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

The Section’s Summer IPL Conference was held in Boston this year on June 21-24. It was the last stand-alone summer conference. Beginning next year, the Section will return to holding its principal meeting of the year in conjunction with the ABA Annual Meeting – to be held in the beautiful city of San Francisco August 9 through 14, 2007. This change is one of several that arose out of the recommendations of the Long-Range Planning Task Force over the past few years. Rejoining the ABA Annual Meeting will allow more of our members to benefit from a wide range of programs, speakers and social events, and will facilitate our relationships with other ABA entities.

By all accounts, our final Summer IPL Conference was a big success. Not only did we have an outstanding array of CLE programs, but we had distinguished and interesting speakers for our luncheons and plenary session. The opening speaker for the plenary session was Michael Greco, President of the ABA. Mr. Greco highlighted some of the ABA’s priorities and described his efforts to advocate for the importance of the rule of law around the globe. He also explained the Association’s efforts to defend the attorney-client privilege by urging the Department of Justice to end the practice of making lighter sentencing recommendations contingent on defendants’ waiver of privilege. Mr. Greco praised the Section for its work this year and expressed gratitude for our decision to re-join the ABA Annual Meeting. We thank Michael Greco for taking time from his extraordinarily busy schedule to address our Section.

Our keynote speaker for the opening plenary session was Hon. William Young, District Judge of the U.S. District Court for the District of Massachusetts. Judge Young delivered an inspiring speech on the importance of the jury system. He made a compelling argument that patent claim construction should be viewed as a mixed question of law and fact, and that the Federal Circuit should give deference to the factual findings underlying district courts’ claim construction rulings – a position that our Section advocated in its amicus curiae brief to the Federal Circuit in the Phillips case.

We were most fortunate to have as our first luncheon speaker Hon. Alberto R. Gonzales, Attorney General of the United States. www.abanet.org/intelprop/summer2006/hightlights.shtml Attorney General Gonzales explained the importance of effective intellectual property protection to the U.S. economy. He described some of the efforts of the Department of Justice’s Intellectual Property Task Force to strengthen anti-counterfeiting legislation and to enhance enforcement activities both here and abroad. The Department, under Attorney General Gonzales’ leadership, has introduced legislation that would make counterfeit trafficking sentences more severe, that would strengthen forfeiture provisions, that would set up an FBI operational unit to address computer and other IP-related crimes, and that would implement the Task Force’s recommendation to locate federal prosecutors in Hong Kong and Budapest to help coordinate enforcement. These efforts to combat the rapidly growing criminal enterprises engaged in piracy and counterfeiting are welcomed by the IP community. We are grateful to Attorney General Gonzales for his leadership in connection with these important initiatives and for sharing his comments with our Section.

We also were honored to have as Friday’s luncheon speaker, Hon. John Doll, U.S. Commissioner of Patents. Commissioner Doll explained the PTO’s ongoing efforts to revise the rules of practice relating to continuation practice and examination of claims. He indicated that the numerous public comments received by the Office are being considered and that final rulemaking will probably occur later this year. Mr. Doll described the Office’s commitment to enhancing the quality of examination and reducing pendency. In this regard, he talked about the Office’s accelerated examination procedures as a way for applicants to achieve faster examinations by taking an active role in the examination process. Commissioner Doll took numerous questions from the audience. When a member expressed the view that applicants are reluctant to submit examination reports because of the fear of being accused of inequitable conduct in subsequent litigation, Commissioner Doll acknowledged that this was a legitimate concern. He stated that the Office is interested in supporting efforts of the IP bar to effect revisions to the law of inequitable conduct. Our Section is following up with Mr. Doll on this proposal and has meetings scheduled with PTO officials and representatives of other IP bar groups. Commissioner Doll’s presentation turned out to be a lively and interesting interactive discussion, and we are grateful to him for sharing his views with us.

One of the highlights of the Section’s annual meeting is its Annual Business Session. At this session, members are given the opportunity directly to affect Section policies by debating and voting on important resolutions. This open debate is a feature of our Section that distinguishes us from other organizations. This year, the members debated and voted on six resolutions. Among the resolutions adopted at the session was a resolution raised as new business that supports the pilot program for assigning patent cases to designated judges in designated districts, as set forth in H.R. 5418 (Issa). The resolutions that were adopted at the meeting appear here open in new window.

A new feature of the Annual Business Session that was recommended by our Long-Range Planning Task Force was an open forum for members to express their views on a topic of current importance. This year, the open forum focused on the proposed new PTO rules on continuation practice and limitations on examination of claims. The discussion was very ably led by John Whealan, Deputy General Counsel and Solicitor of the USPTO and our members, Steve Caltrider, Mark Garscia and David Westergard. As many members commented, this discussion was productive, cordial and highly professional. The program was recorded and will be transcribed, so that the Section and others can benefit from the numerous constructive ideas that came out of the discussion.

