IP Policy Roundup | Edition 12

Coalition Updates

September was a busy month for C4IP! Here’s a roundup of what our Coalition has accomplished over the past month.

• On October 3, C4IP Executive Director Frank Cullen issued a statement in support of the recently-reintroduced Stopping Harmful Offers on Platforms by Screening Against Fakes in E-Commerce (SHOP SAFE) Act.
  • “The legislation will take meaningful steps to reduce the availability of counterfeit goods that siphon billions of dollars and countless jobs from our economy and stunt innovation.
    C4IP urges Congress to pass the SHOP SAFE Act expeditiously.”
• On October 3, C4IP sent a letter to Chairman Chris Coons (D-DE) and Ranking Member Thom Tillis (R-NC) applauding their recent introduction of the Stopping Harmful Offers on Platforms by Screening Against Fakes in E-Commerce (SHOP SAFE) Act ahead of a relevant Senate Judiciary Subcommittee on Intellectual Property hearing.
  • “We applaud your recent introduction of the SHOP SAFE Act of 2023, S. 2934, and for quickly scheduling today’s hearing to consider the bill and the serious problem of counterfeits being sold through online platforms.”
• On September 22, former Georgia Congressman Doug Collins published an opinion essay in the Atlanta Journal-Constitution (AJC) arguing that Congress should pass the Patent Eligibility Restoration Act of 2023 (PERA) to shore up the U.S. patent system.
  • “By unwinding the negative impact of confusing judicial decisions, the Patent Eligibility Restoration Act would strengthen the U.S. intellectual property system, protect innovators, and shore up our ability to compete with geopolitical rivals. Congress should pass it as soon as possible.”
• On September 21, former National Institute of Standards and Technology (NIST) Director Walt Copan published an opinion essay in The Boulder Daily Camera arguing that Congress must pass the Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL) and the Patent Eligibility Restoration Act of 2023 (PERA) to restore America’s technological edge.
  • “Taken together, the two bills would assure innovators and startups that their discoveries are patentable and their rights secure. Such clarity promotes further research and innovation in industries central to our national security.”
• On September 20, C4IP Chief Policy Officer and Counsel Jamie Simpson participated in a listening session held by the USPTO, International Trade Administration (ITA), and NIST “to discuss implementation strategies for standards-setting” as defined in the National Standards Strategy for Critical and Emerging Technology.
• On September 19, C4IP Co-Chair Dave Kappos participated in IAM Connect’s SEP Summit 2023. He spoke on a panel entitled “The game-changing European SEP/FRAND draft regulation” and discussed the implications of the European Commission’s proposal to create a SEP royalty rate setting body in the EU Intellectual Property Office (EUIPO). Read more about the event here.
• On September 10, C4IP Co-Chair Andrei Iancu, C4IP Board Member Judge Kathleen O’Malley (Ret.), and USPTO Deputy Solicitor Farheena Rasheed spoke at the Intellectual Property Owners Association (IPO)’s Annual Meeting in Boston, MA. They discussed how IP law is shaped by policymakers and courts — including their own roles within the IP policy system and how they interact with each other, Congress, and the public. Read more about the event here.
• On September 7, C4IP released the highlight reel from the July 24 roundtable the coalition co-hosted with the University of Maryland, which discussed fostering innovation in Prince George’s County and featured Congressman Glenn Ivey (D-MD). Watch the highlight reel here.
• On September 7, former Texas Congressman Lamar Smith published an opinion essay in the Dallas Morning News endorsing both the Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL) and the Patent Eligibility Restoration Act of 2023 (PERA).
  • “[T]he PREVAIL Act could help ensure that small businesses and startups get a fair chance to enforce their patents…could help put American entrepreneurs in high-tech industries on a more even playing field with their rivals in Europe and Asia by clarifying confusing decisions made by the courts…Both of these bills are well-intentioned efforts to make the patent system more fair and more predictable.”

• On September 6, C4IP sent letters to the Department of Health and Human Services (HHS), Food and Drug Administration (FDA), Centers for Medicare & Medicaid Services (CMS), and USPTO in response to recent anti-patent claims made by advocacy groups.
  • “For too long, the interests of predictable and enforceable patent rights have been sacrificed in efforts to resolve public policy challenges and commercial differences wholly unrelated to patent law. It is for this reason we read with profound concern a recent letter from advocacy groups urging you to oppose ongoing efforts to promote efficiency, predictability, and fairness in the patent system.”

