In the October/November issue, I shared my thoughts and some comments by various Officers on what it means for the ABA Section of Intellectual Property Law to be part of the ABA, the world’s largest voluntary professional membership organization. Among other things, it means the opportunity to participate in shaping ABA policy and influencing the development of IP law and practice. In this column the focus is on you: What does it mean for a member to participate in shaping the development of IP law and policy? What are the opportunities for a member to take a leadership role? For help answering those questions, I will share with you some comments by members who spoke on the “Rewards of Being a Leader of the ABA-IPL Section” panel at the November at our Fall Leadership Meeting.

Each year that I’ve been a member of the ABA Section of Intellectual Property Law, and particularly now as Chair, I see how the views of our Section are sought and heard on matters of IP law and practice. And I see how many members shape those views. Are you one of those members? Are you taking full advantage of your membership? One of the great differences between ABA-IPL and other organizations is that you need not wait around to be tapped on the shoulder for an opportunity to accomplish something. You can elect yourself to a committee, then put up your hand and say, "I think we ought to do this," and immediately chair a new subcommittee. From that point on, an issue you care deeply about can be something you work on with other members from around the country. In my experience, time spent participating in ABA-IPL Section committee activities is a gift that keeps giving back in professional growth, practice development and a sense of contribution to the evolution and improvement of IP laws and practice. Working together, we become better lawyers and, in particular, better IP lawyers.

At the Section’s annual Fall Leadership Meeting, the current and future leaders of the Section and the IP community come together for two days of planning and discussion. As part of this year’s meeting, Past Chair Charlie Baker organized a panel of several attendees to share their thoughts and experiences. The panelists gave their own examples of how the more you participate in the Section, the richer will be your exposure to the practice of law and the more profound your understanding of the influence of IP law on the economy and on other areas of law. For example, Past Chair Mark Banner said “I've always found that the debates that occur in the committees, in the Council and in the Business Session were opportunities for education that weren't the typical go to a speech and listen to someone talk. I remember early on a resolution on whether obviousness should be a question of law or a question of fact. And I would hear very eminent IP lawyers talk about these issues. This is the way I learned more about the broad overviews of IP law, including areas where the different types of IP have common roots.”

Kate Spelman, who is currently serving as Co-Chair of two committees, 301-Copyright Legislation and 802-ABA Annual Meeting, added “What's nice is that you come together and actually learn together. We are a community. Here we get to see, as we do not when we meet at other organization, the strengths of us as a ‘united we stand’ group. That’s why this organization is so powerful to me. I get involved for my own self-nourishment because like Stephen Covey talks about, this is where I come to ‘sharpen the saw.’ I find that the ABA-IPL Section has shaped and nourished my life.”

As an in-house counsel, Council Member Marisia Campbell finds that “It's very important for corporate practice attorneys, for example, to hear what the leading private practice IP attorneys have to say, and it’s also nice to share experiences with other corporate practice attorneys. It's probably great for private practice attorneys, too, to hear what is important to in-house counsel and how we think on issues, because there may be a difference in perspective.”

As Mark Banner said, “Helping improve the law and the profession is probably the bread and butter of 90% of our organization’s work.”

The panelists also talked about seizing the opportunity to take a leadership role and some of their experiences working within the ABA. Council Member Joe Potenza spoke of his early experience as a member of several Sections of the ABA: “One of the first things I did with the ABA was to get involved with Young Lawyers Division, an incredible opportunity. I had many opportunities from the beginning. I mentioned my interest in patent/trademark/copyright law and that I wanted to start a committee in this area. Bill Neukom (current ABA President-Elect), said, ‘That's a great idea.’ He was just starting to do some things with Microsoft at the time. So, I started that committee, and then Bill said, ‘Well, while we're trying to get that underway, why don't you get involved with child advocacy and child abuse issues?’ This began my assistance with the ongoing Affiliate Outreach Program, where I had the opportunity to work with many other young lawyers throughout the country in presenting broad legal issues including child advocacy as well as setting up workshops.”

