Speaking as your “newly-minted” Chair, I often tell people that the ABA Section of Intellectual Property Law serves as the voice of IP from within the world’s largest voluntary professional membership organization. The Section speaks “as part of the ABA.” But what does that really mean? I will try to answer that question in several installments: in this column, by sharing with you the ideas and insights I gleaned from a recent email dialog; and in a future column, by reporting back to you on the exchange of ideas among attendees at the Fall Leadership Meeting. I invite all members of the Section to join-in by sending me your views.

The Fall Leadership Meeting represents the once a year gathering of the current and future leadership of the IP community. During this meeting, the Section’s Subcommittee Chairs, Committee Chairs, Division Chairs, Council and Officers gather to contemplate and debate the future direction of IP and to make plans for the upcoming year. Each year brings new faces and fresh voices to this forum, so I expect to report a variety of views in the next installment.

The email dialog started with a message from Chair-Elect Pamela Banner Krupka, following on the Section Officers Conference in Chicago and reflecting on the image the Section has successfully created within the ABA and the need to spread the word to our members. “I gained a new perspective of the Section, a perspective of our efforts as viewed from within the ABA itself.  We have demonstrated leadership roles in policy-making and amicus filings and have successfully harnessed the powerful voice of the ABA, with all 413,000 members, to speak on important legal issues. Indeed, a large percentage of all ABA amicus briefs over the past few years have come from our members. Leaders of other Sections are asking us how we get so much done and use the powerful platform of the ABA so effectively.  We're all so busy doing the Section's work that we might not always clearly see how influential we are.  It's easy to compare our efforts to other organizations, who also do important work, but we should remember –  and in fact, champion – how potent a voice we have as the ABA.”

Immediate Past Chair, Tony Figg, responded with his agreement and noted that “On several occasions over the past year, I made the point that ABA procedures are rigorous and sometimes burdensome, but the reward for complying with them is that we have the backing of the largest and most respected organization of lawyers in the world.” 

My two cents: As part of the ABA, the Section is uniquely positioned to advocate for enlightened intellectual property laws and to bring meaningful and balanced insights to policy makers. With that voice and position, the Section can work to further the development and improvement of intellectual property laws and their fair and just administration – and to promote the public interest and understanding of intellectual property rights as socially beneficial incentives to foster innovation, cultural and economic development, knowledge and competition.

Tony added, “Exchanging ideas with the diverse people in the ABA is a two-way street. It has been noted by our leadership over the past year, that working with other Sections, such as Antitrust, Science and Technology, Litigation and Business Law, has been an educational experience. I believe that our own policies are better when we get the input from these groups.”

Gordon Arnold, Vice Chair, chimed in with “The ABA is the reason for existence of the Section and the Section is the heart, brain and soul of the ABA on IP matters. The Section therefore has obligations to the Association: to help the ABA make correct, well-reasoned statements regarding IP law and policy and to lead the Association on IP policy formation. We actually have gotten better at both and do them pretty well. But we can do better.”

“As part of the ABA, the Section also has duties. We have an obligation to ABA members (both in and outside the Section) to provide educational materials that teach them what they need to know about intellectual property law, practice, and policy.  This is an opportunity for active members in the Section to teach non-IP lawyers that no other organization provides.  Further, the Section has an obligation to represent to the rest of the ABA a consensus view of IP lawyers.  Part of this is to provide IP lawyer members with a forum where they can participate in formation of ABA, and therefore national, policy.” 

Gordon’s comments reminded me of the Section’s 2003 Long Range Plan (LRP) and the decision to change the Section calendar by moving the Annual Summer Meeting and making it part of the ABA Annual Meeting in August. These meeting and calendar changes reflect a realization that the Section’s functions can be best be performed by close contact with the other parts of the ABA and that closer contact will provide Section members with benefits that can only be found with increased familiarity of the ABA. As a result of the LRP changes, “Those members who choose to participate will have a richer exposure to the practice of law and will have a deeper understanding of the influence of IP law on the economy and on other areas of law. They will be better lawyers and, in particular, they will be better IP lawyers. Finally, their activities will give members more variety of networking opportunities than they would have if the Section tried to stand apart from the ABA.” 