• On September 2, former Vermont governor and Democratic National Committee chair Howard Dean published an opinion essay in the Boston Herald voicing his support for the Patent Eligibility Restoration Act of 2023 (PERA).
  • “Americans’ health, economic prosperity, and even national security depend on regaining an edge over rival nations in critical fields. Supreme Court rulings have derailed our technological leadership. Senators Coons’ and Tillis’ legislation will help put us back on track.”

• ICYMI: C4IP submitted written comments to the NIH in advance of the agency’s recent virtual workshop, “Transforming Discoveries into Products: Maximizing NIH’s Levers to Catalyze Technology Transfer.”
  • Experts in the broader intellectual property community also shared their perspectives with the NIH. Some highlights from these submissions can be found here.

• 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 questions about the program should be directed to C4IP Chief Policy Officer and Counsel Jamie Simpson at jamie@c4ip.org.
  • The program has been covered by IPWatchdog, Legal Scholarship Blog, and SSRN.

Government Rundown

• Senate Committee on the Judiciary, Senate Subcommittee on Intellectual Property Hearing: Back to School with the SHOP SAFE Act: Protecting Our Families from Unsafe Online Counterfeits: On October 3, the Senate Judiciary Subcommittee on Intellectual Property will hold a hearing to discuss the recently-reintroduced SHOP SAFE Act, which aims to prevent the online sale of counterfeit consumer items. Subcommittee Chairman Chris Coons (D-DE), who introduced the bill alongside Ranking Member Thom Tillis (R-NC), will preside over the hearing. (Senate Committee on the Judiciary, 10/3)
• House Committee on the Judiciary, House Subcommittee on Courts, Intellectual Property, and the Internet Hearing: Oversight of the U.S. Copyright Office: On September 27, the House Subcommittee on Courts, Intellectual Property, and the Internet held an oversight hearing to examine the current state of the U.S. Copyright Office’s (USCO) operations, programs, and reforms. The hearing also touched on the USCO’s involvement in artificial intelligence, music copyrights, the right to repair, and other critical areas. Register of Copyrights and USCO Director Shira Perlmutter testified as the sole witness. (House Committee on the Judiciary, 9/27)
• USPTO, ITA, and NIST, Public Listening Session: Innovating Ideas on Standards and Intellectual Property: On September 20, these government agencies held a public listening session to discuss the intellectual property aspects of the National Standards Strategy for Critical and Emerging Technology, which was released in May 2023. Opening remarks were delivered by USPTO Director Katherine Vidal, Under Secretary of Commerce for Standards and Technology Laurie Locascio, and Deputy Under Secretary for International Trade Diane Farrell. (USPTO, 9/20)
• USPTO Webinar: Empowering Minds: Women Entrepreneurs Two-Step Through Funding and Mentorship to the Beat of Intellectual Property (IP): On September 6, the U.S. Patent and Trademark Office held an online panel, moderated by USPTO Director Kathi Vidal, in which several women entrepreneurs discussed their experiences with innovation and how intellectual property rights benefited them. Speakers included LaunchTN CEO Lindsey Cox, Atmus Filtration Technologies Chief Legal Officer Toni Hickey, Warner Music Nashville co-president Cris Lacy, SweetBio co-founder Kayla Rodriguez, and Heels & Handshakes founder Shannen Stewart. (USPTO, 9/6)
• Senate Committee on the Judiciary Nomination Hearing: On September 6, the full Senate Judiciary Committee held a hearing on individuals nominated for various judicial and executive offices including Deborah Robinson, nominated to be Intellectual Property Enforcement Coordinator at the Executive Office of the President. (Senate Committee on the Judiciary, 9/6). On September 28, she was reported favorably out of committee and now awaits a vote by the full Senate.

Fact Check

Claim: In a letter published August 8, Public Citizen, along with several other advocacy organizations, claimed that reforming the PTAB would hamper innovation and disproportionately hurt small inventors.

