This column and my term as Chair start with a whole-hearted “Thank You” from all of us to Tony Figg for his wisdom and leadership as Chair of the ABA Section of Intellectual Property Law (ABA-IPL) this past year. Tony’s style is to lead by example, and in doing so he has set a high standard of service, decency and diplomacy. More personally, I am grateful for Tony’s many courtesies and his patience and generosity. I have learned much from Tony, as well as the other recent Chairs I have served under (Bill Lafuze, Bob Sacoff, Mark Banner and Charlie Baker).

I must tell you all that I am honored to be given the opportunity to serve as Chair of ABA-IPL – and frankly, awed at the prospect. ABA-IPL is the largest organization of IP lawyers in the world. We are also the oldest and the first substantive law section of the ABA. As the ABA, the Section is a respected and influential voice of the IP bar. I feel a great weight of responsibility to serve you, the membership, and to use and safeguard the credibility of our voice. This would be a lonely and daunting task, were it not for the full complement of dedicated and talented leadership: the Officers (Pamela Banner Krupka, Gordon Arnold, Robert O. Lindefjeld, Susan M. McGahan, Jack C. Goldstein, Donald R. Dunner, Amy Benjamin, Brian E. Banner, Lisa Dunner and E. Anthony Figg), the eight Division Chairs (Samson Helfgott, Thomas W. Brooke, Donna Gies, George A. Frank, PhD, Yoncha L. Kundupoglu, Cynthia E. Kernick, Antoinette M. Tease and Amy Benjamin) and the 105 committee Chairs, as well as our Legislative Consultant in Washington DC (Hayden Gregory) and the Director and Assistant Director in Chicago (Betsi Roach and Mike Winkler).

At the meeting in Boston this past June, Tony introduced me with the cue "now for something completely different." Maybe so. But, from the moment I put my foot on the first rung of the ladder, all of the Officers and Past Chairs have offered me their support and advice, and treated me as “one of their own.” This is one of the rewards of active participation in IPL Section activities: the privilege of knowing and working closely with the current and future leaders of the IP community. Thank you.

 

What's new?

In his last column, Tony reported to you on the House of Delegate’s approval of the Section’s resolution relating to the Supreme Court case, KSR International Co. v. Teleflex Inc.  That vote established ABA policy favoring the “teaching, suggestion or motivation” inquiry as a means of guarding against the use of hindsight in an obviousness analysis. The next step was for the Section to submit a draft brief for vetting by the ABA Amicus Committee. The Section’s draft was prepared by Mark Banner and Paul Rivard, with the advice of Tony (in his new role as Chair of the Committee 605 Amicus Briefs), Joe Potenza and Don Dunner. The resulting amicus curae brief will be submitted to the Supreme Court by the ABA before October 14, 2006.

At a special meeting on September 6, 2006, the Council approved a resolution supporting an extensive and detailed set of comments on proposed changes to the patent law in the People’s Republic of China (PRC). The comments were prepared by a joint task force of IPL and the Section of International Law (SIL), which was comprised of members of our Section’s Committee 102 (International Patent Treaties and Laws), co-chaired by Elizabeth Chien-Hale and Charri Vorndran-Jones, and SIL’s IP Committee. Three sections (IPL, SIL and SciTech) joined in sponsoring a request for Blanket Authority to submit the comments to the PRC by September 15, 2006.

We will look forward to hearing Elizabeth’s report on the further discussion of those comments by Chinese authorities and attorneys and the delegation traveling to the PRC in November. In the meantime, members of Committee 202 (International Trademark Treaties and Laws), co-chaired by James Vana and Kristine Boylan, are working on a second joint task force of the sections, which is preparing comments on proposed changes to the trademark law in the PRC.

At the same meeting of Council, Subcommittee Chair Larry Pope presented a resolution of Committee 103 (Ex Parte Patent and Trademark Office Affairs-Patents) and his subcommittee’s report with comments on the Patent and Trademark Office’s proposed changes to the Information Disclosure Statement (IDS) rules. The resolution, which was approved by Council, expresses the Section’s opposition to the additional burdens that would be imposed by the proposed rule making. The Section’s comments are online now

IPL participated in several meetings with Patent and Trademark Office officials, including a “focus session” to discuss deferred examination with Commissioner John Doll, where the Section was represented by Don Dunner, and a meeting on the trademark side to discuss proposed TTAB rules changes with Board officials and General Counsel James Toupin, where the Section was represented by Jonathan Jennings, Tom Brooke and Hayden Gregory. [See Jonathan’s report below.]