This year, we will complete implementation of the LRP calendar changes, when we hold our Section meeting in San Francisco August 9 - 14, 2007 as part of the ABA Annual Meeting. A blue ribbon committee, Co-Chaired by Tom Smegal and Kate Spelman and guided by Division Chair Amy Benjamin, is hard at work on an ambitious program intended to expand our members’ experience and contacts within the ABA and to showcase the IPL Section to the 10,000 attendees expected to be at the meeting. The programming and the city hold the promise of a spectacular event – I encourage you to mark your calendars now and to make plans to attend.

As part of the ABA, the Section needs committed leaders and an actively engaged membership in order to continue to play a leadership role in the development of IP laws and to provide the rigorous analysis and balanced insights that we stand for. To that end, the LRP established an annual Fall Leadership Meeting, where the Section leadership gathers to do the work of the Section and to provide leadership training and opportunities for the current and future leaders of the Section and the IP bar. At the meeting this year in Phoenix, November 10 - 11, 2006, participants will report and work on current projects and plan the Section’s activities for the coming year. The program includes Council and Division meetings, speakers on topics related to new directions in the development of IP law, leadership, and practical approaches to increasing diversity in our workplaces, and an Open Forum discussion of the leadership in attendance.  I look forward to reporting to you on the meeting in a future column.

So, what does it mean for the Section to be part of the ABA?  It means the IPL Section provides you, our members, with the opportunity to participate in shaping ABA policy and influencing the development of IP law and practice – and opportunities for professional development, practice development and public service. I encourage you to take advantage of these opportunities and to join with your colleagues in this effort.

 

President Signs Trademark Dilution Amendments Into Law
Hayden Gregory, Section Legislative Consultant

On October 6, President Bush signed into law long-awaited legislation (H.R. 683) to amend the Federal Trademark Dilution Act of 1995 to address the decision of the U.S. Supreme Court in Moseley v. V Secret Catalogue, Inc., and other trademark dilution issues. A detailed description of the legislation is provided in an article in this month’s Chair’s Bulletin by IPL Section Committee 201 Co-chair, Jeffrey Samuels (see below)

 

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House Passes, Senate Cues Up Legislation To Establish Specialty Judges For Patent Cases
Hayden Gregory, Section Legislative Consultant

On September 28, in one of its final acts before recessing for five weeks for the November 7 elections, the House of Representatives passed H.R. 5418, a bill designed to improve the expertise of federal District Court judges handling patent or plant variety protection cases. The bill calls for the establishment of a pilot program in at least five U.S. district courts to experiment with special assignment of patent and plant variety protection cases to judges who volunteer for such assignment. The pilot districts, to be designated by the Director of the Administrative Office of United States Courts, must be chosen from the 15 districts with the largest number of patent and plant variety cases, and at least three different judicial circuits must be represented. A district must have at least ten authorized judges to be designated.

Under the test program, all judges in the designated districts would have the option of volunteering for special assignment of patent and plant variety protection cases. Cases in these districts would continue to be randomly assigned to all judges, regardless of whether they are designated for special assignment. Judges who have not volunteered for special assignment would have the option to decline the assignment on a case by case basis, in which event the case in question would be randomly reassigned to one of those judges designated for special assignment of patent and plant variety protection cases.

The pilot program would last ten years, with detailed reports and analysis of the success of the program to be submitted to the House and Senate Judiciary Committees after five and ten years. Success of the program would be determined by factors such as the extent to which designated judges develop expertise in patent and plant variety cases, the extent to which district courts’ handling of these cases improves, and by a comparison of reversal rates and speed of disposition of cases by designated judges and by non-designated judges. H.R. 5418 would also authorize $10 million per year for education and professional development of designated judges in matters relating to patents and plant variety protection, and for hiring of law clerks with expertise in these matters.

A companion bill, S. 3923, was introduced in the Senate on September 21, with indications that the Senate may attempt to act on the legislation in time for enactment before the end of 109th Congress in November or December. Congress is scheduled to reconvene for a post-election (“lame duck”) session on November 9.

 

 

A Look At The New
“Trademark Dilution Revision Act”
Jeffrey M. Samuels, Committee 201, Co-Chair

On October 6, President Bush signed into law H.R. 683, the “Trademark Dilution Revision Act of 2006.” The new law was prompted by the Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003), holding that proof of actual confusion is required in order to be entitled to relief under the federal dilution statute, which is codified in Section 43(c) of the Lanham Act. H.R. 683 legislatively overrules Moseley by adopting a “likely to cause dilution” standard for relief.

