing information and technical assistance between USPTO and FDA officials. IP experts warn that interagency entanglement could weaken the patent system by inserting officials from multiple federal agencies — without patent law expertise — into the examination process. They submit that it is premature to implement such substantial changes without conducting a thorough evidence-based study.
Celebrating American Innovation
Inventor Spotlight
This month, C4IP recognizes Ralph Baer, who transformed the entertainment industry and is known as “The Father of Video Games.”
Ralph Baer was born in 1922 to a Jewish family living in southwest Germany. In 1938, his family immigrated to the United States, where Baer developed a love for electronics and trained to become a radio service technician at the National Radio Institute. After serving in the U.S. Army for three years from 1943 to 1946, Baer continued his studies in the electronics field, obtaining a Bachelor of Science in Television Engineering from the American Television Institute of Technology in 1949.
Baer worked several engineering jobs in the ensuing years, but his major achievement came after joining Sanders Associates in 1956. In 1966, while working on military electronics, Baer came up with the idea for the first television-based interactive video game system. He developed this into a prototype called the “Brown Box,” named after the wood laminate that decorated it. In 1971, Baer filed a patent for the “Brown Box,” which became one of 48 patents he would ultimately obtain throughout his life. In order to commercialize his invention, Baer licensed it to Magnavox, which released the “Brown Box” as the Magnavox Odyssey — the first home video game console — in 1972.
Baer pioneered an entire industry that is now one of the largest in all of entertainment. In 2021, the global video game industry was valued at $188.7 billion, a figure that towers over the film and music industries and is projected to grow significantly in the years to come. At the same time, the home video game console — Baer’s crowning innovation — has become ubiquitous. More than half of U.S. households reportedly own a video game console, and 20 percent of consumers worldwide are estimated to own or have access to one.