The Section Educates
and Advocates

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

The ABA Section of Intellectual Property Law held its first annual Fall Leadership Meeting in November. By all accounts, the meeting was successful in achieving its goals of jump-starting committee and division activities earlier than in the past and providing leadership training and support for new committee chairs and veterans alike. With the meeting now behind us, the Section focuses on its missions of providing both education and effective advocacy for its members. A few of the current activities are discussed below.

Criminal Enforcement of IP Rights
One of the highlights of the Fall Leadership Meeting was an informative lunch-eon address by Michael DuBose, the U.S. Department of Justice’s Deputy Chief for Computer Crime and Intellectual Property. Mr. DuBose heads a group of fed-eral prosecutors in the Department of Justice that investigates and prosecutes cases involving intellectual property crimes. He explained that the United States has made the criminal enforcement of intellectual property rights a priority.

According to Mr. DuBose, theft of intellectual property unfortunately has be-come a relatively low-risk, high-return business. With the proliferation of broad-band internet access, IP crimes are becoming more and more prevalent. Counter-feiting of products ranging from copyrighted movies to pharmaceuticals is very lucrative and, up to now, has met with considerably lighter penalties than compa-rable crimes. Mr. DuBose pointed out that the proceeds from such crimes often are used to finance other criminal activities – possibly even terrorist activities.

To address these issues, the Administration recently sent to Congress a set of legislative proposals developed by DOJ and designed to strengthen intellectual property statutes. Mr. DuBose explained that the proposed legislation would stiffen penalties, expand criminal intellectual property protection and provide better investigative tools.

The Section appreciates the efforts of the Attorney General and professionals like Mr. DuBose in making criminal enforcement of IP rights a priority. Some of our committees are already monitoring the new legislation to identify areas in which our Section can have a positive impact on this important aspect of intel-lectual property protection.

The Section Weighs In on an Important Antitrust Case
Recently the Supreme Court heard arguments in an important case dealing with the balance between enforcement of the antitrust laws and exploitation of intellectual property rights. In Inde-pendent Ink, Inc. v. Illinois Tool Works, the Court reviewed the Federal Circuit’s decision that, in a Sherman Act Section 1 tying case, market power is to be presumed from the existence of a patent covering the tying product.

Several years ago, our Section was instrumental in establishing an ABA posi-tion that market power should not be presumed from the mere existence of a patent. The ABA, through the joint efforts of the Section of Antitrust Law and our Section, filed an amicus brief in the Independent Ink case urging the Supreme Court to reject the presumption adopted by the Federal Circuit. The brief points out that while a patent may lead to a presumption that a product is unique, Supreme Court precedent does not require a conclusion that such uniqueness necessarily leads to market power. Market power depends on many competitive factors, and the party alleging an anti-trust violation should bear the burden of proving the elements of a violation, including the patent owner’s possession of market power. The brief may be found at www.abanet.org/amicus/briefs/ 080305.pdf.

Appellate Advocacy Tips from the Federal Circuit
The Federal Circuit recently posted on its website an announcement of a meeting to address effective appellate advocacy, amicus brief participation, the attorney’s role as an officer of the court and the court’s internal processes. Themeeting was held on November 15, 2005, and was chaired by Chief Judge Michel. Phil Swain agreed to attend the meeting on behalf of the Section. The following are some of the high-lights of the judges’ comments, as reported by Phil Swain:

• Good briefs are essential and should include only a party’s best arguments.

• Appellate advocates should minimize the number of arguments presented on appeal.

• The brief is the most important aspect of the appellate presentation, but oral argument is important because it allows the judges to test propositions about which they have concerns.

• Advocates should get right to the point in oral argument, because the judges are well prepared.

• Advocates should be prepared to deal with the weaknesses of their cases and to respond to questions from the Court. Argument is not a time for lawyer speeches, but is a time for judges to ask questions.

• Advocates should not make arguments that they do not believe in, and should take care not to misstate facts from the record.

• Long, textual footnotes presenting adjunct arguments should be avoided.

• Amici should avoid arguments that are repetitive of those made by the parties.

• There is no plan to increase argument time beyond 15 minutes. Panels do al-low arguments to continue if they believe that counsel have not had adequate time to respond.

