Bridging the Gap between the Federal Courts and the United States Patent & Trademark Office: The Journal of Science and Technology Law Symposium

February 24, 2017

Boston University School of Law
Room 212
765 Commonwealth Ave
Boston, MA 02215

To register, click here.

In the past five years, the landscape of intellectual property litigation has changed dramatically. Most notably, the Leahy-Smith America Invents Act (“AIA”), which was signed into law by President Barack Obama on September 16, 2011, created several new administrative alternatives to patent litigation. This Symposium will examine the resulting relationship between the federal courts and the administrative bodies tasked with implementing the AIA.

The goals of this Symposium are (1) to provide an opportunity to “bridge the gap” between the scholar and the practitioner by examining how the AIA’s foundational tenants and nuances are used and understood in academia and in practice, and (2) to create a dialogue whereby academics and practitioners can learn from one another and share their insights with students. In particular, the Symposium will look at the tensions created between the courts, especially the U.S. Court of Appeals for the Federal Circuit, and the administrative bodies involved in the procedures established by the AIA. Panel topics will include alternative proceedings for patents within the administrative system resulting from the AIA, the relationship between those alternative proceedings and traditional proceedings in the courts, and the relationship between the Constitution and these administrative proceedings more generally.


8:30 – 9:00 AM   Continental Breakfast and Registration
Butler Atrium

9:00 – 9:15 AM: Welcome                                                           
Room 212

Yevgeniy Yalon, Editor-in-Chief, Journal of Science & Technology
Frederick Tung, Associate Dean for Academic Affairs, Boston University School of Law

9:15 AM – 10:30 AM Panel I: Patents
Room 212

Michael Meurer, Boston University School of Law
Patent Examination Priorities
Greg Reilly, Chicago-Kent College of Law
Patent Office Post-Issuance Review and the Constitution
Paul Gugliuzza, Boston University School of Law
Quick Decisions in Patent Cases

11:00 AM – 12:15 PM Panel II: PTO v. Courts
Room 212

Megan La Belle, Catholic University of America School of Law
Privilege for Patent Agents
Melissa Wasserman, University of Texas School of Law
Procrastination in the Workplace: Evidence from the U.S. Patent Office
Rochelle Dreyfuss, New York University School of Law

12:15 – 1:45 PM Lunch
Barristers Hall

1:45 – 3:00 PM Panel III: Trademarks
Room 212

Rebecca Tushnet, Georgetown Law School
Fixing Incontestability: The Next Frontier
Christine Farley, American University Washington College of Law
No Trademark, No Problem
Alexandra Roberts, University of New Hampshire School of Law
Trademark Failure to Function

3:30 – 4:45 PM Panel IV: PTO Policy
Room 212

James Daily, Washington University School of Law
Alice’s Aftermath: Changes in Patent Applicant and Patentee Behavior Since
Alice v. CLS Bank
Dmitry Karshtedt, George Washington University Law School
Acceptance Instead of Denial: Pro-Applicant Positions at the PTO
Arti Rai, Duke University School of Law
The Evolving Role of the PTAB

4:45 – 5:00 PM Closing Remarks & Thank-You
Room 212
Kaitlin Heinen & Annie Hudson, Managing Editors,
Journal of Science & Technology Law

5:00 – 6:30 PM    Reception
Charles River Room

Panelists – JOSTL Symposium: “Bridging the Gap

James Daily
Lecturer in Law, Washington University Law
Research Technologist, The Center for Empirical Research in Law
J.D. 2008, Washington University in St. Louis
M.S. 2007, Washington University in St. Louis
B.A. 2004, Hendrix College
JOSTL symposium topic: the fallout from Alice, by examining the behavior of applicants and patentees at the PTO

Rochelle Dreyfuss
Pauline Newman Professor of Law, New York University School of Law
Co-Director, Engelberg Center on Innovation Law & Policy
Co-Director, Competition, Innovation, and Information Law Program
J.D. 1981, Columbia Law School
M.S. 1970, University of California at Berkeley B.A.
1968, Wellesley College
JOSTL symposium topic: commentator

Christine Farley
Professor of Law, American University Washington College of Law
J.S.D. 2006, Columbia Law School
LL.M. 1997, Columbia Law School
J.D.1994, University at Buffalo Law School
B.A. 1989, Binghamton University
JOSTL symposium topic: the TTAB
s receptivity in cancellation proceedings to claims by holders of trademarks neither used nor registered in the U.S.

Dmitry Karshtedt
Associate Professor of Law, George Washington University Law School
J.D. 2011, Stanford University
Ph.D. 2005, U.C. Berkeley
A.B. 1999, Harvard University
JOSTL symposium topic: issues of standing (and particularly injury-in-fact) in AIA-related litigation

Megan La Belle
Associate Professor of Law, The Catholic University of America, Columbus School of Law
Co-Director, Law and Technology Institute
J.D. 1999, University of California, Davis
B.A. 1996, University of California, Los Angeles
JOSTL symposium topic: whether communications with patent agents are privileged; the PTO has recently proposed a rule creating such a privilege

Arti Rai
Elvin R. Latty Professor of Law, Duke University School of Law Co-Director, Duke Law Center for Innovation Policy
A.B. 1987, Harvard College
J.D. 1991, Harvard Law School
JOSTL symposium topic: TBD

Alexandra Roberts
Assistant Professor of Law, University of New Hampshire School of Law
J.D., Yale Law School
A.M., Stanford University
A.B., Dartmouth College
JOSTL symposium topic:
the “use as a mark” threshold requirement for trademark protection as applied by the TTAB and federal courts

Greg Reilly
Assistant Professor of Law, Chicago-Kent College of Law
J.D., Harvard Law School
Georgetown University
JOSTL symposium topic: the constitutionality of post-issuance review in the PTO, i.e., what power Congress has to confer post-issuance review on the PTO

Rebecca Tushnet
Frank Stanton Professor of First Amendment Law, Harvard Law School A.B. 1995, Harvard University
J.D. 1998, Yale Law School
JOSTL symposium topic: issues in trademark registration, focusing on the gap between what courts think about registration and what the PTO thinks

Melissa Wasserman
Professor, The University of Texas at Austin School of Law
J.D. 2007, New York University
Ph.D. 2004, Princeton
B.S. 1997, Pennsylvania State University Park
JOSTL symposium topic:
the standards of review that PTAB’s legal and factual determinations should be afforded when reviewed by the Federal Circuit