IP Stakeholders Reveal What They Were Thankful for in 2024

It has been quite an eventful year for intellectual property law so far; from a new presidential administration coming into power in the United States, to movement on major patent legislation and a slew of rules packages being proposed (and occasionally finalized) by the U.S. Patent and Trademark Office (USPTO), the IP community has been kept on its toes.

Whether they’re giving thanks for the work done by outgoing USPTO Director Kathi Vidal and her Office or for the fact that a new administration will be taking over soon; or whether they’re thankful for the excitement AI is bringing to IP law or for efforts to curb and clarify laws in light of its rapid and sometimes frightening uptake, the comments below represent a wide range of views on what there was to be thankful for in 2024.

Alden Abbott, Mercatus Center at George Mason University

 “We should be thankful that the IP community secured bipartisan support for the PERA and PREVAIL Acts, the enactment of which would play a substantial role in strengthening the U.S. patent system and enhancing the American innovation economy. Even if this legislation does not pass the current Congress, the groundwork has been laid for the eventual enactment of these reforms.”

 

Doug Carsten, McDermott Will & Emery

“I’m very thankful for the continuing influx of talented attorneys who are drawn to practice patent litigation. The more classes of incoming attorneys I see, I’m very glad I became a lawyer when I did because these newly-minted attorneys are smarter, better, more sophisticated, and more diverse than my classmates and I were when we entered the law over two and a half decades ago. And, relatedly, I’m thankful to train these attorneys and have a front row seat to watch them go on to do wonderful, important work.”

Lori Cohen, Womble Bond Dickinson (US) LLP

“I’m thankful that in the practice of trademark law, there is always something to write about—for example, classic rock bands and who in the group gets to carry the torch.

After a music group disbands, who can still use the name? All the surviving members? Some of the surviving members? Who can stop who? GUESS WHO?

In 2023, Randy Bachman and Burton Cummings, leaders of the popular 60s group, The Guess Who, sued former bandmates Gary Peterson and Jim Kale for performing under the band’s name. At the height of their success, the group did not file for trademark protection, but Jim Kale did in 1986 and toured as The Guess Who with a rotating lineup of musicians, exclusive of Bachman and Cummings. Cummings, owner of the publishing rights in ‘AMERICAN WOMAN,’ ‘THESE EYES’ and ‘NO TIME,’ the band’s greatest hits, terminated performing rights to those songs, effectively preventing Kale from performing at a concert he’d already booked.

Fortunately, Bachman, Cummings, Kale, and Peterson settled their dispute in September. Bachman and Cummings acquired rights in the trademark GUESS WHO and said they are thankful this difficult chapter is behind them.”

Chris de Mauny, Bird & Bird LLP

“Writing this as I approach my first Thanksgiving holiday after moving to the United States, my thoughts split along two lines.

First, as a European lawyer focused on patent litigation, I could hardly not be thankful for the Unified Patent Court (UPC). While it began to operate in 2023, it was during 2024 that the first substantive appellate decisions and decisions on the merits were released at an ever-increasing rate. By now, the Court is issuing regular, interesting decisions in a wide range of disputes over disparate subject matter. The decisions flow from elements of multi-jurisdictional mega-battles to simple one-patent cases between European companies. In almost every case, the same underlying context shines through: parties and advisors with little jurisprudence to work from have creatively crafted cases to fit their needs and persuade the judges sitting before them. In time, most new UPC decisions will be prosaic but the current year has thankfully straddled a period where almost any decision is of some interest.

Second, having moved to California for professional reasons earlier this year, I am thankful for the hugely welcoming and engaging IP professional community here in the United States – in-house and private practice. The openness of the community to newcomers, the willingness to debate and discuss detailed issues and the sheer enthusiasm that exists among professionals here for doing their job well have made it a pleasure to join the community.”

James Edwards, ELITE Strategic Service

“Twenty twenty-four has seen the continuation of the Biden-Harris assault on patents and patent rights and of U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s stream-of-consciousness regulation by half-baked proposals and never-ending comment requests. Still, the patent community can be thankful for at least two things.

First, the outgoing administration has not finalized its draft Bayh-Dole march-in guidance. Under it, for the first time ever, federal IP managers would—in violation of the statute—take into account the price of a commercial product tied to federally funded basic research. As the Bayh-Dole Coalition and thousands of pro-patent commenters have stressed, this policy would undermine the law’s framework and has already poisoned licensing of such patents.

The National Institute of Standards and Technology (NIST) has met broad, sustained pushback from Democrats, Republicans, and Independents, as well as from all corners of industry and society, our economy and our institutions.

Second, we have reason to hope for a return to normality. If the second Trump administration is as pro-IP and pro-innovation as the first, the regulatory, legal and anti-IP detritus will soon be cast onto the trash pile.

We can reasonably expect the USPTO, NIST, the Department of Justice – Antitrust Division heads and other IP positions to be held by competent, pro-patent people from the same cloth as Andrei Iancu, Walt Copan and Makan Delrahim.

Throw in positive developments like the Loper Bright Enterprises v. Raimondo ruling that reins in the Administrative State, and we can be thankful this Thanksgiving.”