• Two judges’ comments suggested that the experience with announcing the names of judges on panels before the day of argument has not been particularly good, because lawyers have appeared to direct their arguments to cases decided by individual judges. The judges emphasized that all opin-ions are opinions of the Court.

• Chief Judge Michel acknowledged that the new appellate rules will allow citation to all of the Courts’ opinions, but indicated that the Court has not yet decided how much weight to give to opinions of the sort that currently are designated as non-precedential.

The Section appreciates the Court’s providing this forum for sharing its views with the bar. We are grateful to Phil Swain for attending the meeting and reporting to the Section.

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Correction: Last month's Chairs Bulletin contained an error. When referring to H.R. 4131, introduced by Congressman Sharrod Brown, the Chair's column indicated that the bill would authorize the Secretary of HHS and the Federal Trade Commission to order compulsory licensing of pharmaceutical patents in times of public health emergencies. The reference to the Federal Trade Commission was taken from an earlier bill that no longer is pending. H.R. 4131 only would authorize the Secretary of HHS to make such a determination.

Committee News

Copyright Office Affairs (Committee 303)
James R. Sims III and
Katherine Spelman, Co-Chairs

The Copyright Office Affairs Committee is currently planning the Section’s annual meeting with the Register of Copyrights and other senior Copyright Office staff members. The meeting will take place on February 23, and is currently slated to start at 10 a.m. (with pre-meeting mingling, coffee and refreshments starting about 9:30 a.m.) and typically runs until approximately 1 p.m., and will be at: Register's Conference Room, LM 403 - James Madison Memorial Building, Library of Congress, 101 Independence Avenue, S.E., Washington, D.C., 20559-6000.

Sims notes that this meeting always provides an informative session where attendees have the opportunity to hear first-hand what is going on at the Copyright Office and to ask questions in an informal forum. To RSVP or for further information, to join the committee, or to ensure that you are added to the committee’s e-mail notification list for this meeting, contact Jim at 202-739-5216 or jsims@morganlewis.com.

Economics and the Profession (Committee 508)
Mark Garscia and Scott M. Alter, Co-Chairs Exporting legal services to India and elsewhere overseas is the primary focus of Committee 508 for the coming year. Since aspects of patent prosecution, litigation and opinion/analysis work increasingly are being exported by U.S. companies and firms, the committee is taking a hard look at the advantages and pitfalls of exportation and the ex-periences of those who have partici-pated in the process. The committee is currently looking for additional members to help track current trends, assess the risks and benefits of exporting pat-ent services, and consider what it all may mean for the profession, generally. To sign up for this committee, go to www.abanet.org/intelprop/committees.html.

Legislative Update

PTO Funding Bill Signed; No User Fee Diversion
On November 22, President Bush signed into law H.R. 2862, the Science, Departments of State, Justice, and Commerce, and Related Agencies Appropriation, 2006 (Public Law 109-108). The bill provides funding of $1,683,086,000 for the USPTO in fiscal year 2006, which began October 1, 2005.

The final bill with this amount was approved by the House on November 9, and the Senate on November 16. Both the House and the Senate had earlier passed the bill with an additional $20 million allocated for the PTO, but a recent PTO downward revision of expected FY 06 fee collections led to a last-minute reduction in the appropriation. Under the bill, the PTO will receive about $140 million above the current year funding. Based on expected user fee collections, no diver-sion will take place in FY 06.

The $20 million last-minute reduc-tion will have no practical effect upon the funding that the PTO will receive in FY2006, since the bill already contained provisions limiting the appro-priation to the total amount actually received through user fees.

The conference report also stipulates minimum hiring levels for patent and trademark examination, and maximum hiring levels for the Office of the General Counsel and Office of the Administrator for External Affairs. Provisions first enacted two years ago prohibiting PTO employees from receiving reimbursement from private organizations to attend meetings of those organizations, and provisions barring the PTO from issuing patents on any claim di-rected to or encompassing a human organism are renewed. Similarly, the PTO is again directed to provide funding to the National Inventors’ Hall of Fame, and to support efforts of the International Intellectual Property Insti-tute to work with the University of Central Florida to design a curriculum to combat intellectual property rights infringement. Finally, the conference report includes a provision added in the Senate that would prohibit the PTO from registering a trademark of the phrase “Last Best Place,” which is a slogan of the State of Montana. Portions of the conference report re-lating to the PTO are posted on the Section website, at www.abanet.org/ intelprop.