The moderator, Charlie Baker, contributed another example: “Early on in my association with this organization, I was Chair of a committee on the federal courts, and we were concerned about getting more patent judges on the Court of Appeals for the Federal Circuit. I read an article by President Clinton’s Assistant Attorney General for Policy and I wrote her a letter on ABA stationery, and said I was the Chair of this committee of the Section and that we would welcome the opportunity to come and talk to her about it. And, lo and behold, she said, ‘Sure.’ A group of us worked with the AIPLA to write white papers about why we wanted more patent judges on the Court of Appeals for the Federal Circuit. The most important thing was that their consciousness was raised.”

That led Mark Banner to reminisce about gaining an appreciation of the power and platform of the ABA for advocacy on matters of importance to the IP community: “When I first visited the Hill during ABA Day, it was so gratifying to learn that we had so much respect in Washington, DC., not only on IP matters but as the ABA. It told me they understood full well who we were as a constituent body with specialized expertise, but also as part of 413,000 members with clout.

“Later, the issue of Congress’ diversion of USPTO fees was an example of where being a part of the American Bar Association was very helpful. And to be designated as one of the legislative priorities of the American Bar Association is really difficult because the ABA has many constituent groups and only 10 priorities a year are chosen. We wanted fee diversion to be an ABA legislative priority, and I said ‘Patents are about jobs. Your state, your town is losing so many jobs and one of the things that we try to emphasize when we go up to the Hill is that patents are about creating and maintaining jobs in America.’ With Hayden's (Hayden Gregory, Section Legislative Consultant) help and that of others, we made it an ABA legislative priority, which meant it was on everybody's agenda.” With that, we began to see an end to the diversion of USPTO fees and an increase in the monies available to the USPTO for the actions and reforms needed to improve quality and reduce pendency.

As I, Mark and others have learned, when you go to a Senator or Congressman’s office as a representative of the ABA-IPL Section and say ‘What can we do for you?’ they say ‘Bring us more letters, write us more letters on ABA letterhead.’

In addition to policy development and advocacy, the Section is the premier resource for understanding current and emerging issues of IP law.  The Section’s publications, CLE programs and co-sponsorships are shaped by the needs, ideas and contributions of its members. Joe Potenza gave an example of his early experience with programming and outreach: “Early in my career I thought it might be fun to mold a program on patent trial advocacy for the ABA. We put on one of the first programs in the country, as part of the ABA's National Institute, on a trial of a patent case, where we develop materials and have mock deposition transcripts. Over the years it has developed, and Mark and I and Chris Renk have put it together into a textbook (Patent Trial Advocacy Casebook) that's now published by the ABA and the National Institute for Trial Advocacy. We’ve also been teaching it for ten years at Georgetown University.”

I know that those of you who are involved in ABA-IPL Section activities have your own stories to add to this sampling from the panelists’ commentary. And I am confident that those of you who are just getting involved will have similar tales to tell. Soon, all of you will have an opportunity to join us at the 22nd Annual Intellectual Property Law Conference  in April in Arlington, VA. The conference committee, Co-Chaired by Jim Sims and Rich de Bodo and guided by Division Chair Amy Benjamin, is planning an ambitious program of luncheon speakers, CLE panels and receptions. [see article below]

The Conference also provides a convenient time and place for meetings of the Section’s committees, if they so choose. Committee Chairs should be sure to contact Mike Winkler to schedule a time and space for any meeting of their committee.

I encourage you to mark your calendars now, to make plans to attend the Conference, and to become involved with the Section. You can make membership in the Section as rewarding for you as it has been for these panelists and me.

Gift Card Laws Highlights
ABA-IPL Brown Bag Lunch Series
Liisa M. Thomas and Nishan Kottahachchi, Co-Chairs Committee 463

The requirements of state gift card laws, as well the activities of those that have been active in enforcing their laws will highlight a series of brown bag lunch discussions planned for five locations throughout March. During the lunch discussions we will look at issues such as gift card expiration requirements, comparison of laws with escheat requirements, and regulation of dormancy fee charges. Participants will discuss whether it would make sense to have a national gift card law, especially given the increased use of gift cards by national retailers, and the resulting consumer (and retailer) confusion in complying with different laws. Register online.

