The resolutions listed below will be debated at the ABA Annual Meeting, at the Section Business Session, Saturday, August 11, 2007. To access the committee report that accompanies each proposed resolution, click on the name of that resolution.  If you have questions, contact the Section at iplaw@abanet.org, or call 312/988-5598.

Class I Resolutions - Full Debate:


• 108-2A — Deferred examination of patent applications
• 108-2B — Deferred examination of patent applications (Full Debate as Amended, if and only if 108-2A is not approved by the Business Session)
• 402-1 — Exception to work-made-for-hire provisions

Class II and Class III Resolutions:

• 2006-2007 Proposed Resolutions and Committee Reports

Provide Comments:
All members should review the proposed resolutions immediately. If you have any objections to the classification or suggested changes to any proposed resolution, please contact the appropriate committee chair prior to the debate on the resolution (indeed, if possible, prior to the meeting). Each committee chair’s address, telephone number and e-mail address can be found on the Section's Committee page. If you need help in locating a committee chair, contact the Section office. This procedure should expedite the making of non-controversial changes in form and allow more time for debate on the substantive issues presented by the resolutions.

Register:
ABA Annual Meeting information, a complete Section event schedule, and online registration can be found at, www.abanet.org/intelprop/annual2007. All members are encouraged to attend the annual Business Session and Members Forum and to participate in the shaping of Section policy on important issues of IP law and practice. Registration for the ABA Annual Meeting is required for participation in any ABA-IPL events.

Rules of Debate for Business Session:
Robert’s Rules of Order Newly Revised (10th edition) will govern the rules of debate where the Section’s Bylaws and Section Manual do not otherwise apply.
Each resolution will be introduced by a five-minute statement in favor of the resolution followed by a five-minute statement in opposition to to resolution. Debate will proceed alternating between “pro” and “con” until it appears to the Chair that the positions of all speakers for one or the other position have been heard. The time limit for each person is one minute. A speaker may speak only once per resolution, except that the Chair, in the Chair’s discretion, may give the proponent of the resolution one minute for a response at the conclusion of the debate. If your point has been made by someone else, please try not to repeat it. The Section Parliamentarian, Morton David Goldberg, will advise the Chair on enforcing the rules.

Procedure for Additional Resolutions to Be Presented:
The following procedures will be followed for resolutions presented to the Resolutions Committee for consideration at the 2007 Business Session:

1.   Each noncommittee report resolution intended for consideration by the Section prior to the Business Session at the ABA Annual Meeting must be submitted as an e-mail attachment to the chair of the Resolutions Committee and to the ABA-IPL Section Director for receipt no later than July 18, 2007. Resolutions received thereafter will not be considered by the Section prior to the Business Session unless the Section Chair rules otherwise.
Any resolution submitted in this manner should be accompanied by the name and onsite Annual Meeting address of its proponent. The proponent shall recommend the desired action by the Committee, e.g. “full debate when Committee 102 resolutions are considered,” and shall also indicate whether or not a hearing before the Committee is desired.
With respect to each resolution properly before it in accordance with this paragraph, the Committee will make one or more of the following recommendations:

• The resolution should be considered by the Section in connection with a specific Committee report, as a special order of business, or as New Business;
• The resolution should be amended in some specified manner or that a substitute resolution should be considered.
• The resolution should be referred to an appropriate committee for study during the coming year.

The Committee’s recommendations will be submitted to the Section Chair for a decision prior to the Business Session.

2.   Any resolution to be submitted to the Section as New Business at the Business Session must first be submitted to the Resolutions Committee in typewritten form so that a sufficient number of copies may be made before such resolution is considered by the Section. Any such resolution must be accompanied by the name and onsite Annual Meeting address of its proponent.
The Committee will consider any such resolutions properly before it and make recommendations in accordance with (1) above. During the Business Session, these recommendations shall be reported to the Section for decision by the Section Chair, subject to approval of the Section.
If requested by the proponent, the Committee will also specify a time and place for a hearing, should the Committee agree that a need for a hearing exists. Failure of a proponent to appear at an announced hearing may, at the Committee’s discretion, amount to withdrawal of the subject resolution.
The Section Chair may place on the agenda and announce a time certain when the Resolutions Committee will again report to the Section.

