Coalition Updates
- On December 3, C4IP Co-Chairs Andrei Iancu and David Kappos published an opinion essay in the Buffalo News underscoring how New York’s recently passed noncompete legislation will hamper the state’s high tech industry.
- “Make no mistake: If this legislation becomes law, the news will reverberate across corporate boardrooms as executives decide where to locate multibillion-dollar manufacturing plants. Ultimately, they’ll choose states that safeguard innovation.”
- On November 17, ConsumerAffairs featured C4IP Executive Director Frank Cullen in an article addressing the threats of fraud and counterfeit items ahead of the holidays.
- “Frank Cullen, C4IP Executive Director, Former Vice President of U.S. Policy for the Chamber of Commerce’s Global Innovation Policy Center said that nearly 7 in every 10 consumers have been deceived into buying a counterfeit product online in the past year – many of them products that can pose physical dangers – and those numbers will likely grow during the holidays.”
- On November 14, former USPTO Deputy Director Laura Peters published an opinion essay in the Daily Signal showcasing how education around innovation principles, such as intellectual property, can promote social and economic mobility as well as societal progress.
- “If our mission in the U.S. is to make a better future for ourselves and our progeny, today’s students must be empowered with the tools to solve the challenges of our times. They must be educated on the principles that foster and protect innovation and be equipped with a solid understanding of how to actualize their innovative solutions.”
- On November 13, C4IP Co-Chair Andrei Iancu published an opinion essay in RealClearHealth identifying the manifold ongoing policy proposals that threaten American IP rights.
- “American IP rights have never been on more unstable footing. Without a course correction – soon – investors will turn to safer bets and stop funding the transformational research and development that advances life science and other critical technologies.”
- On November 11, C4IP Board Member Judge Paul Michel (ret.) published an opinion essay in IAM explaining the reforms of the Patent Eligibility Restoration Act and PREVAIL Act in detail and advocating for their passage.
- “[T]hese bills test the capacity of Congress to pass bipartisan legislation that serves the national interest. For the sake of America’s economic prosperity and national security, we should all hope Congress can achieve this goal.”
- On November 10, C4IP Co-Chairs Andrei Iancu and David Kappos published an opinion essay in Fortune underlining the importance of the ITC’s strong powers to crack down on patent theft in the wake of the recent dispute between Apple and Masimo.
- “Put simply, the ITC stops patent infringement. That’s why the ITC’s ruling – and its authority – must remain intact.”
- On November 9, 6ABC Action News in Philadelphia interviewed C4IP Executive Director Frank Cullen on the physical and economic dangers counterfeit goods pose during the holiday season. Cullen underscored the importance of passing Senator Chris Coons’ (D-DE) recently co-introduced Shop Safe Act, which, as noted in the coverage, “creates penalties for platforms that knowingly sell counterfeit goods.”
- “When you’re talking about kids and the holiday season getting toys, there could be lead, or they may be made with other unsafe materials that could cause injury…It’s also jobs, approximately 325,000 fewer jobs in the United States as a result of the impact of counterfeiting.”
- On November 9, NBC10 WJAR in Providence interviewed C4IP Executive Director Frank Cullen about the economic harms of counterfeit goods and how consumers can avoid purchasing them while holiday shopping.
- “The economic side of this does have a huge impact on our domestic economy…For instance, there’s $200 billion lost annually to U.S. businesses as a result of the sale of counterfeit goods. That’s not to mention over 750,000 fewer jobs.”
- On November 7, in advance of the Senate IP subcommittee’s Nov. 8 hearing on the PREVAIL Act, C4IP sent a letter to Subcommittee Chairman Chris Coons and Ranking Member Thom Tillis expressing strong support for the act and detailing the benefits of each of its reforms.
- “[T]he PREVAIL Act provides for significant improvements to the PTAB review proceedings, promoting efficiency and fairness, and ultimately helping to promote U.S. innovation. C4IP again applauds the committee for holding a hearing on this important topic and hopes the subcommittee and committee will continue to move forward on this critical bill.”
- On November 4, Small Business and Entrepreneurship Council President Karen Kerrigan published an opinion essay in the Duluth News Tribune spotlighting the humble origins of major companies and inventions, and the key role that secure patent rights played in their success.