Potential Licensing Responses to MedImmune

The recent Supreme Court decision in MedImmune v. Genentech has dramatically altered the relative bargaining positions of patent licensors and their licensees. Previously, a licensee had been required to put his license at risk by, for instance, withholding royalty payments in order to have standing to bring a Declaratory Judgment Action challenging the validity of the licensed patent. The Court has now ruled that a licensee need not be in breach of his license and at risk of imminent license termination in order to bring such a DJ Action.

On February 20th, the Section, in cooperation with the ABA Center for CLE, presents a teleconference that explores what approaches might be taken in licensing to address this change.

Annual Copyright Meeting Provides Valuable Opportunity
Brett Miller, Chair Committee 303 (Copyright Office Affairs)

The Section’s annual meeting with the Register of Copyrights and other senior staff at the U.S. Copyright Office will take place on Tuesday, February 27, 2007. This meeting provides Section members a valuable opportunity to interface directly with Copyright Office officials and get an up-to-date report of the status of the Office, new developments, and the issues the Office is currently addressing.

The meeting is scheduled from 9:30 a.m. to 1:00 p.m. in Conference Room 1118-A/B on the 11th Floor of the U.S. Copyright Office, currently located at 2221 South Clark Street, Plaza 6, Crystal City/Arlington, Virginia. Seating is limited, so if you would like to attend, please contact Brett Miller, Chair of Committee 303 at 202.739.5846 or e-mail bmiller@morganlewis.com.

 

ABA is Influencing Change to the Chinese Trademark Law
Kristine Boylan, Co-Chair Committee 202

Committee 202 (International Trademark Treaties and Laws) is engaged in an important project to review of proposed revisions to the Chinese trademark law. The Chinese Trademark Office Director recently emphasized China's interest in receiving comments from groups like ours in a recent meeting with our Section Division II Chair Tom Brooke.

We have divided up the proposed law by topic for the purpose of providing focused comments for each area:

• Disputes - litigation (including available relief), oppositions/cancellations, appeals
• Grounds for refusal - similarity, descriptiveness, geographic indications, non-use
• Assignment/Licensing - form, associated marks, recordal requirements
• Application/prosecution procedure - form of application, refusal/response procedure, priority/international application/registrations
• Scope of Protection - definition of a trademark, color marks, 3D marks, certification and collective marks, famous/well known marks    

The committee welcomes input and participation from any Section member.

Contact Committee Co-Chairs: Kristine M. Boylan at kboylan@merchantgould.com or Jim Vana at jvana@perkinscoie.com.

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Foreign Design Protection
William T. Fryer, III, Co-Chair Committee 412

Utility patents have the Patent Cooperation Treaty, marks have the Madrid Protocol, and now U.S. design patents are close to having the Geneva Act of the Hague System on industrial designs as another option to obtain foreign protection. The Bush Administration, at the urging of our Section, submitted the Geneva Act to the U.S. Senate for ratification on November 13, 2006. The U.S. Patent and Trademark Office (USPTO) has shown its commitment to support the Geneva Act ratification by holding a conference, November 27 to December 1, 2006, for about 50 officials from design offices around the world. WIPO staff presented basic information on the Geneva Act at the conference and USPTO staff reviewed the U.S. design patent system. The USPTO conference was another major step forward in the Geneva Act becoming a global design protection system.

The next step is for U.S. companies and organizations are to get involved in support of the Geneva Act ratification, using their political contacts.

The Geneva Act will allow a U.S. company to file an International Registration application in English, using one application form, to select the countries where design protection is desired. Fees, filing administration and renewals are handled by WIPO. It is likely that filing of the International Registration application will be permitted in the USPTO by U.S. residents, to simplify the security review process and provide other conveniences.

Contact Committee Chairs Bill Fryer at wtfryer@aol.com or Darrell Mottley at dmottley@bannerwitcoff.com with any questions.

Danger Will Robinson, Danger-Robots!
Multi-Faceted IPL Section Spring Conference Features Wide Array of Opportunities

...and Robots

The 22nd Annual Intellectual Property Law Conference, April 12-14, will be a comprehensive continuing legal education experience for all IP practitioners.