Karon Fowler, Morgan Lewis

“I am grateful for the client relationships grown from representing clients in IP disputes. Balancing the technical details of intellectual property with legal arguments to advocate on behalf of your client requires creativity, precision, and adaptability. But the greatest successes come from a true collaboration between attorney and client, and IP litigation presents a meaningful opportunity for an attorney to weave herself into the fabric of a client’s business. One aspect of developing this type of relationship is working with employees across the business—engineers on the technical team for key products to accountants in the finance department and, of course, the in-house legal department. Another aspect is learning the nitty-gritty details of your client’s technology and inner workings as a company. Each interaction is critical to creating a synergy that leads to stronger strategies, better outcomes, and lasting relationships.”

Marla Grossman, ACG Advocacy

“With respect to IP law and practice, I am thankful for the leadership and proactive efforts of USPTO Director Kathi Vidal in addressing the persistent issue of patent pendency. With unexamined patent applications nearing 793,8824 as of September 2024, this backlog threatens innovation, economic growth, and U.S. competitiveness. High patent pendency creates delays that discourage inventors, slow technological commercialization, and increase legal uncertainty, making it harder for businesses to secure investments and partnerships.

Director Vidal recognized the complexity of this issue, which stems from factors such as labor market challenges, the multidisciplinary nature of patents, and institutional constraints. Despite these hurdles, she initiated meaningful, initial reforms. These include improved application routing to match examiners with appropriate technical expertise, extended working hours for examiners, and enhanced compensation structures to attract and retain talent.

Additionally, the USPTO adjusted award structures to incentivize examiner productivity and quality. Vidal’s leadership reflected a willingness to engage stakeholders and seek solutions beyond the agency. I am hopeful that Congress will continue to press for answers on how it can support the USPTO in addressing this critical issue and that future USPTO Directors will embrace this collaboration while continuing to seek innovative ways to reduce patent pendency. “

Ryan Malloy, Morrison Foerster

“I am thankful that the rise of AI is reinvigorating IP law. At the forefront, currently, are fascinating copyright cases relating to whether training AI models based on copyrighted content and generating new content based on those models are copyright infringement or fair use. But I am finding that increasingly more of my patent and trade-secret matters also involve AI technologies, such as semiconductor chips used for AI applications and AI-based image recognition. I anticipate that these cases will explode in number and magnitude over the next decade. AI is also reshaping how I do my job.  For example, I now use an AI software tool that maps patent claims to technical literature to identify prior-art references that may be useful.  It’s an exciting time to be an IP litigator!”

James Pooley, James Pooley PLC

“The IP community should be very grateful for Senators Chris Coons (D-DE) and Thom Tillis (R-NC), whose dedication and willingness to cooperate across the aisle match up with their deep understanding of the incentive systems that power the innovation economy. Like the Little Engine That Could, they keep their partnership going because they realize it’s the only way to get us all over the hill. And while we’re at it we should express our appreciation to Kathi Vidal, who is about to leave her leadership post at the USPTO. Her energy and comprehensive attention to detail have produced more results than some would acknowledge, and I’m grateful for her service.”

William Stroever, Cole Schotz

“This year I am thankful for the USPTO’s efforts to protect the public and attorneys from trademark scams and bad faith actors. Anyone who has had the slightest involvement with a trademark application knows the avalanche of “low cost” trademark offers, fake solicitations, and inquiries from concerned “attorneys” about a third party trying to register your trademark that follow. Behind the scenes the USPTO has been waging war against these bad faith actors to protect our wonderful trademark landscape. The USPTO website includes a growing list of examples of fraudulent trademark solicitations including commonly-used names and the text that appears verbatim in these emails, making it easier for recipients to weed out these scams. The Office of Enrollment and Discipline regularly hears cases and issues decisions on attorney misconduct before the USPTO. Many of those decisions this year have involved attorneys shirking their ethical obligations in order to file thousands of new applications on behalf of foreign entities. Those bad faith filings have clogged up the trademark pipeline and registers and often prevented genuine applicants from properly protecting their trademarks. The USPTO also regularly issues warnings about low-cost trademark filing offers that are sometimes identity-theft scams in disguise. All of these efforts by the USPTO improve the trademark process and protect applicants and attorneys alike, and for that I am thankful!”

Sylvia Turner, Thompson Coburn

“Artificial intelligence (“AI”) is waiting for no man, court, or legislature. It is evolving rapidly and without significant guidelines. Its unbridled growth has engendered a battlefield within the courts and the legislatures. We await answers.

Thankfully, the Copyright Office is shining a light through the haziness. In early 2023 the Copyright Office published guidance reiterating its view that a copyright can only protect material produced by human creativity and launched an initiative to examine copyright issues raised by AI. On July 31, 2024, the Copyright Office published Artificial Intelligence Part I: Digital Replicas addressing the topic of digital replicas. In the Report the Copyright Office recommends that Congress enact a new federal law with certain recommended elements. The July Report was the first of several, and forthcoming parts will address the copyrightability of materials created by generative AI, the legal implications of training AI models on copyrighted works, licensing considerations, and the allocation of potential liability.

While deference to the Copyright Office’s guidance and interpretation concerning AI and copyright is up in the air following the elimination of Chevron deference, we are thankful for and look forward to its ongoing efforts to provide guidance regarding AI.”

Image Source: Deposit Photos
Author: adogslifephoto
Image ID: 174205416