By Hayden W. Gregory
Section Legislative Consultant

The USPTO is presently housed in 18 buildings scattered through-out the Crystal City area of Arling-ton, Virginia. Contracts for a new headquarters a few miles south in Alexandria, where all operations are to be located in a single cam-pus like setting, were signed in late 2000, and groundbreaking cere-monies were held in January 2001. At that time, a move to the new location was expected to begin near the end of 2003. Construction is proceeding on schedule. The PTO indicates that the phased re-location to the Carlyle campus will begin in October or November, with Patent Technology Centers 1600, 1700, and 2800 being the first components to move. The reloca-tion will be carried out over a pe-riod of 18 months.

Another PTO Fee Bill, Another Approach to the Problem

The past two editions of the Chair's Bulletin have described ef-forts of the PTO and the Bush Ad-ministration to implement a broad restructuring of patent user fees. The latest such proposal was made public on February 4, and is posted on the PTO website. The PTO estimates that it would raise an additional $200 million per year above that raised by the current fee structure. One significant prob-lem with this proposal in the view of the Section and many other user groups is that it proposes to raise $100 million per year in excess of the funding that the Office and the Administration are requesting for the PTO. The excess is, of course, slated for diversion to fund other unrelated programs.
On February 25, Congressman Rohrabacher introduced H.R. 909, a bill that is apparently designed to address the user fee diversion problem. H.R. 909 would instruct the Director of the USPTO to ad-just the fees charged by the Office in each fiscal year so that the amount of fees collected by the Of-fice in that fiscal year will equal the amount of funds appropriated to the Office. The bill has been re-ferred to as the Judiciary Commit-tee, which will also be considering the Administration's proposed fee bill. Rohrabacher introduced an identical bill two years ago in the 107th Congress.

Commerce Secretary Reports Progress On Fee Diversion

On March 6, U.S. Department of Commerce Secretary Don Evans told Congress that the Department is working to eliminate PTO user fee diversion. In testimony on the Department's FY 2004 budget be-fore the Commerce, State, and Justice Subcommittee of the House Appropriations Committee, Evans said "To support technology inno-vation and provide for intellectual property protection, the Depart-ment is working to eliminate the practice of using USPTO revenues for unrelated federal programs. Making more fees available sooner will enable the agency to increase the quality of patents and trade-marks issued."
Commenting on the testimony the following day, PTO Director James Rogan stated "The President has already reduced the annual practice of 'fee diversion' by 50 percent in the Administration's fiscal year 2004 Budget," a refer-ence to the fact that the Admini-stration has recommended a lesser amount of diversion in fiscal year 2004 than it called for in fiscal year 2003. Rogan further asserted, "Secretary Evans is also committed to working toward ending fee di-version entirely."

After Years of Growth, PTO Patent Income Goes Flat

The PTO reports that patent fee collections for January, the last month for which data is available, are essentially unchanged from those of January 2002. The Office's (and OMB's) budget projections anticipate a 3% increase in reve-nue in FY03, and another 3% for FY04. Ironically, if this "no growth" trend continues and all else re-mains unchanged, the drop in an-ticipated revenue might not reduce the amount of operating funds available to the Office. This is be-cause, in recent years, PTO fund-ing bills have been structured in such a manner that reductions in revenue operate to reduce or elimi-nate user fee diversion before they cut into operating funds. Lower trademark fee collections in recent years have had this effect. How-ever, Congress is always free to restructure its funding bills to alter these results.

PTO Reports Rising Patent Pendency, Relief Delayed

The PTO now projects that, by the end of FY03, average patent pendency will reach 27.7 months. Pendency has been between 24 and 25 months for the past 6 years, and was 24 months for FY02. In the Electrical Technology Center, the Office sees pendency reaching 40 months this year. The PTO reports that, for this reason, all but a handful of the 300 new examiners hired this year will be assigned to Technology Center 2800. The Office projects that even if the latest version of its 21st Cen-tury Strategic Plan is implemented and its fee bill enacted, average patent pendency will still be 27 months in 2008. Bringing it down to the ultimate goal of 18 months will take an additional 5 years, ac-cording to the Plan.

Council to Review and Classify Committee Resolutions

The Section Council will meet on April 28th to review and classify resolutions submitted by Section committees.
The resolutions deal with all current topics in field of intellec-tual property law.
A full report of the results of the classification meeting will be printed in the June issue of the Chair's Bulletin. Resolutions classi-fied for further debate will be dis-cussed by the full Section at the Section Business Meeting on June 19 during the Summer IPL Confer-ence in San Diego. All are invited to attend this session.

For further information on the Summer IPL Conference in San Diego and to register online, visit the website at www.abanet.org/intelprop/summer2003. Or e-mail intelprop@abanet.org, or phone 312/988-5598.

Committee on Federal Appellate Practice (Committee 604)
Philip Swain, Chair

The Committee on Federal Ap-peallate Practice (604) prepared a draft resolution on the use of dic-tionaries in patent claim construc-tion. The proposed resolution op-poses in principle the use by courts of dictionaries, encyclopedia or treatises that have not been made available to the parties, as primary resources for the interpre-tation of patent claims. The com-mittee favors the proposed resolu-tion, 16-6. The resolution will be classified at the Council Classifica-tion meeting on April 28.