- “America counts on entrepreneurs and small-business owners to launch new ideas – even the world’s next big idea. To do that, entrepreneurs need to know their inventions are protected. That’s why patents matter and why Congress should strengthen them.”
- On November 2, C4IP Co-Chair Andrei Iancu published an opinion essay in The Hill emphasizing how the erosion of patent rights undermines America’s national security and ability to compete with China.
- “China’s innovation dominance poses both national security and economic risks to the United States…To maintain national security, the United States needs to strengthen its technological capabilities – and to do that, we need to incentivize innovation, fast.”
- 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
- U.S. Patent and Trademark Office Boardside Chat: Recent Updates to Internal Decision Circulation and Review Procedures at the PTAB: On November 16, the U.S. Patent and Trademark Office hosted a Boardside Chat webinar to inform attendees about the Notice of Proposed Rulemaking for the Patent Trial and Appeal Board (PTAB) it had issued on October 6, as well as recent changes to the Board’s Standard Operating Procedure. Judge Melissa Haapala, the vice chief judge of the PTAB, led the discussion. (USPTO, 11/16)
- Senate Committee on Small Business & Entrepreneurship Hearing: Veteran Entrepreneurship: From Service to Small Business Success: On November 15, the Senate Committee on Small Business & Entrepreneurship held a hearing to discuss entrepreneurship by America’s military veterans. Acting Associate Administrator of the Office of Veterans Business Development in the U.S. Small Business Administration Col. Tim Green, Director of the Syracuse University Institute for Veterans and Military Families (IVMF) Dr. Mike Haynie, and State Director of America’s Small Business Development Centers (SBDC) Iowa Lisa Shimkat, were among those who testified. (Senate Committee on Small Business & Entrepreneurship, 11/15)
- House Committee on Energy & Commerce, Subcommittee on Communications and Technology Hearing: Leveraging AI to Enhance American Communications: On November 14, the House Subcommittee on Communications and Technology held a hearing on the impacts of artificial intelligence on the communications industry. Several leaders in the industry – The Information Technology Industry Council VP Courtney Lang, Palo Alto Networks VP Sam Rubin, and VIAVI Solutions Chief Technology Officer Sameh Yamany – testified as witnesses. (House Committee on Energy & Commerce, 11/14)
- Senate Committee on the Judiciary, Subcommittee on Intellectual Property Hearing: Reforming the Patent Trial and Appeal Board – The PREVAIL Act and Proposals to Promote U.S. Innovation Leadership: On November 8, the Senate Subcommittee on Intellectual Property held a hearing to discuss potential reforms to the Patent Trial and Appeal Board (PTAB), including the PREVAIL Act. C4IP sent a letter to the subcommittee applauding their consideration of this important bill. Witnesses at the hearing included attorneys Michelle Armond and Joseph Matal, Masimo Corp. founder and CEO Joe Kiani, and former Texas Congressman Lamar Smith. (Senate Committee on the Judiciary, 11/8)
- U.S. Senate Confirmation Vote Approving Bertagnolli as NIH Director: On November 7, the Senate voted on the confirmation of Monica Bertagnolli, M.D., then-director of the National Cancer Institute, as the new director of the National Institutes of Health (NIH). She was confirmed by a bipartisan vote of 62 to 26. On November 9, she began her role at NIH, in which she oversees federally-funded biomedical research. (NIH, 11/7)
Fact Check
Claim: In November, senior policy analyst Joe Mullin of the Electronic Frontier Foundation (EFF) published an article claiming that the reforms included in the PREVAIL Act would unfairly protect the owners of “bad,” low-quality patents at the expense of small businesses and software developers.
Correction: PREVAIL allows the challenger of a patent to decide where it wants its challenge to be heard: at the PTAB or in District Court, but not both. It is false to claim that either the PTAB or the district court would protect invalid patents. If a patent is truly “bad,” or “low quality,” either of those forums should be trusted to render the patent invalid. Multiple, duplicative proceedings between the same parties on the same issues are not needed.
The America Invents Act (AIA) established the IPR system at the PTAB as a “cheaper, faster alternative” to district court litigation. IPRs were not meant to be duplicative of district court proceedings. PREVAIL simply returns the IPR process to its original intent.
