Robert W. Sacoff
Section Chair, 2003-04

The Section's 11th Annual Summer IPL Conference in Toronto was a great success, thanks largely to the efforts of Marisia Campbell and Fred Koenig, the program co-chairs. As the ABA Annual Meeting in Atlanta will have taken place by the time this Bulletin hits your desk in hard copy (though posted online earlier), my term as Section Chair will have come to an end, and I will have handed the Joseph DeGrandi Memorial Gavel to Bill LaFuze at the business meeting.

A few final reports of important Section actions and developments during the summer months. Don Mar-tens, as previously reported, led our Task Force on the FTC Report on reforming the patent law system. Don has combined into one document our various policy resolutions responding to the ten FTC recommendations, which were adopted this year either at Council meetings or after full and open debate at the Summer IPL Con-ference. Among the resolutions adopted at the Summer IPL Conference is a position favoring adoption of a post-grant patent opposition procedure to provide a lower-cost alternative to challenging suspect patent claims within limited times and subject to appropriate safeguards to prevent harassment of patentees. The consolidated document will be circulated to other ABA entities with a request for Blanket Authority to enable us to advocate our position to the FTC and in the anticipated Congressional hearings to be scheduled. The adopted resolutions are posted on the Section's website.

Another major Section initiative is our ongoing advocacy on the USPTO's proposed overhaul of its Rules of Professional Conduct. I am pleased to report that the written report of our Task Force was approved by the ABA Center for Professional Responsibility as fully consistent with ABA policy, was signed by ABA Presi-dent Dennis Archer, and was timely submitted to the USPTO in response to their Notice of Proposed Rule-making. We are following up with USPTO personnel to clarify, explain and advocate our positions on the proposed rules package. The ABA commentary is posted on the Section's website at www.abanet.org/intelprop/bulletin/ptoethicsletter.doc. Finally, the Section Council will have met one last time before the Annual Meeting, addressing recommendations made by the Long Range Strategic Planning Task Force, led by Vice Chair Tony Figg. Council action on the important issues covered in that report will influence the future structure of our Section's year, meetings and activities.

In closing, it has been a privilege and pleasure to serve as Chair of your Section during the 2003-04 Association year, and I wish to thank all the talented and hard-working Section leaders and staff who have devoted so much time and energy to our Section's great work. I am very proud of you all, proud of what our Section has accomplished this year, and honored to have had the opportunity to be a part of it.

ABA Honors Women in the Legal Profession

Susan B. Montgomery
Section Council Member

It was my privilege to represent the Section at the ABA's Managing Partner and General Counsel Leadership Summit in New York City, May 24 and 25, 2004. The ABA Commission on Women in the Profession and various other ABA entities, including the Section of Intellectual Property Law, sponsored the event. Attendance was limited to corporate general counsel, law firm managing partners and sponsor representatives. The program combined celebrations of success, including a reception honoring women general counsel of Fortune 500 companies, with working sessions on diversity initiatives, best practices and implementation of corporate diversity requirements. ABA President Dennis Archer explained that the purpose of the Summit was to bring together top corporate and law firm leaders "to ensure progression and succession for women in the legal profession." Judging by the roster of over 150 general counsel and managing partners, that attendance goal was met. And, I was impressed to see these leaders devote a full day to the agenda: cell phones turned off, notes taken, probing questions asked and tough, candid answers given. Clearly, the Summit addressed matters of significant concern to the leadership.

The speakers included Jim Turley, Ernst & Young's CEO, and Ben Heineman, General Electric's Senior Vice President of Law and Public Affairs. Both acknowledged an obvious need to tap into the talent pool of women lawyers graduating in equal numbers from top law schools and the "unassailable business case for gender equality." And both stressed the critical role to be played by corporate and law firm leadership. Jim Turley told the audience they must be "leaders and champions - not just leveling the playing field, not just making the business case, but communicating a strategic imperative and felt need for change." In the same vein, Ben Heineman concluded, "…the buck stops here. The leader of the organization must believe deeply in the principles [of gender diversity]; must articulate those beliefs forcefully to the organization; and must demonstrate, through action, that the words have real meaning and impact." Breakout sessions, each lead by a panel of three general counsel, focused on the impact of corporate diversity goals on the selection of outside counsel. In the session I attended, Bill Lytton (Tyco International), Elizabeth Lanier (US Airways Group) and Don Liu (Ikon Office Solutions) talked about the diversity guidelines and questionnaires they use to decide on outside counsel selection and retention. Although some companies may appear to merely gather data and ask for improvement, the panelists identified a trend toward focusing on evidence of actual improvement and the gender diversity of the lawyers actually doing the bulk of the work. Increasingly, law firms must meet the criteria set by the corporation for other suppliers. Examples were given of decisions to not hire or not retain firms due to lack of gender diversity in particular areas of expertise or failure to advance women.