Committee on Specialization (Committee 507)

John R. Kirk, Chair

The Committee on Specialization (507) has drafted a proposal for the Florida certification of specialists in the practice of IP Law. The pro-posal recognizes four sub-specialties of certified IP lawyers: (1) trademark law, (2) copyright law, (3) patent application prosecu-tion, and (4) patent infringement litigation. Under the proposed standards, Florida Bar members, in good standing, who satisfy the prescribed criteria, may be certified for an initial five-year period in one or more of the proposed specialty areas. The standards require certi-fication applicants to demonstrate a broad and varied experience in the sub-specialty for which certifi-cation is sought.

The incoming and outgoing Chairs of the Section jointly ap-pointed the Specialization Commit-tee in 2002 to consider matters of disagreement and report back to the Council with its recommendations regarding the issue of certification of IP attorneys. The committee con-sists of both supporters and oppo-nents of the original proposal.
After receiving input from inter-ested parties, the Specialization Committee will meet again during the Spring to consider whether to make any further modifications to the Proposal. The committee in-tends to make its final report to the Section Council in sufficient time so that the Council can con-sider the committee's recommen-dations regarding the issue of cer-tification of IP attorneys at the April 28 Council Classification Meeting.

At the 2002 Classification Meet-ing, there was a significant amount of controversy regarding the origi-nal proposal.
After consideration, the Council provisionally approved the original proposal, but sent it back to the committee for further refinement and consideration of the standards for certification.
The Specialization Committee, after consideration, is supportive of certification of IP attorneys in the four substantive areas of IP law described above.

To learn more about specializa-tion issues or to join the committee visit www.abanet.org/intelprop/committees.html to see a listing of all Section committees.

West LegalEdcenter Provides Section Programs For CLE

West LegalEdcenter, the world's leading provider of Continuing Le-gal Education on the Internet, makes Continuing Legal Education programs at discount prices always available to Section members. Law firms and corporate legal depar-ments can save 30-70% on the cost of CLE programs for their attorneys.
Currently, forty of the fifty states require attorneys licensed in those states to attend CLE. There are serious consequences for failing to meet these CLE rules. In a number of states, the Internet is now an accepted method of getting CLE credit. Upon completing a pro-gram, there is immediate access to a Certificate of Completion, to print and to be saved online at West Le-galEdcenter.

Investments in CLE programs enable attorneys to expand their practice, and to provide better ser-vice to their clients by staying cur-rent with trends in the law.

Access West LegalEdcenter at www.westlegaledcenter.com. Follow the on-line instructions to create a profile. As a new West LegalEdcen-ter registered user you are imme-diately entitled to one free ABA Section of Intellectual Property Law online CLE program.

Section Supports Copyright Awareness Week 2003

The Copyright Society of the U.S.A. acknowledged the support of the ABA Section of Intellectual Property Law's contribution to Copyright Awareness Week 2003, held March 9-15. This is the sec-ond year the Section has contrib-uted. Donations support publicity efforts that are part of the pro-gram. The Section endorses this program, because it supports greater awareness and respect for copyrights, especially during a day when digital copying is more ram-pant than ever.
For further information on the Copyright Society and its upcom-ing events, visit www.csusa.org.
BNEF Sponsors Saul Lefkowitz Moot Court Competitions

Law school teams from across the U.S. competed in the Regional portion of the 2002-03 Saul Lefko-witz Moot Court Competition on February 22.

After submission of written briefs, many of which were graded by INTA members/volunteers, the 50 teams participated in highly competitive regional oral arguments before judges and practitioners in courthouses in Atlanta, Chicago, New York, and San Francisco.

Based equally on brief plus oral argument scores Franklin Pierce Law Center (East), Marquette Uni-versity School of Law (Midwest), The University of Tennessee School of Law (South) and Hastings Col-lege of the Law (West) emerged as the Regional winners.

The four finalist teams competed in the National portion of the competition, held March 15, 2003 at the U.S. Court of Appeals for the Federal Circuit in Washington, DC. Results of the National Finals were not available yet at press time.
The competition was established in 1990 by the Brand Names Edu-cation Foundation (BNEF) in honor of the late Saul Lefkowitz, who was instrumental in establishing the Trademark Trial and Appeal Board. The program seeks to introduce law students to the challenging issues involved in trademark and unfair competition law.

Competition Chair was Julie A. Katz, and the Vice-Chair was Wil-liam H. Brewster.

National Conference on Professional Responsibility

The ABA Center for Professional Responsibility will fete the 29th National Conference on Profes-sional Responsibility in Chicago May 28-31, 2003. Seminars held during the Conference will include multijurisdictional practice, client confidentiality, conflicts of interest, and lawyer liability, among others. The 19th National Forum on Client Protection will also be held in con-junction with the Conference on May 30-31.

Complete program and registration information online at www.abanet.org/cpr/prconf.html or contact Angela Burke, Director, Marketing & Program Development at 312/988-5305.