The new law also: (1) makes clear that a mark may be deemed “famous” whether it is inherently distinctive or has acquired distinctiveness; (2) provides that the statute covers dilution by blurring and dilution by tarnishment; (3) provides that a mark is famous if it is widely recognized by the general consuming public as a designation of source, thus eliminating the concept of niche fame; (4) amends the “exclusions” provisions of the dilution statute to provide that “any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services...” is not actionable as dilution; and (5) provides that in an action for trade dress dilution for trade dress that is not the subject of federal registration, the person who asserts trade dress protection has the burden of proving that the trade dress is not functional and if the claimed trade dress includes any registered mark(s), the unregistered matter, taken as a whole, is famous separate and apart from any fame of the registered marks.

The leadership of the Section played a pivotal role in advancing this legislation, working closely with committee staff and with other bar groups.

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Fall Leadership Meeting Update

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 in addition to the Council and Honorary Council, 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.

Complete meeting details and online registration can be found at www.abanet.org/intelprop/fall2006

 

Microsoft Law Student IP Summit in Boston

Last year, Microsoft Legal and Corporate Affairs brought together a number of top firms in an effort to increase awareness of careers in Intellectual Property and to encourage woman and minority law students to seek careers in this field. Microsoft partnered with sponsoring law firms and associations to bring together companies, area law students and law firms to discuss the women and minorities IP legal career landscape. 
 
The success of the events in New York and San Francisco has prompted the hosting of another event in Boston on November 10, 2006 and although the excitement is building for this event, its success relies on you. As you share a commitment to diversity, you are being asked to help drive this event by forwarding all information to your members. For your support in this endeavor, your organization can be listed as a supporter of this event in the program and you are invited to attend the luncheon at noon on November 10th.

Please view the formal invitation and agenda. If you have any questions, please contact Casiya Thaniel at 646-225-4152

 

ABA TECHSHOW 2007 / Bar Association Discount Program Set for March 2007

The ABA TECHSHOW 2007, the world’s premier legal technology conference and expo, will be held on March 22-24, 2007 at the Sheraton Chicago Hotel and Towers. This three-day conference offers more than 50 legal technology programs and training sessions. The two-day expo features more than 100 legal technology vendors.

The ABA TECHSHOW Planning Board would like to help promote the show by offering Section members a $100 discount off of the regular registration rate. When coupled with the $200 Early Bird Discount for early registration, this program promoter discount will allow all members to receive a $300 discount off of the full conference registration fee.

To register, simply visit the ABA TECHSHOW website at www.techshow.com. If you have additional questions, please contact Laura Calloway at the Alabama State Bar at pmap@alabar.org or call 334-269-1515.

 

ITC Patent Litigation Pros and Cons to be Discussed in Roundtable

The Intellectual Property Litigation Committee of the ABA Section of Litigation invites you to participate in one of the Committee’s most popular programs – the November 2006 Roundtables. The topic is “The Pros and Cons of Patent Litigation before the International Trade Commission.”

The Roundtables are informal opportunities for participants to meet in cities around the country in November and early December. Please visit http://www.abanet.org/litigation/committees/intellectual/roundtables.html for a complete listing of host cities and dates. If your city is not listed, please check back over the next few weeks.

Nominating Committee Welcomes Suggestions

The Nominating Committee, recently appointed by Section Chair Susan Barbieri Montgomery, 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
smchale@att.com

 

Patent System Policy Planning (Committee 108) Responds To PTO’S Draft Strategic Plan
Gary Lee Griswold and Adriana Suringa Luedke, Committee 108, Co-Chairs

The Patent System Policy Planning Committee drafted technical comments in response to the PTO’s Draft Strategic Plan 2007-2012 published in August. These comments have been approved by Council and were submitted to the PTO on Monday, October 9. The committee will also be working on a response to the PTO’s proposed “suite of patent products” this fall in addition to Section 101, 112, and 271(f) and other patent policy issues.

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Computer and Internet Legislation (Committee 705) Plans Productive Year
Jaqueline Klosek and Steven Greenberg, Committee 705, Co-Chairs

The Computer and Internet Legislation Committee has been busy laying the foundation for a productive year. A full agenda has been prepared to address the legislative activities not only at the Federal level as they pertain to computing and the Internet, but also state level legislative activities. We additionally will consider the political climate for legislating and regulating selected computing and Internet resources.

