Amster Rothstein & Ebenstein, LLP - Intellectual Property Law http://www.arelaw.com/ Amster, Rothstein & Ebenstein is a well-established mid-sized legal firm engaged exclusively in the practice of intellectual property law, including patents, trademarks, copyrights, unfair competition and related matters. Since our inception in 1953, we have earned an impressive record of successes for our clients, from individuals to multinational corporations, both domestic and worldwide. These successes are borne of the vigorous application of legal expertise, innovation and objective analysis. en Thu, 20 Feb 2020 01:51:53 +0000 Floodlight Design CMS Amster Rothstein & Ebenstein and Max Vern Named to the World Trademark Review’s 1000 List http://www.arelaw.com/publications/view/inthepress02132020/ Amster Rothstein has been ranked among the top trademark firms in the world in the United States: New York category by the <a href="https://www.linkedin.com/company/world-trademark-review?trk=organization-update_share-update_update-text" target="_blank">World Trademark Review</a>. In addition, partner <a href="https://www.linkedin.com/in/max-vern-1a3b541b?trk=organization-update_share-update_update-text" target="_blank">Max Vern</a> is repeatedly named a leading individual in the WTR1000 2020 directory.<br /><br />The firm is noted for being &ldquo;A nimble boutique with a gift for efficient and cost-effective problem solving.&rdquo; <br /><br />The WTR notes that &ldquo;Immensely popular internationally, [Amster Rothstein &amp; Ebenstein] acts for a plethora of major brands in Europe, Latin America and Asia, thanks in no small part to the fact that the side includes native speakers of 10 or so different languages, ensuring easy communication with clients around the world. Recent developments include expansion into the pharmaceutical sector as a result of increasing instruction from Korean life sciences entities.&rdquo;<br /><br />The publication says that &ldquo;Max Vern garners excellent feedback from his loyal fans abroad,&rdquo; including a quote noting that, &ldquo;Max is a reliable and conscientious professional of the highest calibre; dealing with US filings, oppositions, cancellations and litigation, he achieves fantastic results.&rdquo; He and the team &ldquo;are extremely organised and provide a very personal service, creatively handling matters in a way that aligns with your needs.&rdquo;<br /><br /><a href="https://www.worldtrademarkreview.com/directories/wtr1000/rankings/united-states-new-york" target="_blank">Learn more and read the full rankings</a>. Thu, 13 Feb 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress02132020/ Four ARE Lawyers to Attend the 2020 INTA Annual Meeting in Singapore http://www.arelaw.com/publications/view/inthepress02122020/ Four lawyers from Amster, Rothstein &amp; Ebenstein will be attending the 2020 INTA Annual Meeting in Singapore on April 25-29. These lawyers include associate David Goldberg and partners Charles LaPolla, Anthony LoCicero and Max Vern. Max will be leading a table topic on April 25 covering the practical aspects of protecting trademarks for certain goods and services in the United States (table TS05). The INTA Annual Meeting is the world&rsquo;s largest and most influential gathering of intellectual property professionals, offering attendees the educational and networking opportunities in today&rsquo;s increasingly global IP market. Wed, 12 Feb 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress02122020/ Mark Berkowitz to Speak at the 7th Annual Amazon Summit Conference on Sourcing Secrets http://www.arelaw.com/publications/view/02112020event/ Partner Mark Berkowitz will be a panelist at the 7th Annual Amazon Summit Conference and Expo on February 11. Mark will discuss legal issues relating to sourcing products for sale on Amazon. Mark is well-versed in the intellectual property concerns that arise for sellers in the Amazon Marketplace, including counterfeits, photographs and descriptions copied from third-party websites, trademark infringement and patent infringement. ARE Law is proud to be a silver sponsor of the event.<br /><br /><a href="http://bit.ly/2umeQKu" target="_blank">Learn more and register</a>.<br /> Tue, 11 Feb 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/02112020event/ Anthony LoCicero Participates in Podcast on the New York Intellectual Property Law Association (NYIPLA)'s Legislative Action Committee http://www.arelaw.com/publications/view/inthepress02112020/ As the co-chair of the New York Intellectual Property Law Association (NYIPLA)'s Legislative Action Committee, Managing Partner Anthony LoCicero participated in a NYIPLA podcast providing an overview of the LAC, its mission and its current activities (such as outreach to the Congress, drafting of white papers, analyzing and assessing the potential impact and consequences &ndash; both intended and unintended &ndash; of pending legislation, etc.). <br /><br />Anthony is a former president of the NYIPLA.