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What's next?

The Patent Law Reform Task Force, chaired by Don Martens, has re-engaged to analyze Bill S 3818 introduced by Senators Hatch and Leahy and to update the Section White Paper on “Agenda for 21st Century Patent Reform,” with a goal of having positions recommended by the Task Force in time for a presentation at the Fall Leadership Meeting.

I am establishing a new Special Committee on IRS Treatment of Donated Patents to look into the IRS's valuation of patents deducted as charitable donations. The committee will consider the IRS's practices and procedures with respect to determinations of value, in particular the basis for the IRS discounting the value of a donated patent based on a determination of invalidity or likely invalidity of one or more claims. If you are interested in joining committee 161, online sign up is available.

We are also looking to form a new task force on so-called business method patents, with an initial goal of preparing a thoughtful, even-handed, in-depth analysis of the topic, including historic developments, current views and areas of debate and uncertainty. The task force will be asked to gather its research in a white paper that will provide a basis for Section dialog and debate, and a starting point for development of Section policy and comments on any proposed legislation, regulations or other legal developments.

 

Section Organizes Meeting on Proposed TTAB Rules
Jonathan Jennings

On July 25, 2006, representatives of the American Bar Association Section of Intellectual Property Law (ABA-IPL), the International Trademark Association (INTA), the Intellectual Property Owners Association (IPO) and the American Intellectual Property Law Association (AIPLA) (hereinafter collectively the Organizations) met at the United States Patent and Trademark Office (USPTO) to discuss the proposals to amend the Rules of Practice (the Rules) before the Trademark Trial and Appeal Board (Board) that were published in the Federal Register on January 17, 2006 [71 F.R. No 10, at 2498].

ABA-IPL organized this meeting and was represented by Tom Brooke, Hayden Gregory and Jonathan Jennings. For the USPTO, those in attendance included David Sams, Chief Administrative Trademark Judge, Gerard Rogers, Administrative Trademark Judge, David Mermelstein, Interlocutory Attorney and James Toupin, General Counsel of the USPTO.

At the meeting, the Organizations provided consensus viewpoints regarding five of the proposed changes to the Rules in descending order of importance (i.e., “1” being the greatest source of concern and “5” being the least): (1) Scope of the Mandatory Initial Disclosures; (2) Reduction in the number of Interrogatories; (3) Serving Notice of Board Proceedings; (4) Protective Order; and (5) Expert Disclosures.

The Organizations stressed to the USPTO officials that the comments of the individual groups were still relevant and a good source of information and ideas on points that we were not able to cover at the meeting. Everyone also understood that this meeting did not represent a hearing on the Rules—something the USPTO officials had decided not to pursue.

The meeting was a success. The USPTO officials all seemed appreciative of our comments and appeared open to new ideas and changes. We understand that the USPTO may finalize its rulemaking on this issue in the coming months. A detailed written summary of the issues discussed at the meeting and submitted to the USPTO appears online. A copy of the Section's individual comments submitted earlier this year appears also online.

Finally, this meeting underscored ABA-IPL's role as a catalyst for action - a group, that given its broad constituency and balanced perspective, can effectively unite other groups for a common purpose.

 

Senate Confirms Kimberly Ann Moore to Federal Circuit

On September 5, the Senate confirmed, by unanimous vote of 92, the nomination of Kimberly Ann Moore as United States Circuit Judge for the Federal Circuit. Judge Moore has participated in several of the Section’s events, most recently as a panelist at the 21st Annual Intellectual Property Law Conference.

Prior to her elevation to the Federal bench, Judge Moore taught intellectual property courses at George Mason University School of Law and served as IP Litigation Consultant to Morgan, Lewis & Bockius. She previously taught at the University of Maryland School of Law and at Chicago-Kent College of Law and served as the Associate Director of the Chicago–Kent Intellectual Property Law Program.

Judge Moore has a Bachelor of Science in Electrical Engineering and a Master of Science both from Massachusetts Institute of Technology. Prior to law school, she worked as an electrical engineer at the Naval Surface Warfare Center. She earned her J.D. from Georgetown University Law Center. After law school, she served as a law clerk to Hon. Glenn L. Archer Jr., Chief Judge of the United States Court of Appeals for the Federal Circuit, and she worked on intellectual property litigation at the law firm of Kirkland & Ellis.