I wish to thank all of the speakers and moderators whose hard work made this meeting a success. I also wish to extend special thanks to program chairs, Fred Koenig, Marisia Campbell and Garner Weng, and to our staff, Betsi Roach, Mike Winkler, Beverly Banks, Megan Bennett, Amy Mandel and Carlos Vivanco.

 

We Need Your Involvement – Please Join a Committee!

Chair-elect Susan Barbieri Montgomery has mailed a letter reminding you that committee work in the Section is the foundation of our productive efforts. Our committees actively write, critique and comment on current and proposed policies, laws, rules and cases relating to intellectual property, plan CLE programs, and much more. Committee work usually is the basis on which the Section Council and membership take action in Congress, the U.S. Patent and Trademark Office, the U.S. Copyright Office, other agencies and the courts. The work of our committees makes a difference in advancing our profession. Active participation in committee work is professionally rewarding and educational, and provides an opportunity for members to interact with colleagues and leaders in the intellectual property bar.

As you may know, the Section is the largest and most influential organization of intellectual property lawyers in the world. We are seeking volunteers who are interested in actively participating in the Section’s committee work for the next year. We have dramatically revised our Committee and Division structure and now ask for you to review the listing to make your selection. Even if you have been on the same committee for several years, please be sure to check and see that your committee will still be active.

Please use this link and the on-line form to join a committee today – www.abanet.org/intelprop/committees.html. When you fill out the committee preference form, please be sure to include your email address for committee communications. Timely, active, and effective participation in the work of the Section’s committees requires electronic communication among committee members and electronic voting on the committee’s reports and resolutions. Please also visit www.abanet.org/abanet/common/MyABA/home.cfm to update your contact information.
Committee work will begin in September, so be sure to sign up now. We look forward to working with you to keep our Section a leader for IP issues.

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Summer Conference Wrap Up

The 2006 Summer IPL Conference, held June 21 - 24, was presented in cooperation with Boston Bar Association Intellectual Property Section, Intellectual Property Law Section of the Connecticut Bar Association, Boston Patent Law Association and Intellectual Property and Entertainment Committee of the International Bar Association Section of Business Law, offered top presentations on IP licensing, on-line content [see articles below] and video gaming, software patents, pro bono activities and export controls. Attorneys from around the world came to give insight into international hot topics in trademarks, litigation and patent prosecution as well as IP ownership risks abroad. The CD-Rom of course materials for the conference is available to order for $75. Call 1-800-285-2221 and request the 2006 Summer IPL Conference—Course Materials.

In addition to Hon. William G. Young, U.S. District Court Judge for the District of Massachusetts was delivered the Thursday keynote address on The Rule of Law, and ABA President, Michael Greco, who provided introductory remarks as well as an overview of the Section’s participation in the ABA. ABA President-Elect, Karen Mathis, joined the Conference for the Friday breakfast program on “The Economic Case for Diversity.” Attendees also heard addresses by U.S. Commissioner of Patents John Doll and U.S. Trademark Commissioner Lynne Beresford, who participated in a special meeting with the Trademark Division

This year a special IP Bloggers Corner gave attendees the opportunity to meet the faces behind some of the more popular IP blog sites on the Internet. The bloggers were present to discuss their sites with attendees.

We congratulate Lauren Haller and Kimberly Thomas who were awarded a Sidney B. Williams, Jr. Intellectual Property Law Scholarship, presented by AIPLEF.

Be sure to mark your calendars now for next year’s ABA Annual Meeting, to be held August 9-14, 2007 in San Francisco. The Section headquarters is the Hotel Nikko and registration will be available after the meeting in Hawaii this August. There will be high-quality CLE programming and the opportunity to network with IP colleagues from across the nation and international attendees as well. If you are interested in assisting with conference planning please contact the co-chairs of the conference, Tom Smegal (tomsmegal@smegallaw.com or phone 415.217.8383) or Kate Spelman (kate@campcobalt.com or phone 510.841.9800). For sponsorship opportunities please contact Mike Winkler (WinklerM@staff.abanet.org or phone 312.988.5639).
We look forward to seeing you in San Francisco next August!

 

Trademark Commissioner Lynne Beresford
Engages in Summer IPL Conference Discussions
Tom Brooke

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At the Summer IPL Conference last month in Boston, a group of trademark lawyers active in Section leadership had the opportunity to sit down with U.S. Commissioner for Trademarks Lynne Beresford. Commissioner Beresford reported that business is growing at the PTO, with the 233,287 International Classes applied for when reviewing all applications through May, 2006. This represents a 13.6% increase over the predicted number of Classes to be applied for in FY 2006. In FY 2005, a total of 323,501 Classes were applied for.