<br /><br /><a href="http://bit.ly/2ShyfFo" target="_blank">Listen to the podcast.</a> Tue, 11 Feb 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress02112020/ Amster Rothstein & Ebenstein Named One of The PCT Network’s Top 100 Member Firms of 2019 http://www.arelaw.com/publications/view/inthepress02102020/ Amster Rothstein &amp; Ebenstein was recently named one of The PCT Network&rsquo;s Top 100 Member Firms of 2019. The firms that were nominated exemplify excellence in the five core values of The PCT Network: quality, integrity, transparency, professionalism and community.<br /><br />The PCT Network brings together more than 650 law firms in order to improve the way in which they handle foreign filings and improve the outcome for the clients they represent.<br /><br />For more information, please contact <a href="https://www.arelaw.com/professional/bhalpern/" target="_blank">Benjamin Halpern</a>.<br type="_moz" /> Mon, 10 Feb 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress02102020/ ARE Patent Law Alert:<br>How Brexit May Impact Your EU and UK Patent Rights<br> http://www.arelaw.com/publications/view/alert02072020/ As previously reported on January 31, 2020, the United Kingdom will no longer be a part of the European Union, under the finalized Brexit Withdrawal Agreement. <br /> <br />Unlike Trademarks (see our alert <a href="https://www.arelaw.com/publications/view/alert01302020/" target="_blank">How Brexit Will Impact Your EU and UK Trademark Rights</a>), the European Patent Convention (EPC), which established the European Patent Office, is a treaty that was entered into between various European states independent of the European Union. After January 31, 2020, the United Kingdom joined 11 of the 38 member states of the EPC who are not otherwise part of the European Union. In that regard, it is not expected that the process of obtaining a European Patent (with coverage in the UK) will change after Brexit. Applicants can continue to designate the UK, like any other member state, on European Patents.<br /> <br />However, Brexit's effect on European Patents in the UK may nevertheless be felt in the future. For example, because the UK is no longer part of the European Union, EU Regulations will no longer apply in the UK. Similarly, the Court of Justice of the European Union will no longer have authority over the UK. While, at least to begin with, it is expected that the UK will likely adopt current directives of the EU, over time it would not be surprising to see treatment of EU patents in the United Kingdom diverge from the treatment of the same EU patent in other member states. <br /> <br />In general, the decision of whether to file for UK protection through a European Patent rather than a UK Registration should not be impacted by Brexit (at least for the short term), but how such patents are to be enforced down the road is still an open question.<br /> <br />We will continue to monitor with our European colleagues to keep our clients informed of further developments of Brexit on IP protection in the UK and Europe. Fri, 07 Feb 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/alert02072020/ Max Vern to Lead a Table Topic at the INTA Annual Meeting on Protecting Trademarks http://www.arelaw.com/publications/view/inthepress02072020/ On Sunday, April 25 from 9am to 11am, partner Max Vern will lead a Table Topic (TS05) during this year's INTA Annual Meeting in Singapore. Max will delve into the practical aspects of protecting trademarks for certain goods and services in the United States. Fri, 07 Feb 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress02072020/ ARE Trademark Law Alert:<br>How Brexit Will Impact Your EU and UK Trademark Rights<br> http://www.arelaw.com/publications/view/alert01302020/ The Brexit Withdrawal Agreement has been finalized, and the United Kingdom will no longer be a member of the European Union as of 11:00 p.m. GMT on January 31, 2020. That said, negotiations on a trade agreement between the UK and EU will continue through the end of the year. During this time, EU Trademark Registrations will still be in force in the UK.<br /><br />Although EU Trademark Registrations will no longer cover the UK as of January 1, 2021, there are already arrangements in place to allow the owners of such registrations to keep their trademark rights in the UK (including their priority dates) by providing them with corresponding national UK Trademark Registrations automatically and free of government charge.