Judge Moore co-authors a textbook entitled Patent Litigation & Strategy with Hon. Paul Michel, current Chief Judge of the United States Court of Appeals for the Federal Circuit, and Raphael Lupo (WEST 1999). She has authored numerous articles on intellectual property topics and has served as an expert in several patent litigations. She served as the Editor-in-Chief of the [Federal Circuit Bar Journal] and an instructor in the Bar/Bri patent bar review course.

Practical Tips on Enforcing and Defending Patents

The Young Lawyers Committee (Committee 510) will be offering a Practical Tips Seminar at William Mitchell College of Law in St. Paul Minnesota on October 12, 2006. This program will focus on practical aspects of patent litigation including reexamination and International Trade Commission proceedings. Past Co-Chairs Shannon McCue and Melanye Johnson and current Co-Chairs Christopher McGeehan and Robert Fergan would like to give special thanks to Kristine Boylan for assembling an outstanding panel of speakers for this event. Complete meeting details and online registration can be found at www.abanet.org/intelprop.

 

Fall Leadership Meeting
Section Leadership

The 2006 IPL Fall Leadership Meeting of the ABA Section of Intellectual Property Law will be held Friday, November 10 through Sunday, November 12 at the Pointe South Mountain Resort, in Phoenix, Arizona.

Section Chair Susan Barbieri Montgomery has asked that each Division Chair, Committee Chair, and Subcommittee Chair attend the Fall Leadership Meeting. This is the annual gathering of the Section leadership.  The program includes guest speakers, a leadership forum and Division meetings. Please be prepared to work together to identify the important activities for your Division and to participate in development of the Section’s agenda for the coming year. Please also be prepared to report on the projects and activities of your group and any possible resolutions.

All section leadership is urged to attend the meeting, including Council, Past Chairs, Division and Committee Chairs, Section Liaisons and Subcommittee Chairs. Complete meeting details and online registration can be found at www.abanet.org/intelprop/fall2006.

 

Teleconference

The ABA Section of Science and Technology Law's Committee on Biotechnology Law is hosting a teleconference on Personalized Medicine & Pharmacogenomics. For further information, please contact Shawn Kaminski at skaminski@staff.abanet.org or 312/988-5601.

 

It's That Time of the Year Again!
Sign Up On-line for the Committee of Your Choice

It is time to sign-up for committee membership for the 2006-2007 Association year. The Section’s committees are re-formed at this time each year. New members are welcome and all members are encouraged to get involved in the committee or committees that interest them most. Even if you want to continue on the same committee, please be sure to sign-up now. 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.

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 is beginning now, so be sure to join right away. We look forward to working with you to keep our Section a leader on IP issues.

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ABA-IPL Submits Comments on Proposed Rules To USPTO
Lawrence Pope and Denise DeFranco

Committee 103 (Ex Parte Patent and Trademark Office Affairs -- Patents) has gotten a jump start on its activity for the year. Under the leadership of its Sub-Committee Chair, Lawrence S. Pope, Committee 103 has studied the recent proposal by the U.S. Patent & Trademark Office to amend the rules related to Information Disclosure Statements (71 Fed. Reg. 38808), prepared comments on the proposal, and presented the comments to the ABA-IPL Council. The comments were submitted to the Patent and Trademark Office in a letter signed by Chair Susan Barbieri Montgomery on behalf of the IPL Section, which is set forth in its entirety on the section website. Our letter expressed strong reservations about the recent proposal as imposing substantial new burdens on patent applicants without providing a commensurate improvement in either examining quality or speed and, in fact, having a tendency to decrease patent quality.

 

Spring Conference Planning Underway
Co-Chairs — Jim Sims and Rich de Bodo

Committee 805 (Spring CLE Program) Co-Chairs Jim Sims and Rich de Bodo invite you to submit suggestions for session topics and speakers for the Section’s 22nd Annual Intellectual Property Law Conference in April next year. As with prior years, the program will cover aspects of trademarks, copyrights, patents, trade secrets, IP litigation, and ethics. Although it seems far away at the moment, planning for the conference is already underway. Please use this form to provide suggestions in writing (with as much detail as possible regarding the proposed topic and contact information for any suggested speakers) by September 30, 2006 to Jim at jsims@morganlewis.com and Rich at rdebodo@irell.com.

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Nominating Committee Welcomes Suggestions

The Nominating Committee, that Section Chair Susan Barbieri Montgomery recently appointed welcomes suggestions of members for nominees for the offices of Chair-Elect, Vice Chair, Secretary, Financial Officer and four new members of Council for four-year terms expiring in 2011. Under the Section Bylaws, Pamela Banner Krupka will automatically assume the office of Section Chair on September 1, 2007.