The PTO continues to believe that it will achieve its longstanding goal of Three Months pendency from filing to first Office Action. According to the PTO’s internal surveys, current average pendency is 5.4 months. Commissioner Beresford believes that number will be reduced.

Electronic filing has become standard. As of May, 2006, almost 94% of all applications are filed electronically. A “second generation” of the TEAS application is in the works, but will not be available for quite some time. Beresford urged practitioners to forward any questions or comments on electronic filing to Craig Morris at the PTO, craig.morris@uspto.gov.

On the issue of the TEAS PLUS system, the list of accepted descriptions of goods or services continues to grow. Suggestions for additional descriptions should be sent to “TMIDSuggest@uspto.gov.”

Commissioner Beresford believes that the paper Official Gazette (OG) is likely to become a thing of the past, and it may soon no longer be cost-effective to print. While acknowledging the concerns raised by those present at the meeting in Boston about the unwieldy PDF format of the online OG, Commissioner Beresford recommended searching through the PTO’s TESS system under the “SEARCH OG” option.

Beresford noted that despite the recent excitement over movements to “recodify” the Lanham Act into Title 35 of the U.S. Code, she not believe such a move is likely.

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On Line Content – Can Copyright Laws on Fair Use Keep Up?
Barbara Friedman

The digitizing of copyrighted works has exposed numerous gaps in the law’s ability to deal with new technologies. In the online world, one cannot read an article, for example, without making several copies of it—the code in the computer’s RAM, the source code in the HTML, and the image of the story on the screen are all separate copies. In the analog world, these copies would constitute prima facie copyright infringement, but do they, or should they, in the digital world?

On-line copyright liability was discussed at the 2006 Summer IPL Conference in Boston during a lively panel on the application of traditional copyright law to the on-line world. The panel was moderated by Barbara Friedman, counsel to Hanson Bridgett Marcus Vlahos & Rudy in San Francisco and chair of the Copyright Committee of the State Bar of California. Speakers were Alex Macgillivray, senior product and intellectual property counsel at Google, Chris Sprigman, associate professor at the University of Virginia School of Law, and Robert Hamadi, the head of communications at The Publishers Association in London.

The panel focused on two key cases: Agence France Presse (AFP) v. Google, and the cases brought by the Author’s Guild and various publishers challenging Google’s library project. The AFP case arises in the context of Google’s news service, Google News, a search tool that helps users locate web pages containing news stories on a given subject. Google News displays headlines to identify available news stories on a range of topics. A user enters a search term and Google displays a list of newspaper headlines along with a few words of the text. To read the article, the user can click on the headline that links to the web site where the particular story is published. AFP’s complaint claims that when Google News copies and displays headlines generated and supplied to news outlets by AFP, it is infringing AFP’s copyright in those headlines. Google counters that AFP’s headlines are not copyrightable as a matter of law.

The Google Library project cases are the publisher’s response to Google’s ongoing plan to scan the complete contents of the Harvard, Stanford, Oxford, University of Michigan, and the NY Public libraries. Users can then enter searches for word phrases or quotations. When the search result is from a public domain work, users are permitted to browse the entire book. When the search term appears in a work still under copyright protection, users can only see a few snippets surrounding the search term. Publishers and copyright owners are able to opt out entirely, but were not asked permission up front—and there is no “opt in” provision. The publishers have argued that Google’s “infringe first ask permission later” policy inverts traditional principles of copyright law, which has always been “opt in.” Google counters that its scanning constitutes fair use.

As these cases and others play out in the courts, some initial answers will [may] emerge to address new questions of infringement and fair use in the digital environment.

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Program On Software Patents Offers Practical Advice For Patent Prosecutors And Litigators
Toni Tease

At the Summer IPL Conference in Boston, Committee 701 (Computer Software Technology) sponsored a program entitled “Perspectives on Software Patents.” The program was very well received and included speakers with experience in drafting, prosecuting, and litigating software patents. Organized and moderated by Antoinette M. Tease, then Chair of Committee 701 and upcoming Chair of Division VII (Information Technology), the program provided practical advice for both patent prosecutors and patent litigators and included experienced practitioners from around the country.

Steve Greenberg with the law firm of Carey, Rodriguez, Greenberg & Paul LLP in Boca Raton, Florida, offered practical tips for drafting software applications that will result in issued patents. Mr. Greenberg suggested limiting the application to 20 pages, including no more than 20 claims, and requesting an in-person interview with the examiner after the first Office Action. Mr. Greenberg typically includes no more than three or four figures in a software patent application, and he avoids the use of screen shots that may be construed as unnecessarily limiting. In his view, anything practitioners can do to reduce examination time will increase the odds of the patent issuing.