<br /><br />Similarly, the owners of EU Trademark Applications that are pending as of January 1, 2021 will also be able to keep their priority dates and obtain corresponding national UK Trademark Applications. However, the application &ldquo;cloning&rdquo; process will not be automatic, will involve the payment of a government fee, and must be started by September 30, 2021.<br /><br />Because EU Trademark Applications typically take 5-6 months to be granted, provided they do not encounter any Office Actions or Oppositions, there may be no need to consider filing duplicate UK Applications for EU Trademark Applications filed before June 2020. But if an EU Trademark Application is likely to give rise to an Office Action or Opposition, or if an EU Trademark Application is filed after May 2020, filing a duplicate UK Trademark Application would be generally recommended.<br /><br />We will continue to monitor this topic and will issue further ARE Trademark Law Alerts as developments occur. In the meantime, please feel free to contact us if you have specific questions about how these developments may affect your trademark rights.<br /><br />*Max Vern is a partner and David P. Goldberg is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practice specializes in intellectual property issues, including obtaining and enforcing trademark and other intellectual property rights. They may be reached at <a href="mailto:mvern@arelaw.com">mvern@arelaw.com</a> and <a href="mailto:dgoldberg@arelaw.com">dgoldberg@arelaw.com</a>.<br /> Thu, 30 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/alert01302020/ In The Press:<br>Charles R. Macedo Interviewed by Chandler Sturm in New York Intellectual Property Association’s Pod Bites Podcast Series Discussing Peter v. NantKwest<br> http://www.arelaw.com/publications/view/01202020inthepress/ The New York Intellectual Property Association (NYIPLA) featured a podcast with partner <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles Macedo</a> on the Peter v. Nanktwest decision in its Pod Bites series. Charley was interviewed by law clerk Chandler Sturm.<br /><br />The podcast delves into a unanimous decision by the Supreme Court in December 2019 that held that the U.S. Patent and Trademark Office (PTO) is not entitled to be reimbursed for attorney&rsquo;s fees from patent applicants who file appeals against USPTO decisions under 35 USC &sect; 145. The case reinforced the application of the American rule, a default principle in U.S. law which says two opposing sides in a legal matter must pay their own attorney fees, regardless of who wins the case unless there is a legal or contractual requirement that says otherwise. This case has garnered attention from many intellectual property and law associations, many of which filed amicus briefs arguing against the government's request for attorney's fees from the plaintiff.<br /><br />In May 2019, Charley Macedo and David Goldberg filed an amicus brief on behalf of the New York Intellectual Property Association in this case. <br /><br />Listen to the <a href="https://soundcloud.com/user-659319321/pod-bites-amicus-brief-peter-v-nantkwest " target="_blank">full podcast</a>.<br /> Mon, 20 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/01202020inthepress/ Amster Rothstein & Ebenstein Expands Trademark and Patent Practices with Addition of Two Lawyers http://www.arelaw.com/publications/view/01092020inthepress/ January 9, 2020 (New York) &ndash; Amster Rothstein &amp; Ebenstein, a full-service intellectual property law firm has expanded its trademark and patent practices with the addition of two lawyers, continuing its strategic growth. <br /><br />The lawyers who have joined the firm are:<br /><br />&bull; <a href="https://www.arelaw.com/professional/clapolla/" target="_blank">Charles LaPolla</a> (Partner) specializes in the areas of trademark law including domestic and foreign prosecution, opposition and cancellation proceedings, Internet and domain name disputes, trademark litigation and other intellectual property litigation. Charles also has significant experience in copyrights, unfair competition, trade secrets and deceptive trade practices. His clients range from those in the fields of entertainment, including amusement and theme parks, to fashion, jewelry and cosmetics. He is a frequent lecturer at conferences and seminars.<br /><br />&bull; <a href="https://www.arelaw.com/professional/aboardman/" target="_blank">Albert Boardman</a> (Associate) is an intellectual property lawyer focusing on patent prosecution, preparation and litigation in the high-tech sector, particularly in the areas of computer software and consumer electronics. He is a registered patent attorney and has prepared and prosecuted patents in the fields of cloud computing, computer virtualization, computer graphics and electronic devices.