The nominees will be voted on at the Section’s business meeting, Saturday, August 11, 2007, at the ABA Annual Meeting at the Hotel Nikko in San Francisco, CA.

Please contact the Chair or any member of the Nominating Committee, set forth below, before December 11, 2006 with your suggestions:

Robert W. Sacoff, Chair Pattishall, McAuliffe, Newbury, Hilliard & Geraldson Suite 5000 311 S. Wacker Drive Chicago, IL 60606 312-554-7934 Fax: 312-554-8015 rws@pattishall.com William L. LaFuze Vinson & Elkins 1001 Fannin Street 2300 First City Tower Building Houston, TX 77002-6760 713-758-2595 Fax: 713-615-5317 wlafuze@velaw.com E. Anthony Figg Rothwell, Figg, Ernst & Manbeck, PC Suite 800 1425 K Street, NW Washington DC 20005 202-783-6040 Fax: 202-783-6031 efigg@rothwellfigg.com Donna Suchy 11 Edgerton Street Rochester, NY 14607 585-722-9844 Fax: 585-477-4646 suchy.law@gmail.com Susan M. McGahan AT&T Corp. One AT&T Way Bedminster, NJ 07921-0752 908-532-1996 Fax: 908-532-1219 schmale@att.com

 

Attention Committee and Division Chairs:
Leadership Handbook Available

Portions of the Section Leadership Handbook have been updated for 2006-2007 and are now available at www.abanet.org/intelprop/leadhandbook.html. The Section Manual, Committee Scopes, Leadership Directory and Past Action have all been updated – so bookmark this page now.

Hard copies of the Leadership Handbook will be sent to the printer and mailed to Committee and Division Chairs when finalized so you also have hard copies.

Please bookmark this site as it contains several documents that will be helpful to you this year. In particular, please note the Section Manual contains the format for your committee report – starting on page 29 with the voting specifics listed on page 30.

 

ABA Section of Litigation Continues IP Roundtables

ABA Section of Litigation’S Intellectual Property Litigation Committee invites you to participate in this year’s Roundtables. The topic for September is “Upcoming Supreme Court Cases: Examining the Obviousness Test in KSR International v. Teleflex and DJ Jurisdiction in Medimmune, Inc. v. Genentech.”

The Roundtables are being held in many cities around the country in September and early October. For a complete listing of host cities and dates, check the Litigation Section website at www.abanet.org/litigation/committees/intellectual/roundtables.html. If your city is not listed now, please check back over the next few weeks. If you are interested in hosting a Roundtable in your city, please contact the committee.

 

ABA Task Force on Attorney-Client Privilege
Bill Ide, Task Force Chair

On behalf of the ABA Task Force on Attorney-Client Privilege, thank you for your Section's cosponsorship of the two Reports and Recommendations recently approved by the ABA House of Delegates. For your information, the final Reports and Recommendations, as adopted by the House of Delegates, are available on the Task Force web site. For your information, at its recent Annual Meeting, the Conference of Chief Justices also passed a resolution in support of the establishment of state bar committees on attorney-client privilege.

We are in the process of reaching out to leaders of State and Local Bar Associations to request their assistance in contacting individual U.S. Attorneys and urging them to implement the Justice Department's McCallum Memorandum of October 2005 in such a way as to protect the attorney-client privilege and work product doctrine. As you know, many leaders of the various Sections of the ABA are active in State and Local Bar Associations. We are asking that you contact your members who hold such posts and direct them to the Task Force website where we have posted sample letters to local U.S. Attorneys as well as Model U.S. Attorney Policy Implementing the Department of Justice’s McCallum Memorandum of October 21, 2005 Concerning Waiver of Corporate Attorney-Client and Work Product Protections. These documents can also be found on the Task Force web site

Your assistance in reaching out to Local U.S. Attorneys is critical. Again, thank you for your support. If you have any questions, please contact me at your convenience. I can be reached by email at bide@mckennalong.com

 

Ocean Tomo Charity Auction and Gala Dinner Benefiting AIPLEF

The American Intellectual Property Law Education Foundation (AIPLEF) was created by the IPL Section and the American Intellectual Property Law Association (AIPLA) to provide scholarships for minority students studying in the field of IP law. They will be holding an auction and gala dinner on Wednesday, October 25. This is a great opportunity to participate in a wonderful social event, network with fellow practitioners and support the Foundation. To register, visit www.oceantomo.com/htmlemail/aiplef.html or call 312-377-4851.