Thought Leadership

Intellectual Property Report: July 2020

Client Updates

Supreme Court Upholds “” as a Viable Trademark in Key Decision
Paul ReillySmitha Mathews
On June 30, 2020, in United States Patent and Trademark Office v. B.V. (“”), No. 19-46, 591 U.S. __ (2020), the Supreme Court rendered an 8-1 decision affirming the Fourth Circuit’s opinion that the term “” is not generic, i.e., it is not the ordinary name of a service as perceived by consumers, and is therefore eligible for federal trademark registration.
To read the full article, click here

The Future of AI Protection
Nick Palmieri*, Paul Ragusa
While businesses and innovators develop Artificial Intelligence (“AI”) technologies, intellectual property (“IP”) protection for these technologies has struggled to keep up in all contexts. The main IP regimes—copyrights, and trade secrets—for protecting these assets apply to AI technology in two contexts. The first context is IP protection of an AI itself, such as providing protection to the code which forms an AI or use of the AI. The second context, which has been gaining relevance in recent years, is IP protection of the output of AI. This article will look at whether (and how) IP protection can apply to the results produced by an AI, such as a new technology, a song, or even new data.
To read the full article, click here.
*Nick Palmieri, a Baker Botts Law Clerk, assisted in the preparation of this article.

Copyright Office Recommends Clarifications, but no “Wholesale Changes” to DMCA’s Safe Harbor Provisions
Nick Baniel
In May 2020, the United States Copyright Office issued a report assessing the effectiveness of Section 512 of the Digital Millennium Copyright Act (DMCA) , 17 U.S.C. §512, in the modern Internet era. Commonly known as the “Safe Harbor Provision,” Section 512 provides several avenues for online service providers (OSPs) to limit their liability for infringing content that is posted to their online platforms. Enacted in 1998, Section 512 has remained a primary statute of the DMCA governing liability for infringing online content, even though predating many of the modern internet giants it serves. In response to related congressional hearings that began in 2014, the Copyright Office issued this recent report after several years of study, with recommendations to Congress for adapting Section 512 to the modern age, where OSPs and rightsholders are faced with millions of potentially infringing uploads daily.
To read the full article, click here

Baker Botts Webinar: The U.S. Supreme Court's Impact on Intellectual Property 2020
On Thursday June 25th Baker Botts partners Michael HawesAaron Streett and Jennifer Nall held a webinar covering Supreme Court IP decisions, examining other IP cases to watch in 2020, and the current composition of the Court. To view a recording of the webinar, click here.

How USPTO Examiner Type Affects Patents: Part 2
Dr. Michael SartoriMatthew Welch
Using the LexisNexis PatentAdvisor database, the number of green, yellow and red examiners for each of the eight nondesign Tech Centers at the USPTO was gathered for years 2009 to 2019. The following Figure 1 illustrates the allowance rate for green, yellow and red examiners, as well as all examiners combined. As can be seen, the allowance rate for the green examiners is higher than the average allowance rate, while the allowance rate for the yellow and red examiners is consistently lower than the average allowance rate. In 2019, the allowance rate for the yellow examiners ticked up to slightly below the average allowance rate. Over the time period, the allowance rate for the green and yellow examiners has steadily increased, while the allowance rate for the red examiners had a 10% dip from 2014 to 2016 and then increased.
To read the full article, click here.
*This article was previously published in Law360 on June 16, 2020.

Webinar: How USPTO Examiner Type Affects Patents
On June 18th, Baker Botts Partner Dr. Michael Sartori hosted a webinar with Gene Quinn from IP and Megan McLoughlin from LexisNexis. They discussed the wide examiner variability at the USPTO, understanding this and how it affects the prosecution process and outcomes is of the utmost importance for patent practitioners. To view the recording of the webinar, click here.

Tech, Media Cos. Must Watch DOJ's China Initiative
Brendan Quigley
First unveiled in November 2018, the U.S. Department of Justice's "China Initiative" is a targeted focus on economic espionage, intellectual property and trade secret theft, and "other unfair trade practices" by the Chinese government. Despite the complexity of these cases — which often involve both complex technology and sensitive national security concerns — the DOJ has proceeded a rapid pace over the last 18 months.
To read the full article, click here
*This article was previously published in Law 360 on June 10, 2020.

Inter Partes Review Final Decisions – End of the Road or Right to Appeal?
Paul Ragusa
Filing a petition for the inter partes review (IPR) can be an efficient path to challenge the validity of an issued patent. Considerations including cost, timeliness, the availability of alternative bases for challenging patent validity and the likelihood of success can all enter a petitioner's decision to bring an IPR. However, even where an IPR is instituted, the Patent Trial and Appeal Board (the Board) finds in favor of the patent owner on some or all challenged claims in many cases. When this occurs, the petitioner does not necessarily have a right to appeal the final decision of the PTAB.
To read the full article, click here
*This article was previously published in the March/April issue of IP Litigator.

2020 Intellectual Property Practice Rankings
Our Intellectual Property lawyers and professionals have a deep commitment to exceptional client service. We are pleased to announce that the hard work and successes, on behalf of our clients, have been well recognized in various rankings this year. With sincere appreciation, we want to thank you for supporting our lawyers and trusting the Baker Botts team with your legal matters.

  • Chambers USA 2020 – The Baker Botts IP practice was recognized by Chambers USA nationally and in California, New York and Texas. For a full list of rankings in Chambers USA, click here.
  • The Legal 500 US 2020 - The Baker Botts IP practice was recognized in several Legal 500 categories: Patent Litigation, ITC, Patent Licensing, Patent Prosecution (including PTAB), and Trade Secrets. Our individual rankings included Hogene Choi (Leading Lawyer, Patent Prosecution), Lisa Kattan (Leading Lawyer, ITC), Christa Brown-Sanford (Next Generation Partner, Patent Licensing), and Katharine Burke (Next Generation Partner, Trade Secrets). To view Baker Botts' full list of rankings in Legal 500, click here.
  • IAM Patent 1000 2020 – The Baker Botts IP practice received nine practice rankings and included 20 ranked lawyers in the 2020 IAM Patent 1000 in California, New York, Washington, D.C., Texas, and London. To view Baker Botts’ full list of rankings in the IAM Patent 1000, click here.

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