<br /><br />&ldquo;We are excited to begin 2020 by welcoming these highly experienced lawyers to our firm who will add depth and breadth to our existing trademark and patent practices,&rdquo; said Managing Partner <a href="https://www.arelaw.com/professional/alocicero/" target="_blank">Anthony Lo Cicero</a>.<div style="text-align: center;"><br />***</div><br />About Amster, Rothstein &amp; Ebenstein LLP<br />Since 1953, Amster, Rothstein &amp; Ebenstein LLP has focused exclusively on representing clients in all facets of intellectual property law both domestically and internationally. The firm partners with clients to protect and maximize their intellectual property in a broad spectrum of industries such as financial services, fashion and retail, life sciences, medical devices, toys, entertainment, housewares, consumer electronics as well as blockchain and artificial intelligence. Our lawyers handle all facets of intellectual property law including: Patents, Trademarks, Copyrights and other related intellectual property law areas. Learn more about us at <a href="https://www.arelaw.com/" target="_blank">https://www.arelaw.com/</a>. Thu, 09 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/01092020inthepress/ In The Press: <br>Law360 Reports Further on NYIPLA Amicus Brief in Arthrex Prepared By Partner Charles R. Macedo and Associate David Goldberg<br> http://www.arelaw.com/publications/view/inthepress01092020/ Law360 reports on &quot;Everything You Need to Know About <em>Arthrex</em>&quot; including the amicus brief prepared by partner Charley Macedo and associate David Goldberg for the New York Intellectual Property Law Association:<br /> <div style="margin-left: 40px;"><br />The New York Intellectual Property Law Association filed an amicus brief in the case, putting its weight behind the way the USPTO framed the appeal.</div><br />A copy of the full article is available at: Dani Kass, <em>Everything You Need To Know About Arthrex</em>, LAW360 (Jan. 9, 2020), <a href="https://protect-us.mimecast.com/s/GAQ_CJ6PJ2cpMr8cG-mdP?domain=law360.com" target="_blank">https://www.law360.com/ip/articles/1232651/everything-you-need-to-know-about-arthrex?copied=1</a>) (subscription required).<br /><br type="_moz" /> Thu, 09 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress01092020/ In The Press: <br>IPWatchdog Provides Arthrex Update including Summary Of NYIPLA Amicus Brief Prepared By Partner Charles R. Macedo and Associate David Goldberg<br> http://www.arelaw.com/publications/view/inthepress192020/ IPWatchdog issued an <em>Arthrex </em>Update on January 9, 2020 including a summary of the amicus brief prepared by partner Charles R. Macedo and associate David Goldberg for the New York Intellectual Property Law Association.<br /> <br /> <div style="margin-left: 40px;"><a href="https://protect-us.mimecast.com/s/QK9bCM89M2cxmO5TQvGgP?domain=ipwatchdog.com" target="_blank">NYIPLA&rsquo;s amicus brief</a> argues that the Federal Circuit should grant <em>en banc</em> rehearing and adopt the formulation of the issues in <em>Arthrex</em> as articulated by the U.S. government&rsquo;s petition for rehearing.<br />&nbsp;</div>A copy of the full article is available at: Steve Brachmann, <em>Arthrex Update: With Responses Due Next Week, Amici Urge Federal Circuit to Grant Rehearing</em>, IPWATCHDOG (Jan. 9, 2020), <a href="https://www.ipwatchdog.com/2020/01/09/arthrex-update-amici-urge-full-federal-circuit-grant-petitions-rehear-arthrex/id=117714/" target="_blank">https://www.ipwatchdog.com/2020/01/09/arthrex-update-amici-urge-full-federal-circuit-grant-petitions-rehear-arthrex/id=117714/</a>. Thu, 09 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress192020/ Practical Law:<br>Appealing Patent Trial and Appeal Board Final Written Decisions<br> http://www.arelaw.com/publications/view/01082020practicallaw/ <div><strong>REVISED January 8, 2020 --</strong>&nbsp;<a href="/images/file/20200108%20Appealing%20Patent%20Trial%20and%20Appeal%20Board%20Final%20Written%20Decisions%20(W-006-9741).pdf" target="_blank">Appealing Patent Trial and Appeal Board Final Written Decisions</a></div> Wed, 08 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/01082020practicallaw/ Practical Law:<br>Understanding PTAB Trials: Key Milestones in IPR, PGR, and CBM Proceedings<br> http://www.arelaw.com/publications/view/practicallaw01082020/ <strong>REVISED January 8, 2020 --&nbsp;<a href="/images/file/20200108%20Understanding%20PTAB%20Trials%20Key%20Milestones%20in%20IPR%20PGR%20and%20CBM%20Proceedings%20(3-578-8846).pdf" target="_blank">Understanding PTAB Trials: Key Milestones in IPR, PGR, and CBM Proceedings</a></strong> Wed, 08 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/practicallaw01082020/ In The Press: <br>Law360 Reports on Amicus Brief Filed by Partner Charles R. Macedo and Associate David Goldberg for NYIPLA in Request for En Banc Review of Arthrex v. Smith & Nephew<br> http://www.arelaw.com/publications/view/inthepress01072020/ Law360 reports on amicus brief filed by Partner <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> and Associate <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David Goldberg</a> for the New York Intellectual Property Law Association in support of requests for en banc review by the full Federal Circuit in Arthrex v. Smith &amp; Nephew.