House Advances Legislation to Ban Fee Diversion
On November 9, the House Judiciary Committee voted to favorably report H.R. 2791, the “United States Patent and Trademark Fee Modernization Act of 2005.” H.R. 2791 would make permanent PTO fee increases that are scheduled to expire next October, and contains provisions designed to prevent diversion of PTO user fees. These provisions are identical to those in H.R. 1561 in the 108th Congress. H.R. 1561 passed the House in March 2004, but stalled in the Senate when Senate appropriators objected to the antidiversion provisions. The fee increases, but not the anti-diversion provisions, were then added to the Consolidated Appropriations Act,2005, and enacted with a two-year sun-set in December 2004 (35 U.S.C. note; Public Law 108-447).

If enacted, H.R. 2791 would make these fee increases permanent and would provide a statutory disincentive for Congress to divert PTO user fee collections by requiring that fees collected be returned to persons who paid the fees to the extent the total collections exceed annual appropriations for the PTO. The ABA and the IPL Section support the enactment of H.R. 2791 as approved by the Judiciary Committee, but oppose the enactment of fee increases unless they are accompanied by statutory language to ensure that none of the fee revenue is diverted from its intended purpose of funding PTO operations.

House Passes Trademark Dilution Legislation
Legislation to provide major changes to the Federal Trademark Dilu-tion Act of 1995 (FTDA) has passed the House and is pending in the Senate. The bill, H.R. 683, the “Trademark Dilution Revision Act of 2005,” would (1) create a “likelihood of dilution” standard; (2) provide an express cause of action for dilution by tarnishment; (3) extend dilution protection for non-inherently distinctive marks; and (4) clarify fair use provisions in the FTDA.

Senate Acts to Strengthen Laws on IP Counterfeiting
On November 10, the Senate passed two bills to strengthen criminal laws on IP related counterfeiting. S. 1699, the “Stop Counterfeiting in Manufactured Goods Act,” would make it a crime to traffic in counterfeit labels or packaging, even when the labels or packaging are shipped separately from the goods to which they will ultimately be attached. Current law prohibits the trafficking in counterfeit trademarks “on or in connection with goods or services,” but does not prohibit the trafficking in the counterfeit marks themselves. The bill will also make counterfeit la-bels and goods, and any equipment used in facilitating a crime under this part of the code, subject to forfeiture and destruction upon conviction. S. 1095, the “Protecting American Goods and Services Act of 2005,” the second IP bill passed by the Senate on November 10, amends the definition of “trafficking” in the criminal counter-feiting law to include the possession of counterfeit goods with the intent to sell or traffic in those goods. It also includes any distribution of counterfeits with the expectation of gaining something of value, so that bartering illegal goods and services is prohibited on the same basis as selling. S. 1095 also makes it a criminal offense to import or export counterfeit goods or bootleg copies of copyrighted works.

Section Committees

impThe work of the ABA Section of In-tellectual Property Law – through its 62 committees – is the foundation of our productive efforts as the largest and most influential organization of intellectual property lawyers in the world.

Unlike many other organizations, our committees are composed of volunteers. Our committees write, critique, and comment on current and proposed policies, laws, rules and cases relating to intellectual property. Committee work is usually the basis on which the Section Council and membership take action in Congress, in the U.S. Patent and Trademark Office, in the U. S. Copyright Office, in other agencies, and in the courts.

Members who volunteer their time, enthusiasm and commitment to committees make a significant impact in advancing the profession, the practice and their own firms.

Join a Section committee today at www.abanet.org/intelprop/ ptmembership.html.

Joining a committee in an area of in-terest is the first step to becoming a leader of the Section.

Section Chair-Elect Susan Barbieri Montgomery is currently considering applications and nominations for division and committee chair appointments. A recommendation form for these positions can be found on the Section web-site, along with complete information on procedure. All current division and committee chairs are invited to make recommendations, including placing their own names forward, for these positions. To make a recommendation, visit www.abanet.org/intelprop/newappts /appointments1.html.

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