Program CLE sessions cover the range of IP topics, including patent, trademark, copyright, Internet, ethics, and more. Corporate counsel issues, a trial skills track with a mock jury trial, and a hot topics panel help to round out the program sessions for a comprehensive array of IP continuing legal education.  A special program this year is a conversation on the 25th Anniversary of the U.S. Court of Appeals for the Federal Circuit. A special panel of notable speakers, including Chief Judge Paul Michel of the CAFC, will discuss the highlights and the future of the CAFC. 

In addition to the CLE sessions, our conference luncheons provide additional opportunities to hear about latest IP law issues. Guest luncheon speakers will include Rick Cotton, VP and General Counsel of NBC Universal as the guest luncheon speaker.

New this year will be own collaborating with the ABA Law Practice Management Section on a special programming track. For Thursday, April 12, on setting up an IP law practice, technology and law practice tips.

Also new to the conference will be a special session developed in cooperation with the World Intellectual Property Organizationon Friday, April 13, highlighting the Patent Cooperation Treaty International Search.

As in the past, The ABA Section of Science & Technology Law again joins us a conference co-sponsor and is coordinating a track on computer and Internet Issues on Thursday, April 12.

A selection of Section committees is planning to hold meetings in conjunction with the 22nd Annual Intellectual Property Law Conference. Watch our website for a list of meetings slated, and plan on participating in one or more committee gathering to increase your opportunities for involvement within the Section and discuss IP topical issues of personal interest in a small group setting.

Now, for the robots. A special conference reception will take place on Thursday, April 12 right after the programming of the day. Featured at this reception will be a demonstration of robots designed by teams in the regional competition of the US FIRST organization. This international competition pits teams of students from schools throughout the nation and internationally, and challenges them to build robots with innovative features that can perform specified tasks. This is a chance to witness first-hand the creative products of these teams of future innovators and patent-holders.

No robots, but equally innovative, the Section’s Committee on Women and Minorities in the Profession will host a cocktail reception following the day’s programming on Friday, April 13.

A number of firms and organizations have already graciously signed on as sponsors of the conference and various events at the conference. If your firm is interested in a sponsorship, you can visit the Section website for a complete list of the sponsorship opportunities, and information on how to involve your firm.

This conference is definitely a "don’t miss" compendium of activities and events for all IP lawyers. And there are robots! The 22nd Annual Intellectual Property Law Conference is April 12-14, 2007 at the Crystal Gateway Marriott Hotel, in Arlington, Virginia. For complete conference information, program schedule, and online registration, visit the website at www.abanet.org/intelprop/spring2007

 

Special One-Day Program: Practical Tips On Intellectual Property Law

Before the 22nd Annual Intellectual Property Law Conference you can join us for a separate one-day program, Practical Tips on Intellectual Property Law, to be held at the Crystal Gateway Marriott Hotel on Wednesday, April 11, 2007.

This program provides a background on patent and trademark law information for new practitioners in IP law practice in light of current developments in the field. This Practical Tips program is de­signed to enhance these skills and enable IP practitioners to handle the many tasks that routinely arise in this increasingly im­portant area of practice. Unlike programs that deal principally with cutting-edge is­sues and recent court decisions, the Practi­cal Tips pro­gram features top professionals from the IP field who provide practical ad­vice on dealing with the “nuts and bolts” of every day IP practice.

For information and a registration form for this Practical Tips program, visit our website at www.abanet.org/intelprop/2007ptips_april, or e-mail us at iplaw@abanet.org. This program will also offer CLE credit.

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Send Lawyers, Gum, And Money

Prolific inventor Dean Kamen, who brought us the first portable dialysis machine, a wheelchair that can walk up stairs, and of course the SEGWAY, has also spent the last 16 years encouraging kids' passion for science and technology through a unique robotic competition. FIRST (For Inspiration and Recognition of Science and Technology) sponsors over 1,125 student robot building teams worldwide, who come together in 37 regional and one annual competition where the robots are challenged to perform predefined and rather difficult tasks.