&nbsp; Law360 also quoted Mr. Macedo regarding the submission:<div>&nbsp;</div> <div style="margin-left:.5in">&ldquo;We think it&rsquo;s not only important that the Federal Circuit takes the case, but that they properly frame the issues,&rdquo; Charles R. Macedo of Amster Rothstein &amp; Ebenstein LLP, representing the NYIPLA, told Law360.</div> <div>&nbsp;</div> <div><i>Arthrex</i> involves a determination that Patent and Trial Appeal Board (PTAB) Administrative Patent Judges (APJs) were &ldquo;principal officers&rdquo; who, according to the U.S. Constitution, must be appointed by the president and confirmed by the Senate.</div> <div>&nbsp;</div> For the full article, please click <a href="https://www.law360.com/ip/articles/1230769/generics-industry-urges-fed-circ-to-fix-arthrex-disarray-" target="_blank">here</a>&nbsp;(subscription required).<br /> Tue, 07 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress01072020/ Amster Rothstein & Ebenstein Promotes Brian Amos to Senior Counsel http://www.arelaw.com/publications/view/01072020inthepress/ January 7, 2020 (New York) &ndash; Amster Rothstein &amp; Ebenstein, a full-service intellectual property law firm, is pleased to announce the promotion of <a href="https://www.arelaw.com/professional/bamos/" target="_blank">Brian Amos, Ph.D.</a> to senior counsel. <br /><br />A former research neuroscientist who represents universities, research institutions and corporations in the preparation and prosecution of patent applications worldwide, predominantly in the fields of biotechnology, medical therapeutics and pharmaceuticals, Brian works closely with scientists, in-house counsel and Technology Transfer Offices to identify and inventory new patentable technologies; protect discoveries through patents; and commercialize intellectual property through licensing and development arrangements with other business entities.<br /><br />Brian&rsquo;s specific areas of patent procurement experience include artificial intelligence-based technologies, diagnostic technologies, antibodies and fusion proteins, engineered immune therapeutics and targeted therapies, immune checkpoint interventions, recombinant live vaccines, vaccine enhancers, cancer therapies, nucleic acid sequencing technologies, siRNAs, antisense oligonucleotides, stem cell-based therapies, cardiac treatments, neurological treatments, cellular delivery agents, nucleic acid-based nanotechnologies, small molecules, pharmaceutical formulations, complete syntheses of natural products, EEG-based methods and medical devices.<br /><br />Brian has published articles in Nature Biotechnology and for Oxford University Press on patent law issues and has been a webinar presenter to Tech Transfer professionals and other attorneys on subjects such as patentable subject matter in diagnostics and Bayh-Dole Act compliance.<br /><br />&ldquo;Brian&rsquo;s promotion reflects our firm&rsquo;s dynamic growth as we continue to expand in practice areas crucial to our clients. We are confident that Brian will continue to make important contributions to our clients in the years ahead,&rdquo; said Managing Partner <a href="https://www.arelaw.com/professional/alocicero/" target="_blank">Anthony Lo Cicero</a>.<br /><div style="text-align: center;">***</div><br /><strong>About Amster, Rothstein &amp; Ebenstein LLP</strong><br />Since 1953, Amster, Rothstein &amp; Ebenstein LLP has focused exclusively on representing clients in all facets of intellectual property law both domestically and internationally. The firm partners with clients to protect and maximize their intellectual property in a broad spectrum of industries such as financial services, fashion and retail, life sciences, medical devices, toys, entertainment, housewares, consumer electronics as well as blockchain and artificial intelligence. Our lawyers handle all facets of intellectual property law including: Patents, Trademarks, Copyrights and other related intellectual property law areas. Learn more about us at <a href="https://www.arelaw.com/" target="_blank">https://www.arelaw.com/</a>.