Correction: As C4IP recently addressed, the opposite is true — proposed reforms aim to address flaws in existing PTAB procedures to more appropriately balance equities between innovators and those who want to copy their products. Currently, large, established firms use PTAB proceedings to challenge smaller competitors’ patents, leveraging their enormous wealth to run up costs for these start-ups and take their innovative products for free. The data speaks for itself: Nearly all of the top 20 PTAB petitioners from 2012 to 2022 were Big Tech companies. Apple alone filed 904 petitions, followed by Samsung with 898.

Moreover, over the past decade, industry giants have repeatedly weaponized PTAB proceedings — or the threat of them — against small inventors who lack the resources to defend themselves. Shortcomings in the PTAB process and existing law make this abuse an easy strategy. For instance, large firms or groups of firms, who would not be able to sue in federal court, can bring multiple PTAB proceedings against a single patent holder. Similarly, corporations can file multiple PTAB challenges against the same patent — even when the complaints could have been combined into one petition — subjecting the patent holder to maximum cost and administrative burden.

These and other abusive practices highlight the need for PTAB reform. Bipartisan legislation, like the Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL), would bring fairness and transparency to PTAB proceedings while restoring confidence in the value of patents for good faith innovators. The PREVAIL Act includes provisions that would require PTAB petitioners to have standing similar to those seeking access to courts, while prohibiting them from filing repeat petitions against the same patent. The bill would also require patent challengers to litigate their concerns either before the PTAB or in court — but not in both venues at once. These changes aim to eliminate duplicative proceedings, conserve judicial resources, and ensure fair treatment for patent holders.

The claim that PTAB reforms threaten American innovation is contradicted by the facts.

Bottom Line: This claim is false.

Inside Look: What’s Happening in Congress

As Democratic and Republican members of Congress continue to weigh legislative priorities during the 118th Congress, top of mind for those who follow intellectual property policy are:

• The Stopping Harmful Offers on Platforms by Screening Against Fakes in E-Commerce (SHOP SAFE) Act: On September 28, Senators Chris Coons (D-DE) and Thom Tillis (R-NC) introduced legislation designed to protect online consumers from harmful counterfeit products. By establishing trademark infringement liability for e-commerce platforms that allow the sale of dangerous counterfeit items, requiring brand owners to notify platforms of their mark(s) in advance, and providing safety from liability to platforms that appropriately vet and remove counterfeit sellers, the SHOP SAFE Act will protect American families as well as businesses and IP holders.
• The Patent Eligibility Restoration Act of 2023: In June 2023, Senators Thom Tillis (R-NC) and Chris Coons (D-DE) 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 is recognizing Bill Bowerman, a collegiate track coach and co-founder of Nike, Inc., who revolutionized sport and style with his invention of the modern athletic shoe.

William Jay “Bill” Bowerman Jr. was born in Portland, Oregon in 1911. He attended Medford High School and later the University of Oregon, where he excelled on both the football and track teams. After graduating college, Bowerman returned to his former high school to serve as its track and football coach before enlisting in the U.S. Army to fight in World War II.

Upon returning from the war, Bowerman accepted the head track coaching position at his alma mater and embarked on a storied career. During his 24-year tenure at Oregon, Bowerman coached four national championship teams, with his runners setting numerous records and achieving Olympic success. But perhaps Bowerman’s most significant achievement came when he teamed up with his former student Phil Knight to found the Beaverton-based shoe company Blue Ribbon Sports in 1964 — better known today as the sportswear giant Nike.

Bowerman’s coaching success was underpinned by his commitment to innovate and maximize his team’s competitive advantage. This mindset played a pivotal role in his success designing shoes for Nike. Striving to create a track shoe that offered both support and lightweight performance without relying on metal spikes for traction, Bowerman ingeniously used his wife’s waffle maker to create a prototype with a studded rubber outsole, which he patented in 1974. The resulting shoe — the “Waffle Trainer” — was Nike’s first major breakthrough as a company.

Today, the market for athletic shoes is estimated at over $111 billion globally. In that market, Nike is by far the largest player, with some estimates attributing more than a third of the market share. Beyond footwear, the culture of product innovation that began with Bowerman has propelled Nike to become one of the world’s most prominent brands. As of September 2023, Nike employs 83,000 people worldwide and is valued at nearly $145 billion.