Three sub-committees have been established for Committee 705. Sub-Committee A will consider Net Neutrality and the ongoing debate concerning the same on Capitol Hill. Net Neutrality refers to the proposed establishment of differentiated services in Internet access. While differentiated service long has been part and parcel of Internet applications, recent proposals address differentiated service at the highest levels where entire high-speed communications networks will be dedicated to customers paying higher rates in order to justify the deployment of advanced computer communications networks. As part of its activities, Sub-Committee A expects to publish a paper on the subject.

Sub-Committee B will address the protection of children engaging in Internet activities.  Given the recent events in Congress, the protection of children online remains at the forefront of the mind of Congress and children remain exposed to predators in chat rooms and discussion boards accessible through the Internet. Possible liability of chat rooms and online dating services for the actions of predators online also will be explored.

Finally, Sub-Committee C will focus on the continued problem of identity theft and the legal obligations of data collecting organizations to notify consumers of security breaches. Sub-Committee C will consider not only the Federal approach to data and identity theft, but also state level approaches to the problem.

 

Help The Industrial Designs Committee
Fight Piracy (Commmittee 412)
Bill Fryer, Co-Chair, with Darrell Mottley, Committee 412

The time is right for more action in the U.S. and internationally against product piracy. Industrial design copying, the look of a product, is an important part of what is being ripped off. The Industrial Designs Committee has taken this challenge and needs your participation.

Topics that are actively being covered include: (1) Cooperation with PTO Designs Group to improve design patent application procedures and help cut down on the delay in patent issuance (need experienced design patent practitioners to work on this project); (2) Additional work with Committee 102 in reviewing the proposed China design patent law revisions (need members with interest in China IP developments); (3) Evaluating how to use the EU Design Registration (need attorneys using the EUCDR); (4) U.S. ratification of the Geneva Act of the Hague Agreement (need advocates) and (5) Setting up education programs on effective use of industrial design laws to reduce piracy (need coordinators and speakers).

If you or your firm is feeling the pain of IP piracy or you want to start learning about this problem, please sign up for the Industrial Designs Committee 412 in Division IV at www.abanet.org/intelprop/committees.html. You can also contact Bill Fryer at 240-475-4770.

 

Attention Committee And Division Chairs:
Your Leadership Handbook is Now 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 been updated for this year – so bookmark this page now!

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.

Hard copies of the Section Leadership Handbook are in production and will be mailed to Committee and Division Chairs when finalized.

 

BNA Announces 2006 Book Supplements

BNA Books is pleased to announce the publication of the 2006 Supplements to our distinguished intellectual property law titles — Patent Litigation Strategies Handbook, Second Edition and Trademark Infringement Remedies. Both treatises and supplements are written by fellow Section members and are published in cooperation with BNA Books.

Learn more

Barry L. Grossman and Gary M. Hoffman are the Editors-in-Chief of Patent Litigation Strategies Handbook, Second Edition and the 2006 Supplement. The treatise provides a strategic focus on litigation, guidance on how to resolve a patent dispute efficiently and effectively, and perspectives from a wide range of experts.

Brian E. Banner is the Editor-in-Chief of Trademark Infringement Remedies and the 2006 Supplement. This “must-have” resource provides detailed analysis of such topics as all forms of injunctive relief, extraordinary circumstances for relief, defendant’s profits, attorney’s fees, special enforcement remedies, and trademark infringement and unfair competition on the Internet.

For more information on these authoritative treatises, including updates covered in the 2006 Supplements, and to place your order.

 

Introducing "The ABA-IPL Young Lawyers Fellowship Program"

The ABA Section of Intellectual Property Law is pleased to announce we are accepting applications for our Young Lawyers Fellowship Program. This specialized program is designed to encourage young lawyers to become actively and integrally involved in the Section's committees and future leadership. The Section is now in the process of seeking nominees to fill two three-year positions in the Fellowship Program.

The Fellowship Program provides young lawyers the opportunity to participate in key leadership meetings and participate in committees that contribute significantly to the development of our system for the protection of intellectual property rights. The selected fellows will receive funding of up to $1,500 per year, for three years, to attend the IPL Section’s meetings.

If you are a proven leader in the ABA Young Lawyers Division (YLD), the IPL Section’s Young Lawyers Committee (YLC), or your local intellectual property or young lawyers bar associations, you now have the opportunity to become an important part of the future for the Section of Intellectual Property Law. Participants in the Young Lawyers Fellowship Program will be expected to attend the IPL Fall Leadership Meeting and Annual Intellectual Property Law Conference (held each spring) for three consecutive years, as well as, participate in any stand-alone meetings of their committees.