<br /> Tue, 07 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/01072020inthepress/ Brief For Amicus Curiae in Arthrex, Inc. v. Smith & Nephew, Inc., Arthrocare Corp. http://www.arelaw.com/publications/view/amicus12302019/ Click to dowload PDF:&nbsp;<a href="/images/file/Brief%20for%20Amicus%20Curiae%20Arthrex,%20Inc_%20v_%20Smith%20&amp;%20Nephew,%20Inc_%20et%20al_.pdf" target="_blank">Brief For Amicus Curiae in Arthrex, Inc. v. Smith &amp; Nephew, Inc., Arthrocare Corp.</a> Mon, 30 Dec 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/amicus12302019/ NYIPLA Urges Federal Circuit to Review Arthrex En Banc http://www.arelaw.com/publications/view/article12302019/ On December 30, 2019, the New York Intellectual Property Law Association (&ldquo;NYIPLA&quot;) filed an amicus brief in support of a petition by the Intervenor United States for en banc review by the Federal Circuit in <em>Arthrex Inc. v. Smith &amp; Nephew Inc.</em>, No. 18-2140.&nbsp; The <em>Arthrex</em> panel decision addressed whether administrative patent judges (&ldquo;APJs&rdquo;) serving on the PTAB were appointed in violation of the Appointments Clause in Article II, Section 2, Clause 2 of the United States Constitution.&nbsp; The panel held that APJs are &ldquo;principal officers of the United States&rdquo; under the Patent Act (Title 35) as it has been enacted and structured.&nbsp; As such, the appointment of APJs by the Secretary of Commerce was held to be a constitutional violation.&nbsp; To &ldquo;fix&rdquo; the constitutional defect, the panel severed the portion of the Patent Act restricting removal of the APJs only &ldquo;for cause,&rdquo; thus purportedly rendering APJs &ldquo;inferior officers&rdquo; going forward and remedying the constitutional appointment problem.&nbsp;<br /><br /> Significantly, all parties to this action, including the United States as the Intervenor, sought review of the panel decision by the full Federal Circuit in three separate petitions for rehearing or rehearing <em>en banc</em> filed earlier this month.&nbsp;<br /><br /> In its brief, the NYIPLA did not take a position on the merits, but urged the full court to &ldquo;grant <em>en banc</em> review of this case and adopt the formulation of the issues as presented by the United States in its Petition, namely:&rdquo;<br /><br />1.Whether the administrative patent judges of the Patent Trial and Appeal Board are inferior officers of the United States under the Appointments Clause, U.S. CONST. art. II, &sect; 2, cl. 2, such that Congress permissibly vested their appointments in a department head, rather than principal officers who must be nominated by the President and confirmed by the Senate.<br /><br /> 2.Whether this Court should entertain an Appointments Clause challenge a litigant forfeited by failing to raise it before the agency.<br /><br /> 3.How to remedy any Appointments Clause defect in the Patent Trial and Appeal Board.<br /><br /> The NYIPLA believes that each of the issues raised by the United States in its Petition are the subject of substantial debate and should be addressed by the full Court.&nbsp;&nbsp;<br /><br /> First, while there is no dispute that APJs are &ldquo;officer of the United States,&rdquo; a significant debate has erupted following <em>Arthrex</em> as to whether the APJs are &ldquo;principal officers,&rdquo; requiring appointment by the President with the advice and consent of the Senate, or &ldquo;inferior officers&rdquo; who may be appointed by the Secretary of Commerce.&nbsp; The NYIPLA pointed out that all Supreme Court cases relied upon by the federal circuit panel &ldquo;have concluded that the officers in question [in those cases] were &lsquo;inferior officers&rsquo; under the Appointments Clause:&rdquo;<br /><br />Second, even if APJs were properly held to be &ldquo;principal&rdquo; officers, the NYIPLA questioned &ldquo;whether the Opinion&rsquo;s solution is a proper and adequate remedy to the alleged Appointments Clause defect.&rdquo;&nbsp; The NYIPLA argued that, since <em>Arthrex</em>, a disagreement has arisen within the Federal Circuit itself as to &ldquo;whether the act was properly severed and applied prospectively, and, if so, whether it should also be applied retrospectively.&rdquo;&nbsp;<br /><br />Third, the NYIPLA urged the full Federal Circuit to confirm &ldquo;where and when a party must raise an Appointments Clause challenge in order for it to be heard, for the efficient administration of justice.&rdquo;&nbsp; The NYIPLA pointed out the apparent confusion as to which Appointments Clause challenges are properly raised by the parties to be adjudicated, and argued that the Court should &ldquo;provide guidance for litigants (and the PTAB) on the proper means and timing to raise the Appointments Clause challenges.