The vast majority of challenges at the PTAB are filed by the world’s largest technology companies. These giants are able to multiply the proceedings and bury inventors in legal fees. This has become routine: over 80% of patent validity challenges take place twice – in both the PTAB and in district courts. The system is not well-served by repetitive proceedings, and PREVAIL puts a stop to such abuses.
In addition, the PTAB and the district courts use different standards to adjudicate challenges, with the PTAB requiring a lower burden of proof to invalidate a patent. This creates confusion, inconsistent results, and opportunity for forum shopping and other litigation gamesmanship. PREVAIL closes this loophole as well, and makes the burden of proof to be the same in both forums. This is hardly a protection of “bad” patents: the United States has trusted courts to do their jobs correctly since the nation’s founding, and using the same standard at the PTAB as is used in the courts will only increase the reliability of the patent system.
Mullin characterizes the PREVAIL Act’s removal of these loopholes as problematic for software developers. But this is true only if such software developers want to game the system at the expense of inventors. Legitimate challenges to the validity of a patent will succeed if brought in a single forum – either the district court or the PTAB, but not both – and using the same standard.
The PTAB’s current workings tilt the playing field in favor of large businesses with significant financial resources. Big Tech companies are the most prolific petitioners at the PTAB, where about 80% of final written decisions result in the invalidation of a patent claim. The PREVAIL Act aims to fix PTAB’s flaws, restoring balance to its proceedings: enabling legitimate challenges but also allowing inventors to defend their intellectual property fairly. This will empower inventors to keep inventing, and unleash the full force of America’s drive towards technological progress.
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 Congress, top of mind for those who follow intellectual property policy are:
- The Prohibiting Adversarial Patents (PAPA) Act: In September 2023, Representatives Scott Fitzgerald (R-WI), Mike Gallagher (R-WI), Darrell Issa (R-CA), and Blaine Luetkemeyer (R-MO) introduced legislation that raises a number of concerns. With the well-intended goal of protecting U.S. national security, the PAPA Act has the potential to trigger significant unintended consequences. These include potential retaliatory moves by China and other nations to suspend or render unenforceable patents owned by American companies, further enabling theft of American IP overseas. The actions called for by the bill could also violate U.S. treaty obligations, which would in turn embolden other nations to violate IP-related treaties in various ways. In addition, confiscating patents, or rendering them unenforceable, violates basic principles of property, and therefore could weaken the concept of patents as property rights. These and other considerations are of the utmost importance as U.S. lawmakers study the full scope of the PAPA Act. C4IP stands ready to work with Members of Congress to address the threat posed by foreign entities, while maintaining the integrity of the U.S. patent system.
- The Stopping Harmful Offers on Platforms by Screening Against Fakes in E-Commerce (SHOP SAFE) Act: In September 2023, 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), and 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 Lloyd Hall, whose invention of food preservatives helped to reduce global food spoilage and hunger.
Born in Elgin, Illinois, in 1894, Lloyd Hall was a dedicated student. Hall earned a scholarship to Northwestern University and earned his Bachelor’s degree in pharmaceutical chemistry in 1916. He next attended graduate school at the University of Chicago. As a Black man in the early twentieth century, Hall’s prospects for employment were limited despite his impressive academic record. Nonetheless, he found success working as a chemist for the Chicago Department of Health, the John Morrell Company, and the United States Ordnance Department during World War I.
After the war, Hall joined Griffith Laboratories in Chicago, where his research into preservatives gained prominence. At the time, salt was the primary method for preserving food. But as Hall discovered, the chemicals were counterproductive, breaking down the meat they were supposed to preserve. To address this issue, Hall developed and patented a “flash-drying” method that retained the salt’s preservative qualities while removing its harmful ones. Hall also secured patents for antioxidants and a method to prevent food spoilage from bacteria. In total, Hall earned nearly 60 patents.
Hall’s innovations revolutionized food preservation practices and represented a significant advancement in an industry now valued at nearly $3 billion per year globally. Beyond preventing disease and saving lives, food preservation enhances efficiency in the production, transportation, and sale of food, resulting in cost savings for consumers and reduced food waste. A strong patent system supported Hall’s research, protecting his groundbreaking solutions and fostering ongoing advancements that benefit people around the world.