Charles P. Baker
Section Chair, 2001-2002

At the Section’s 109th business meeting on June 27 in Philadelphia, members debated and adopted several resolutions. One of the most anticipated debates related to a resolution that the Section favors enactment of legislation providing that a patent should belong to the inventor who first files an adequate application. After extensive discussion, the resolution was adopted by a narrow margin. Its text and the text of other resolutions adopted by the Section appear on page 3. Todd Dickinson of Washington, DC proposed the resolution and began the debate. Doug Wyatt of New York, NY then presented arguments against it. They were followed by almost 20 speakers, pro and con, from the floor.

Because of the closeness of the vote the Officers have decided not to recommend to the ABA’s House of Delegates that the resolution be adopted as ABA policy. The Section will, however, be asking the House of Delegates to rescind the current ABA resolution that opposes legislation which would change our law to a first-to-file system.

At the same meeting the Section passed resolutions (1) in favor of adding compliance with Section 112, paragraphs 1 and 2, as grounds for reexamination (introduced by subcommittee chair Jeff Kushan of Vienna, VA, (2) dealing with the Collaborative Research Promotion Act (introduced by subcommittee chair and Section Council member Gordon Arnold of Houston), (3) in favor of considering the degree to which competition would be hindered when determining the functionality of a product feature for which trade dress protection is sought (introduced by subcommittee chair Jonathan Jennings of Chicago), (4) opposing the creation of a mandatory, multinational system for geographic appellations of origin (introduced by Committee Chair Barbara Grahn of Minneapolis), and (5) opposing any interpretation of patent law that would extend enforcement of a genetic engineering patent in such a way as to limit the civil or human rights of any person in whom such invention is incorporated (introduced by Division X Chair George Frank of Philadelphia). As with the resolution on first-to-file, each of these resolutions was debated before being voted on by all members in attendance.

Section Testifies on PTO Fee Schedule and Reforms

Section Chair Charles Baker testified before the U.S. House of Representatives Committee on the Judiciary Subcommittee on Courts, the Internet, and Intellectual Property on July 18, at an oversight hearing entitled "the U.S. Patent and Trademark Office Fee Schedule Adjustment and Agency Reform." The hearing was called to review Director James E. Rogan’s proposals for restructuring PTO fees and other Office reforms.

In his testimony, Baker expressed ABA policy opposing the diversion of USPTO user fee revenue to fund programs unrelated to the functions of the PTO. The revised fee structure proposed by the Office provides for continued diversion, and therefore is opposed by the Section and the Association.

Baker also expressed a number of views reflecting Section policies that have not been reviewed and adopted by the ABA, including views on individual components of the Administration’s proposal for the restructuring of USPTO user fees. He praised Director Rogan’s efforts to respond to congressional demands for Office reform. In doing so, Baker noted a number of positive features in the Plan, but also identified a number of defects, some of which call for exorbitant fee increases, that require that the Plan be substantially rewritten.

Baker offered the assistance of the Section in working with the Subcommittee and the USPTO to develop a fee structure and other reforms that would be able to attain the objectives set out in USPTO Director James Rogan’s "21st Century Strategic Plan".

Also presenting testimony at the hearing were PTO Director James E. Rogan, AIPLA Executive Director Michael Kirk, and INTA Executive Vice President Kathryn Barrett Park.

Complete copies of the witness statements can be found at www.house.gov/judiciary/ courts.htm.

Advanced IT Law Seminar To Be Offered in Florida

The ABA Sections of Intellectual Property Law and Science and Technology Law will co-sponsor a Computer Law Association seminar, "Advanced Issues in IT Law 2002", October 3-4, 2002, at the Grand Floridian Resort in Orlando, Florida. The two-day advanced program will address legal issues and business practices relating to information technology projects.

For complete information and registration, visit www.cla.org, or call 703/560-7747.

Section Testifies at FTC/DOJ Antitrust Hearing

Robert P. Taylor of Menlo Park, CA represented the Section in testimony at joint hearings by the Federal Trade Commission and the Antitrust Division of the U.S. Department of Justice on "Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy", held in Washington, DC on July 10-11. The full-day sessions explored the jurisprudence of the U.S. Court of Appeals for the Federal Circuit, including substantive trends and analysis, the Court's jurisdiction, and its choice of law decisions.

Taylor addressed efforts by the Federal Circuit to define its own jurisdiction and to bring uniformity to the legal issues that affect patent cases, and whether the Federal Circuit acts appropriately in creating its own jurisprudence, rather than relying on the jurisprudence of the regional circuits, in deciding legal issues that are peripheral to the interpretation of Title 35.

Taylor's testimony, which was prepared by a Section team headed by Patent Division Chair Don W. Martens of Newport Beach, CA, expressed the view that the Federal Circuit's efforts on both fronts have been largely consistent with its Congressional mandate to bring uniformity to the process by which patent rights are defined and enforced. Taylor noted the thrust of the criticism does not appear to stem from dissatisfaction with the end results in particular cases, but rather with concern that the Federal Circuit has been able, on its own, to expand its appellate role in areas not absolutely essential to its primary patent mission.

A copy of the testimony can be found on the Section website at www.abanet.org/intelprop. Full transcripts of witness statements, and transcripts of earlier hearings, can be accessed on the FTC website at www.ftc.gov, by selecting "FTC/DOJ Hearings."

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Join A Section Committee

For The Year 2002-03

The Section of Intellectual Property Law works through its committees to establish Section and ABA policy and to promote and improve our intellectual property law system nationally and internationally. Being active on a committee contributes to our profession, and it is one of the best ways to become familiar with the cutting edge issues in an area of IP law that interests you.