Please contact Robert Fergan for application information at (734) 302-6036 or rfergan@brinkshofer.com. All applications must be received no later than January 19, 2007 to be considered.

CLE Teleconferences Committee Needs Your Input

Every Section committee is invited to submit a program proposal for a CLE teleconference.   

What are CLE Teleconferences?
ABA-CLE Teleconferences deliver CLE live via the telephone. To join the program, participants call an 800 number from their location. The programs are typically 60-90 minutes in length, with adequate time allotted for questions and answers. ABA-CLE Teleconferences can be “stand-alone,” transmitted from live programs, or delivered in conjunction with periodicals and publications. Teleconferences are particularly useful for “Fast Track” CLE programming based upon hot topics, such as recent court decisions or in combination with publications.

How do I propose a CLE Teleconference?
Submit a CLE Teleconference Program Proposal available in your Leadership Manual or from Megan Bennett at bennettm@staff.abanet.org.  If your program is approved, you will then be contacted for further details and planning.

After the proposal, how will I plan the program?
If you’ve never developed a teleconference before, it does require adequate time for planning. You will have the assistance of an experienced teleconference producer from the ABA Center for CLE who has expertise in developing content for the teleconference format. A typical panel consists of one moderator and three panelists.
Planning/time requirements for panelists consist of:
(A) Two conference calls (about an hour each).
The first call is a discussion of content (including written materials), participant and program objectives, the topics of which each panelist will be speaking, the creation of an agenda and segment times, logistics and any technical questions.
When the agenda has been approved, the Center for CLE producer creates a draft “script.” Panelists insert bullet points, questions, and/or notes that they want to use on the day of the teleconference.
The second call is used to approve the draft “script” and to go over details.
(B) Submission of a CV and a release form, and a commitment to answer questions submitted by participants on the ABA-CLE web board after the teleconference.

How will it work?
The panelists participate from any location with a telephone that is in a quiet, secure environment. No travel is required.
A standard format of a 60 minute program is to divide the 60 minutes into three major segments:
1) Five minutes of housekeeping and introductions;
2) Forty minutes of content; and
3) Ten-fifteen minutes for Q & A session to allow the listening audience to ask questions of the panelists.

Participating in CLE Conferences is an easy way to get exposure to your committee and provide useful services for our members. If you have any questions, please contact Teleconference Committee Co-Chair Kim Jessum at 215-564-8165

BNA's Patent Litigation Conference
New Supreme Court Actions Will Have a Major Impact On Litigation – ARE YOU READY?

Register TODAY!

Register for the Washington DC program (November 16, 2006)

BNA's Patent Litigation Strategies Update
Co-sponsored by the American Bar Association Section of Intellectual Property Law

November 16, 2006 – Westin Embassy Row, Washington, DC
8:45 am – 5:15 pm

The Supreme Court's actions in KSR v. Teleflex and the EBay decision will lead to a sea change in litigation strategies and techniques as practitioners develop practical tactics to deal with the Court's findings. Now is the time to hone your patent trial skills.

The ABA Section of Intellectual Property Law and BNA have teamed up to bring you timely, comprehensive conferences on all you need to know now to be more successful in patent litigation.

In KSR v. Teleflex the court will determine what will happen to the standard of “obviousness.” The EBay case suggests that litigation strategies and tactics will change since a stay is no longer automatic. Our stellar faculty of Federal Judges and leading practitioners will explore critical issues including:

• How will District Courts apply the “four factor” test in the future?
• Does EBay create the possibility of a compulsory licensing system?
• How will the granting of injunctions change as courts apply standard factors of equity?
• How important new June '06 Supreme Court actions impact strategies and tactics

And much more

Bonus Pre-Conference Workshop: FREE to All Conference Participants
   E-Discovery in Patent Litigation: New Rules, New Tools

November 15, 2006 Westin Embassy Row Hotel — Washington, DC
   2:00 pm – 5:00 pm

SPACE IS LIMITED Register today

Get more information or go to the brochure.

24th Annual LEI National CLE Conference

The 24th Annual LEI National CLE Conference will take place January 5-10 in Snowmass Village in Aspen, Colorado. The program will include:

• Top-notch speakers
• Cutting edge topics
• 18-22 CLE Credtis, plus ethics credit
• Opportunities for open discussion and networking with fellow attorneys
• Special Snowmass Village lodging discounts, located at one of the nations top-rated ski destinations!

For more information please see the LEI website at http://www.lawedinstitute.com