Section Committees Have Full Plates

From the Chair
E. Anthony Figg
Section Chair, 2005-2006

By the time this article is published, the Section will have had its first annual Fall Leadership Conference. Hurricane Wilma gave us some anxious moments, but it appears that the site of our meeting, Bonita Springs, Florida, was spared the brunt of the storm and will be back to normal by the time we arrive. Current indications are that the meeting will be well attended by our Section leadership.

The Leadership Conference provides a forum in which the Section's Committees report on their organizational plans and substantive agendas for the coming year. Many of the committees are off to a running start and are already dealing with important and topical issues. Some of the highlights are discussed below.

Trademark Dilution Bill

The Section has long favored the adoption of a “likelihood of dilution” standard for awarding relief to owners of famous trademarks and has urged amendment of the Federal Trademark Dilution Act to include such a standard. Recently, our legislative consultant, Hayden Gregory, received word that the Senate Judiciary Committee would be marking up H.R. 683, a bill that would adopt the “likelihood of dilution standard” and make other changes to the dilution statute.

Committee 201 (Trademark Legislation) and our Task Force on Trademark Dilution were asked to review the bill and provide comments consistent with established Section policy. As a result of the efforts by Committee 201 Co-Chair Patti Smart, Task Force Chair Jeffrey Samuels, Division II Chair Jonathan Jennings and Section Chair-Elect Susan Montgomery, a letter was sent to Senators Hatch and Leahy (chairman and ranking minority member of the Subcommittee on Intellectual Property respectively) endorsing the bill in general and pointing out a few areas of ambiguity. Our primary concern involved language relating to a fair use exclusion. The amendment as drafted excludes from liability “any fair use, including a nominative or descriptive fair use, or facilitation of such fair use of a famous mark . . . .” The Section has recommended deleting the language referring to “nominative or descriptive fair use, or facilitation of such fair use” as unnecessary and potentially causing confusion and ambiguity.

Our team is to be commended for its prompt attention to this legislation, enabling us to provide our comments to the Senate Judiciary Committee in a timely way.

Special Patents Trial Courts

A hearing of the House Judiciary Committee's Subcommittee on Intellectual Property was held in September to address a proposal to have specialized patent courts (or at least specialized patent judges) at the trial level. The hearing arose out of an idea advanced by Congressman Darrell Issa of California who has reportedly stated that the legislation establishing the Federal Circuit placed the “professionalized court” at the wrong level.

Committees 101 (Patent Legislation) and 601 (Trial and Appellate Rules and Procedure) are studying this proposal and have been asked to develop a position that the Section might adopt in the event that a need for Section input arises in the future.

Compulsory Licensing and Public Health Emergencies

Congressman Sharrod Brown has introduced a bill (H.R. 4131) that would provide for compulsory licensing of pharmaceutical patents in times of public health emergencies. The bill would authorize the Secretary of Health and Human Services to order such compulsory licensing. While we do not expect near term action on this bill, the extensive media attention being given to the potential for an avian flu pandemic might increase the level of interest in Congress. Therefore, we want to be in a position to respond promptly if necessary. Committees 101 (Patent Legislation) and 108 (Patent System Policy and Planning) are working together to develop a position that the Section might adopt with respect to this legislation.

Triway Discussions

The Section was recently asked by the PTO to participate in discussions with PTO officials and other IP organizations concerning proposals to introduce a trilateral search and patent application examination arrangement among the United States, Japan and the European Patent Offices. These ideas are in the early stages of consideration. They would allow each of the three offices to share search and examination results and provide greater efficiencies that hopefully would inure to the benefit of applicants and the public. Committee 103 (Patent and Trademark Office Affairs - Patents) Co‑Chairs Denise DeFranco and Donna Meuth, along with Division I Chair Sam Helfgott, have been participating in the discussions with the PTO and other IP organizations. Committee 103 is preparing a report and possible position on the Triway proposals.

Patentable Subject Matter

At the end of October, the Supreme Court granted certiorari in the case of Laboratory Corporation of America v. Metabolite Laboratories. This is a potentially important case dealing with the scope of patentable subject matter under 35 U.S.C. 101 with respect to patent claims that involve laws of nature, natural phenomenon and abstract ideas. The claim at issue is directed to a method of detecting a vitamin B deficiency which comprises assaying a body fluid for an elevated level of total homocysteine and then correlating an elevated level with the vitamin deficiency. The Federal Circuit found the claim to be valid and willfully infringed. In particular, the Court found that the defendant had induced infringement through its publications advising doctors that elevated levels of total homocysteine correlate with vitamin B deficiency.

Committees 160 (Special Committee on Biosciences and Chemical Practice) and 605 (Amicus Briefs) have been asked to study issues implicated by the Metabolite case. Committee 160 is developing a potential Section position on the issues raised in the case and Committee 605 is addressing the advisability of requesting permission to file an amicus brief on behalf of the ABA.

Other Section Activities

Publications Task Force

I have appointed a special task force, chaired by Joe Potenza, to deal with Section publications. This task force is to identify publication opportunities and to coordinate with members and publishers to facilitate the creation of useful publications. One of the task force’s first assignments is to organize the publication of a substantial work on drafting patent claims for litigation. This is a project in which the Section is coordinating with BNA Books.

If members have ideas for Section publications or wish to volunteer for publication projects, they are encouraged to contact Joe Potenza, at JPotenza@
bannerwitcoff.com, or Alice Bare, at barea@staff.abanet.org.

NIHF Board Appointment

We were recently invited by the National Inventors Hall of Fame to appoint a Section representative to that organization’s board to assist in identifying inductees. I’m pleased to announce that Rob Lindefjeld has agreed to accept this appointment.

Committee Membership

As you can see from the foregoing discussion, the Section’s committees are already dealing with interesting and important issues of the day. These activities potentially will affect our clients and our practices in significant ways. If you have not already volunteered to be active on a committee, it is not too late to sign up. Please consult the Section’s website for a listing of committees and sign-up instructions, at www.abanet.org/intelprop/committees.html.