This may sound like the nerdy science fairs of our youth, but the truth is quite different. Imagine combining the passion (and yes, the screaming) of a high school basketball championship match, the solidarity of a rock concert, and the pride of a graduation ceremony all wrapped up together and you begin to get the feel for what goes on at a FIRST competition.

Of course the real focus of FIRST is the year-long process of collaborative problem solving within each team as their members engineer design solutions to the year's challenge. One year the robots raced the clock stacking wire-frame pyramids atop one another, one year the robot had to do an overhead pull-up, and last year they actually played a game that looked a great deal like soccer.

So why the Warren Zevon title?

Send Lawyers: We know that an engineering degree is all but required for today's patent lawyers, so finding and encouraging students to enter the field is essential. Volunteer opportunities are abundant and detailed on FIRST's website.

Send Gum: Well, most of these robots are held together with more sophisticated materials than bailing wire and chewing gum, but as an aid to concentration it can't be beat!

Send Money: You can donate directly to FIRST (it's tax deductible) or to your local team. Though teams have been as inventive in raising funds for materials and travel as they have been in creating their robots, help is always appreciated.

The 2007 competitions begin this March, but it's never too soon to lend a hand. For example, the Chesapeake Regional competition will be held March 15-17 at the US Naval Academy in Annapolis. To volunteer, see www.chesapeakefirst.org .

The Section is tentatively planning a demonstration of some of the robots and ingenuity of the FIRST competition in conjunction with the 22nd Annual Intellectual Property Law Conference, April 12-14, 2007 in Arlington, VA. More details on this entertaining demonstration will be forthcoming in future issues of the Chair’s Bulletin, and on the Section website. Watch the website for updates, and plan to register and attend the 22nd Annual Intellectual Property Law Conference to participate in quality CLE educational opportunities and to experience the FIRST robots first-hand.

To learn more about FIRST, visit the website at www.usfirst.org

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ABA Pro Bono Committee Seeks Nominations

The ABA Standing Committee on Pro Bono and Public Service will present five awards to individual lawyers and institutions in the legal profession that have demonstrated outstanding commitment to volunteer legal services for the poor and disadvantaged.

Please nominate a colleague or law firm for the 2007 ABA Pro Bono Publico Awards. We encourage you to nominate lawyers of color and women. The deadline for nominations is February 9, 2007. The Awards will be presented during the ABA Annual Meeting on August 13, 2007 in San Francisco, CA at a special luncheon.

For information about past recipients, nomination guidelines, and a nomination form please go to:http://www.abanet.org/legalservices/probono/pbp_current_recipients.html.
For questions or more information please contact Tamaara Mason-Piquion at 312-988-5756.

Committee 102 Organizes Trip To People's Republic Of China
Elizabeth Chien-Hale Co-Chair Committee 102 (International Patent Treaties and Laws)

Committee 102 is organizing a trip to the People's Republic of China in late June 2007 for interested ABA-IPL Section members. The primary professional goal of this trip will be to establish direct communication channels with the Chinese Patent Office and the Chinese Trademark Office, which are currently drafting amendments to the Chinese Patent Law and the Chinese Trademark Law, respectively.  While in Beijing, we will also visit other IP-related government agencies, such as the Customs General, Copyright Office, Supreme People's Court, and the Supreme People's Prosecutorate. One day will be set aside to have a half-day seminar, and to have informal chats with trade organizations.

In order to ensure meaningful participation by all delegates, the delegation will be kept to a manageable size.

The proposed dates of the trip will be June 25-29, 2007. If you are interested members please contact Elizabeth Chien-Hale at ech@institute-ip-asia.org or 408-776-8719.

 

 

ABA Section Of Litigation Roundtables

The Intellectual Property Litigation Committee of the ABA Section of Litigation invites you to participate in the February 2007 Roundtables. The topic is “Indirect Infringement: Dealing with Vicarious Liability.”

The Roundtables are being held in many cities around the country in  February. Please check our website for a listing of host cities and dates. If your city is not listed now, we invite you to check back over the next few weeks.