All members are therefore urged to join one or more of the Section’s committees. If you have previously joined a committee, you need not do so again, but in case you did not, click here for a Committee Preference Form, www.abanet.org/intelprop/committee_registration.htm. Return the completed form electronically to staff offices, or contact Section staff: tel.: 312/988-5598; fax: 312/988-5628; or e-mail: intelprop@abanet.org.

For more information on a committee’s scope, see www.abanet.org/intelprop/ committees.html.

Once you have joined, if you plan to vote on reports and resolutions and otherwise participate in the work of the committee, you will have the option of being an "active"member. If you only want to receive updates of committee activity, you can become an "information only" member.

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Resolutions Adopted as Section Policy

At the Section Business Session

2002 SUMMER IPL CONFERENCE

June 27, 2002 G Philadelphia, Pennsylvania

Re-Examination Expansion To Include Certain Section 112 Issues

(Resolution 101-5)

RESOLVED, that the Section of Intellectual Property Law favors, in principle, amending the inter partes and Director-ordered ex parte reexamination authority under Title 35, United States Code, to permit reexamination on the basis of a substantial new question of patentability relating to compliance with the requirements of the first and second paragraphs of § 112, other than best mode, provided that any such reexamination is commenced within a limited period of time following the grant of the patent.

 

Collaborative Research Promotion Act

(Resolution 101-12)

RESOLVED, that the Section of Intellectual Property Law opposes any attempt to change the definition of prior art under Section 103 based on the existence of "collaborations" when there is no obligation to assign.

 

First-Inventor-To-File System

(Resolution 157-4)

RESOLVED, that the Section of Intellectual Property Law supports, in principle, enactment of legislation providing that the right to a patent shall belong to the inventor who first files an application for patent containing an adequate disclosure (35 U.S.C. §112) of the invention or, in the event of an assignment of rights, shall belong to the assignee thereof, and
FURTHER, the Section of Intellectual Property Law approves in principle and recommends to the House of Delegates the rescission of the following resolution that was adopted by the American Bar Association in 1967:
"RESOLVED, that the American Bar Association is opposed in principle to: Any change in the law which would have the effect of awarding the patent only to the applicant who is the first to file his application."

 

Trade Dress And Hindering Competition And Functionality Of Product

(Resolution 201-4)

RESOLVED, that the Section of Intellectual Property Law favors the principle that the degree to which protection would hinder competition shall be considered in determining the functionality of a product feature for which trade dress protection is sought.

 

Multinational Systems And Features Of Systems
On Appellations Of Origin

(Resolution 202-3)

RESOLVED, that the Section of Intellectual Property Law favors the principle that geographic indications (appellations of origin) should not be accorded legal precedence over trademark rights; and

FURTHER RESOLVED, that the Section of Intellectual Property Law opposes in principle the creation of a mandatory multinational system of notification and registration of geographic indications for wines and spirits, or any other products; and

SPECIFICALLY, the Section favors that, in any individual country that may adopt a national system of protection of geographic indications (appellations of origin); that (a) such system be implemented only by global notification thereof, and (b) any such geographic indications (appellations of origin) neither be accorded legal precedence over trademark rights, nor impose any enforcement obligations on other countries, nor provide a defense to a charge of infringement of prior trademark rights.

 

Genetic Engineering Of Humans

(Resolution 1003-1)

RESOLVED, that the Section of Intellectual Property Law opposes, in principle, the adoption of any patent law interpretation that would extend enforcement of rights under a patent covering a genetic engineering invention in such a way as to affect any person’s control of his or her own body because it includes or incorporates such an invention or to limit the civil or human rights of any person in whom such invention is incorporated.

Section To Co-Sponsor Teleconference on Festo

The Section will co-sponsor a CLE Teleconference on "Festo USA Corp. V. SMC: The Supreme Court Speakers on Patent Applications" on Tuesday, August 27 from 1:00-2:30 p.m. Eastern Time. The teleconference will be hosted by the ABA Center for CLE.

The U.S. Supreme Court, in the Festo case, held that the doctrine of equivalents prevents an accused infringer from avoiding liability for infringement by changing only minor or insubstantial details of a claimed invention while retaining the invention’s essential identity.

This teleconference will address the decision’s implications on patent applications and enforcement.

Panelists for the teleconference will be Lawrence M. Sung, Ph.D., Assistant Professor of Law at the University of Maryland School of Law; Robert A. Armitage, Vice President of Law and General Patent Counsel at Eli Lilly & Company; and Robert G. Krupka of Kirkland & Ellis, Los Angeles. Charles W. Shifley of Banner & Witcoff, Ltd., Chicago, will moderate the panel.

Registration fee for the teleconference is $85 for Section members, $125 for ABA, but not Section members, $150 for non-ABA members, and $60 for each additional registrant who uses the same phone line as the primary registrant.

To register, call 800/285-2221 Monday through Friday from 8:30 a.m. to 6:30 p.m. Eastern Time, or register online at www.abanet.org/ cle/programs/t02fsm1.html.

 

Amicus Brief Forthcoming In Trademark Dilution Case

The Section has received approval to file an Amicus Brief in the Moseley v. V Secrets Catalogue, Inc., No. 01-1015 case. As this edition goes to print, the brief, being prepared by Robert W. Sacoff, Uli Widmaier and Chad J. Doellinger, all of Chicago, is due August 23. Copies of this trademark dilution case brief will be available on the Section website when filed later in the month.

 

Chair’s Bulletin Undergoes Design Modifications

This issue of the Chair’s Bulletin reflects a revised design. The new Chair’s Bulletin incorporates the recent changes to the Section logo, and utilizes a new body font and several other new design elements.