Some of the materials distributed at the Summit are available from the ABA. For example, Section members interested in learning more about best practices can turn to two guides published by the ABA: Empowerment and Leadership: Tried and True Methods for Women Lawyers; and Walking the Talk - Creating a Law Firm Culture Where Women Succeed. To order these publications, contact the ABA Service Center at 1-800-285-2221, or visit www.abanet.org/abapubs/home.html.

Committee News

Committee 502 - Ethics

Carol M. Langford, Committee Chair

Committee 502-Ethics has had a very busy year assisting in the drafting of comments to the PTO's rule changes. It has also put on two ethics presentations: one at the 19th Annual Intellectual Property Law Conference in April and one at the Summer IPL Conference in Toronto. The Committee is now starting a new year and is turning its efforts toward the Committee Report.

The focus of the report will be on depression and the intellectual property lawyer. The Committee is sure that there is probably little, if anything, written specifically on patent and trademark lawyers, but that is why they wanted to write on the topic. I see depression as a major underlying cause of legal malpractice and discipline cases, and I want to assist IP lawyers in recognizing and resolving it. In almost every case where I can see that the lawyer is exhibiting symptoms of depression, or anxiety - a precursor to depression - that same lawyer will deny any feelings of depression. It is a real problem, especially since the lawyer cannot discern how much pain (s)he is really in.

The Committee will also attempt to discover if there are personality differences in patent and trademark lawyers that make one specialist more susceptible to depression than another.

Committee 701 -
Computer Programs

Toni Tease, 2004-2005 Committee Chair

Committee 701-Computer Programs is gearing up for an exciting ABA year. One of the tasks of the committee over the next year will be to propose Section policy on whether software is a "component" of a patented invention within the meaning of 35 USC § 271(f). Toni Tease, the committee's incoming Chair, will be taking the lead on this project, in collaboration with Committee 106-Inventors. Hillary Pearson with Bird & Bird in London will be chairing a subcommittee on EU Developments in Computer Programs. Hillary's subcommittee will track and prepare a written report on the patentability of software in Europe, as well as the EU Directive on Privacy and Electronic Communications.

The Computer Programs Committee is also seeking volunteers interested in tracking and preparing a written report on the federal and state anti-spyware legislation in the U.S., including the proposed Senate SPYBLOCK Act sponsored by Senators Conrad Burns (R-Mont.), Ron Wyden (D-Ore.), and Barbara Boxer (D-Calif.), and the proposed House SPY Act introduced by Representative Mary Bono of California. This is a particularly good opportunity for young, tech-savvy lawyers to become involved with the ABA. Interested individuals should contact Toni Tease at (406) 245-5254 or toni@teaselaw.com.

ADR SURVEY FOR
IP DISPUTES

The ABA Section of Intellectual Property Law, Committee 602 - Alternative Dispute Resolution, is evaluating the effectiveness of various ADR techniques in IP cases. The following survey asks for the respondent's environment followed by 12 questions in multiple-choice format. The results will be reported to IPL Section members in a future bulletin.