According to Scott McKeown, a patent attorney with the law firm of Oblon Spivak McClelland Maier & Neustadt P.C. in Alexandria, Virginia, software claim prosecution relates primarily to reciting a “useful concrete and tangible result” or a “physical transformation.” In many non-apparatus claim types, this kind of recitation typically requires framing a relationship in the claim to hardware; in method claims, however, the absence of hardware is no longer objectionable because the previously applied “technological arts” test was expressly disavowed in Ex parte Lundgren, Appeal No. 2003-2088 (BPAI 2005).

Joe Hosteny, a patent litigator with the firm Niro, Scavone, Haller & Niro in Chicago, Illinois, addressed software claims from the perspective of defending them in court. Mr. Hosteny suggested avoiding limiting terms like “the present invention” and “the object” in the patent application and including single-limitation dependent claims. He encouraged the inclusion of multiple embodiments and a relatively short and concise statement of the problem. Finally, Mr. Hosteny recommended including both apparatus and method claims, and as a result of the court’s ruling in NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005), writing the apparatus claims so that control and benefit of a system occur in the United States.

If you are a tech-savvy lawyer, or if you are simply interested in IT issues, and would like to get involved with Division VII (Information Technology), please contact Toni Tease at toni@teaselaw.com.

 

Hot Topics in International Trademark Law
Amy Benjamin

During the 2006 Summer IPL Conference, attendees heard from a panel of distinguished speakers on cutting edge trademark issues around the world. The panel, moderated by Amy Benjamin of Darby & Darby PC and Peter Wilcox of Torys, LLP, Toronto included:

• Kathryn Cruse, of Withers & Rogers, LLP’s Birmingham, England office who spoke about efforts to harmonize U.K. trademark prosecution with EU practice, recent decisions from the European Court of Justice and procedural changes to opposition practice before OHIM;
• Peter Wilcox, addressing the new decisions in the Lego and Barbie cases;
• Nelia Hickman of Adams & Adams, South Africa, speaking about new cases addressing the issues of parody, dilution and the intersection of trademark law and free expression;
• Nadine Farid, of Harvard Law School, on recent cases addressing fraud before the U.S. Patent and Trademark Office; and
• Yan Wu of China Patent Agent (H.K.) Ltd., who spoke on changes to the protection of well known marks in China.

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Spring Conference Sessions now Available as Online courses

Select sessions from the recent 21st Annual Intellectual Property Law Conference in April are available from the ABA Web Store as online streaming web casts, eligible for CLE credit in those states that allow CLE for listening to audio sessions.

Available sessions include:

1. What Works? Best Practices for an IP Trial as Viewed from the Bench and Bar
2. Markman Marks Ten Years - Are We Better Off? The Bench, the Litigator, and the Client Weigh In
3. Hot Topics in Antitrust and Intellectual Property Law
4. Copyright and the Digital Revolution
5. Anti-Counterfeiting Strategies, Legal Remedies, and Government Initiatives
6. Patent Infringement at the Borders
7. Hot Topics in Licensing and Franchising

The sessions vary in length from 90 minutes to 3 hours. They can be purchased through the ABA Web Store online at www.abanet.org/abastore. Search on “ip online course” to locate the sessions. Section members can purchase them at a discounted rate of $125. ABA members who are not sections members have a discounted rate of $135, and the rate for non-ABA members is $150.

Recorded sessions from the recent 2006 Summer IPL Conference in Boston are being processed and will soon be available in the ABA Web Store. Check back in August to purchase and listen to these sessions.

Upcoming Section Events

Practical Tips On Enforcing and Defending Patents Program Set For Twin Cities

William Mitchell College of Law in St. Paul, Minnesota will host the Section of Intellectual Property Law’s one-day CLE program, “Practical Tips on Enforcing and Defending Patents,” on October 12, 2006.

The program will feature top professionals from the IP field who will provide practical advice on dealing with the “nuts and bolts” of every day patent practice. It is designed to enhance a broad array of skills and enable IP practitioners to handle the many tasks that routinely arise in intellectual property law practice.

The Practical Tips series, sponsored by the Section’s Young Lawyers Committee, is now in its ninth year, and has featured programs on Trademark Law, general IP law, Enforcing and Defending Patents, Handling Intellectual Property Disputes, and Patent Prosecution. These programs have been held in a variety of cities across the U.S., including Seattle, San Francisco, Palo Alto, San Diego, Chicago, Atlanta, Raleigh-Durham, Philadelphia, Boston, Dallas, and Washington, DC.

The October 12 program will be held in cooperation with the Minnesota Intellectual Property Lawyers Association, and the William Mitchell College of Law.

Full program information and registration will be available in mid-August. Watch the Section website's calendar for details. The advance registration deadline for the Practical Tips on Enforcing and Defending Patents program is September 28, 2006.

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2006 Annual Meeting August 3-8, 2006

From the Chair: Summer IPL Conference Join a Committee 2006 Summer IPL Conference Highlights Mark Your Calendar