&rdquo;<br /><br />Thus, the NYIPLA argued: &ldquo;The Opinion raises important issues at the heart of practice before the PTAB and has the potential to affect numerous PTAB decisions and this Court&rsquo;s determinations of appeals.&hellip;Prompt, efficient resolution of the issues presented is warranted and requires an analysis by the Court as a whole.&rdquo;&nbsp;&nbsp;<br /><br /><strong><span style="text-decoration-line: underline;"><a href="https://www.nyipla.org/images/nyipla/Amicus/Arthrexv.Smith&amp;Nephew.pdf" target="_blank">Read the Full Amicus Brief&gt;&gt;</a></span></strong><br /><br /> * <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a>, Co-Chair of the PTAB Committee, and <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David P. Goldberg</a>, Co-Chair of the Amicus Briefs Committee, from Amster, Rothstein &amp; Ebenstein LLP, Robert M. Isackson, First Vice President and Board Liaison for the Amicus Briefs Committee, from Leason Ellis LLP, Robert J. Rando, NYIPLA Board Member, from The Rando Law Firm P.C., and Ksenia Takhistova, Amicus Briefs Committee Member, each appeared on behalf of the NYIPLA in this submission. Chandler Sturm is a Law Clerk at Amster, Rothstein &amp; Ebenstein LLP who worked on the brief.&nbsp; The NYIPLA thanks her for her assistance.<br /><br />For the full article, <a href="https://www.nyipla.org/NewsBot.asp?MODE=VIEW&amp;ID=28158" target="_blank">click here&gt;&gt;</a>. Mon, 30 Dec 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/article12302019/ In The Press: <br>Law360 Reports on Amicus Brief Filed By Partner Charles R. Macedo on Behalf of Askeladden LLC for POP Panel at PTAB<br> http://www.arelaw.com/publications/view/inthepress12242019/ Law360 reports on amicus brief filed by Partner <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> on behalf of Askeladden LLC for Precedential Opinion Panel of the Patent Trial and Appeal Board in <em>Hunting Titan, Inc. v. DynaEnergetics GmbH &amp; Co. KG</em>. (IPR2018-00600):<br /><br /><div style="margin-left: 40px;">Askeladden LLC, a company in the business of challenging patents, noted in its brief that the decision otherwise calls on petitioners to perform as patent examiners, even though they have &ldquo;varying amounts of incentive, resources, or sophistication.&rdquo;<br /><span style="text-align: center;"><br />***<br /></span><span style="text-align: center;"><br /></span>While Askeladden and HTIA said that parties need to be able to respond to the grounds raised by the board under the APA, <em>amici </em>Google, eBay, HP and IAC disagreed.<br /><span style="text-align: center;"><br /></span>***<br />&nbsp;</div><div style="margin-left: 40px;">Askeladden is represented by Charles R. Macedo of Amster, Rothstein &amp; Ebenstein LLP.<br />&nbsp;</div>Dani Kass, <em>Give PTAB Leeway In Rejecting Amendments, Top Panel Told</em>, LAW360 (Dec. 23, 2019), <a href="https://www.law360.com/articles/1230517/give-ptab-leeway-in-rejecting-amendments-top-panel-told?copied=1 " target="_blank">https://www.law360.com/articles/1230517/give-ptab-leeway-in-rejecting-amendments-top-panel-told?copied=1</a> (subscription required).<br /><br />Askeladden's Amicus Brief is available <a href="/images/file/Askeladden%20Amicus%20Brief%20Hunting%20Titan%20v_%20DynaEnergetics.pdf" target="_blank">here</a>.<br /> Tue, 24 Dec 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress12242019/ ARE PTAB Law Alert:<br>Petitioners, Patent Owners and the Government Are All Asking the Full Court of the Federal Circuit to Reconsider Arthrex and its Progeny<br> http://www.arelaw.com/publications/view/alert12202019/ On Thursday, October 31, 2019, the U.S. Court of Appeals for the Federal Circuit held in <em>Arthrex, Inc. v. Smith &amp; Nephew, Inc.</em> that Administrative Patent Judges (&ldquo;APJs&rdquo;) at the Patent Trial and Appeal Board (&ldquo;PTAB&rdquo;) are &ldquo;principal officers&rdquo; in light of how the Patent Act (Title 35) has been enacted and structured. As such, according to the panel, the appointment of APJs by the Secretary of Commerce as set forth in Title 35 violates the Appointments Clause, U.S. CONST., art. II, &sect; 2, cl. 2. <em>Arthrex, Inc. v. Smith &amp; Nephew, Inc.</em>, 941 F.3d 1320 (Fed. Cir. 2019).<br /><br />In an effort to remedy the purported constitutional violation, the Court severed the protections of 35 U.S.C. &sect; 3(c) as applied to APJs, which had restricted the removal of APJs only &ldquo;for cause.&rdquo; The Court held that, effective as of October 31, 2019, APJs could be removed &ldquo;at will&rdquo; and, with this modification to the statutory framework, the Court found that APJs would be considered inferior officers and the constitutional appointment problem would thus purportedly be remedied going forward. <em>See, e.g.