3.   Late committee reports containing at least one resolution with a favorable committee vote shall be submitted to the Resolutions Committee at the same time they are submitted to other Section personnel who normally receive such reports. If received by the Committee no later than July 18, 2007, the Committee will make recommendations with respect to any approved resolutions in accordance with paragraph (1) above.

4.   Should a proponent wish to submit to the Resolutions Committee a resolution which is the same or substantially the same as one considered but not approved by a committee of the Section, the proponent shall:

a.   make known to the Resolutions Committee such prior action;
b.   make a strong showing of urgency;
c.    appear in person before the Resolutions Committee prior to the Council Meeting preceding the Business Session or, if unable to do so, arrange a conference call with the Committee to discuss the resolution; otherwise, the resolution will be referred to the appropriate committee for further study the following year.




Resolution Classifications

Class 1 Resolutions which Council believes should go to the floor of the Section for full debate.

Class 2 Resolutions which Council believes it may approve, disapprove, modify or recommit without submitting said resolutions to the floor.

Class 3 Resolutions which Council believes may rest and be reported only as committee resolutions.

The Members Forum will be held immediately following the conclusion of Saturday’s Business Session on August 11, 2007, during the ABA Annual Meeting.
 
Topic for 2007 Members Forum:
There has been an evolution from patents on (a) computer-implemented inventions in conventional technological arts (e.g., In re Prater's spectrographic analysis machine and method) to (b) computer-implemented "business" methods (e.g., State Street Bank's investment method) to (c) business methods per se that are not computer-implemented (e.g., Ex parte Lundgren's method of compensating a manager) to (d) motion picture plots." 
 
Should that evolution have stopped at some point before (d), or should it continue through (d) and beyond?
 
This is a very important and controversial topic: there is criticism from some Justices of the Supreme Court, from some members of Congress and from the media that business method patents have gone too far.  Members of ABA-IPL will have an opportunity to address this timely issue at the Members Forum.  The BMP Committee of the ABA-IPL Patent Law Reform Task Force has begun a study of the topic and identified three alternatives as a frame work for analysis and debate, as follows:
 
Alternative No. 1
A claimed invention is eligible for patenting under 35 U.S.C. § 101 if it recites a practical application and produces a useful and reproducible result. The statutory requirements of novelty, nonobviousness and definiteness are adequate to prevent unduly broad or ambiguous claims from being patented.

Alternative No. 2

The term "technological arts" is the modern equivalent of the term "useful Arts" as used in Article I, Section 8, of the U.S. Constitution, and it means the application of science and engineering to the development of machines and procedures in order to enhance or improve the human condition, or at least improve human efficiency in some respect. Thus, a claimed invention is eligible for patenting under 35 U.S.C. § 101 only if it constitutes an advancement of the technological arts and produces a reproducible result.

Alternative No. 3

Subject matter eligible for patenting should be limited to things that are physical and tangible or processes for manipulating such things. Non-tangible subject matter, such as computer software or a disk containing software,  by itself is not eligible for patenting.

 

Rules of Debate for Members Forum:

This Forum is an opportunity for Section members -- only members of ABA-IPL, please -- to express their views on the pros and cons. After a five-minute introduction to the topic by the Chair of the Business Method Patents Sub-Committee of the ABA-IPL Patent Law Reform Task Force and separate brief statements by Proponents of each of the three Alternatives, members will be given the opportunity at the Forum to express their own views. Debate will proceed until it appears to the Chair that the positions of all speakers have been heard. If your point has been made by someone else, please try not to repeat it. Since the Forum is not a Business Session, and in keeping with the informality of the discussion, no resolutions will be proposed. The time limit for each person is one minute. A speaker may speak only once, except that the Chair, in the Chair’s discretion, may give the Chair of the BMP Sub-Committee of the ABA-IPL Patent Law Reform Task Force or any of the Proponents one minute for a summary statement at the conclusion of the debate. The Section Parliamentarian, Morton David Goldberg, will advise the Chair on enforcing the rules.