Respondent's Environment
(Select One):
Corporate
Law Firm
Other

Arbitration

1. Do your clients usually include mandatory arbitration in their IP licensing contracts?
Yes
No

2. If negotiations and mediations fail, do your clients try to seek the use of arbitration to solve IP disputes?
Yes
No

3. If "YES" to either question 1 or 2, check off the reasons for using arbitration:
More cost-effective than litigation
Less risk, e.g., no collateral estoppels (issues preclusion) effect on the validity or ownership of the IP
Faster resolution of disputes
More control over the process
More convenient
Other ______________________ (please specify)

4. If "NO," check off the following reasons for declining arbitration:
Litigation is more aggressive and reinforces the seriousness of the claim
For a public company, it inspires investor confidence that major IP rights are being enforced
From an IP lawyer's standpoint, the courthouse is the best forum
In case of a bad decision, strong appellate rights exist
Preliminary relief is faster
Discovery is easier and faster
Other ______________________ (please specify)

Mediation

5. Do your clients use mediation of IP disputes before litigation?
Yes
No

6. Do your clients use mediation (either court/appointed or voluntary) after litigation has begun?
Yes
No

7. If "YES" to either question 5 or 6, indicate the preferred timing for the mediation:
Before discovery
Before dispositive motions and claims construction
Patent cases, after claims construction
Before trial but after close of discovery

8. In picking a mediator, which is a more important quality:
Substantive expertise
Good mediation skills

9. Which class of mediators do you prefer?
Former-judge mediators
Attorney-practitioner mediators
Mediators from specialized panels, e.g., INTA, WIPO, AAA

Special Masters

10. Have your clients used Special Masters?
Yes
No

11. In patent cases, do your clients prefer the use of special master to decide claims construction issues?
Yes
No

12. Would it be helpful if the Section published a list of mediators, arbitrators and special masters who have demonstrated success in IP matters?
Yes
No

Name:__________________________
Firm:__________________________
Address:__________________________

City:__________________________
State/Zip:__________________________
Phone:__________________________
Fax:__________________________
e-mail:__________________________

Please return the completed survey via facsimile to:
312/988-6800.

Thank you.

Section Profile:

Richard P. Beem

Although Rich Beem knew he wanted to be a lawyer for as long as he can remember, his path to get there took him from his childhood Wisconsin dairy farm on to jobs as a trapper and in a drop forge, a distillery and a refinery. Beem also says, "I never wanted to be a patent lawyer."

However, Bill LaFuze snagged Rich when he sent his resume in to Bill's law firm. Bill introduced him to patents and intellectual property law, and the rest was history. For Rich, this area of the law makes perfect sense: "I enjoy challenges and I fear failure; both motivations are strong in patent law and practice," he says.

Rich's ABA membership dates back to 1986, and he's chaired Committees 101 (Patent Legislation), 102 (International Patent Treaties and Laws), 605 (Amicus Curiae Briefs), and 602 (Alternative Dispute Resolution) for the Section. He values his Section membership for the opportunities the meetings present "to renew old friendships and make new ones, to keep up on the latest in patent law and practice and, sometimes, to help advance the law."

Rich met one of his greatest challenges when he wrote the ABA amicus brief in the pending appeal in Knorr-Bremse v. Dana (Fed. Cir.); he avows that he was lucky to get writing and editorial help from other ABA members to improve the brief. He says his current cases are always his favorites. Presently he's repre-senting a horse trainer and inventor of an offset racing sulky. "Every lawyer should have at least one case that requires a visit to the track," Rich says.

A few facts that Rich wants to share with fellow Section members that he didn't think they already knew: He's been a circus clown with the Shriners; he's a Presbyterian elder; and he's a student of Robert's Rules.

Coming from a man who attended a one-room country schoolhouse and has risen remarkably in patent law, Rich's words of advice carry special resonance: "Make a contribution. Do something to help your clients, your firm and the bar. You'll make the world a better place and you'll make a place for yourself in the process."

Contact Rich Beem at richard@beemlaw.com.

AMERICAN BAR ASSOCIATION
Section of Intellectual Property Law
321 N. Clark Street, M/S 19.1
Chicago, IL 60610

Mark Your Calendar-

2004 Annual Meeting
August 6-8, 2004
Westin Peachtree Plaza Hotel
Atlanta, GA

20th Annual Intellectual Property Law Conference
April 14-15, 2005
Crystal Gateway Marriot Hotel
Arlington, VA

2005 Summer IPL Conference
June 22-26, 2005
Palace Hotel
San Francisco, CA