</em>, Charles R. Macedo, <em>Federal Circuit Declares PTAB APJs To Be Superior Officers Appointed In An Unconstitutional Manner, But Offers A Fix Going Forward With Limited Relief Going Back</em>, ARE PTAB Law Alert, available at <a href="https://www.arelaw.com/publications/view/alert11042019/" target="_blank">https://www.arelaw.com/publications/view/alert11042019/</a>.<br /><br />As we reported in our prior ARE PTAB Law Alert on this case, a number of follow-on decisions were issued soon thereafter. These decisions feature varying twists on the <em>Arthrex </em>holding, including at least one panel decision questioning the scope and effectiveness of the remedy, and another panel decision asking for further briefing on the core questions raised by <em>Arthrex</em>.<br /><br />On Monday, December 16, 2019, all three parties involved in the <em>Arthrex </em>matter submitted separate petitions for rehearing and/or rehearing <em>en banc</em>, with respect to the following questions:<br /><br /><strong>&bull; Arthrex, Inc. (Appellant and Patentee) &ndash; Combined Petition for Panel Rehearing &amp; Rehearing En Banc<br /><br /></strong><div style="margin-left: 40px;">1. Whether Congress would have enacted the IPR statute, 35 U.S.C. &sect; 311 <em>et seq.</em>, creating quasi-judicial review of issued patents, without tenure protections for APJs necessary to ensure their independence and impartiality; and<br />&nbsp;</div><div style="margin-left: 40px;">2. Whether APJs remain principal officers under the Constitution even without tenure protections when they still have the power to issue Final Written Decisions absent meaningful review by an officer nominated by the President and confirmed by the Senate.<br />&nbsp;</div><strong>&bull; Smith &amp; Nephew, Inc. &amp; ArthroCare Corp. (Appellees and Petitioners) &ndash; Petition for Rehearing En Banc<br /></strong><br /><div style="margin-left: 40px;">1. Whether Administrative Patent Judges are inferior or principal officers of the United States; and <br /><br />2. If APJs are principal officers, what remedy is warranted for any defect in their appointment.<br />&nbsp;</div><strong>&bull; United States (Intervenor) &ndash; Petition for Rehearing En Banc <br /></strong><br /><div style="margin-left: 40px;">1. Whether the administrative patent judges of the Patent Trial and Appeal Board are inferior officers of the United States under the Appointments Clause, U.S. CONST. art. II, &sect; 2, cl. 2, such that Congress permissibly vested their appointments in a department head, rather than principal officers who must be nominated by the President and confirmed by the Senate;<br /><br />2. Whether this Court should entertain an Appointments Clause challenge a litigant forfeited by failing to raise it before the agency; and<br /><br />3. How to remedy any Appointments Clause defect in the Patent Trial and Appeal Board.<br />&nbsp;</div>These three petitions, however, are not the only rehearing petitions that have been filed with respect to the Appointments Clause and APJs. For instance, in <em>Uniloc 2017 LLC v. Facebook, Inc.</em>, No. 2018-2251 (Fed. Cir. Oct. 31, 2019), another panel vacated a PTAB decision and remanded the case for further proceedings based on Arthrex. Additionally, appellees Facebook, Inc. and WhatsApp, Inc. filed a combined petition for rehearing and rehearing <em>en banc</em> on Monday, December 2, 2019, presenting the following questions:<br /><br /><div style="margin-left: 40px;">1. Whether the appointment of Administrative Patent Judges (APJs) to the Patent Trial and Appeal Board (PTAB) violates the Appointments Clause of the U.S. Constitution, U.S. CONST., Art 2, &sect; 2, cl. 2, as the panel in <em>Arthrex, Inc. v. Smith &amp; Nephew, Inc.</em>, 941 F.3d 1320 (Fed. Cir. 2019) concluded; and <br /><br />2. If the answer to question (1) is &ldquo;yes,&rdquo; what appropriate judicial remedy, if any, can be fashioned to ameliorate the constitutional violation?<br />&nbsp;</div>These questions show that there is significant disagreement as to the court&rsquo;s decision in <em>Arthrex</em>. Other pending appeals from the PTAB have also been impacted by the <em>Arthrex </em>decision and are likely to result in further percolation at the Federal Circuit.<br /><br />We will continue to monitor and report on developments in these matters. In the meantime, please feel free to contact us to learn more. <br /><br />*Charles R. Macedo is a Partner and Chandler Sturm is a Law Clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practice specializes in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. The authors may be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a> and <a href="mailto:csturm@arelaw.com">csturm@arelaw.com</a>. Fri, 20 Dec 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/alert12202019/