Mark T. Banner
Section Chair, 2002-03

"There are never enough hours in the day."

"It's never as easy as it seems."

"It's not the team with the greatest players that wins, but rather it is the players with the greatest team."
(R. McLean, quoted by Professor Richard Feinberg of Purdue University.)

As I look back on the past year as your Section Chair, the quotes above, so familiar to us all, seem particularly appropriate. There are many demands on all of our time, some personal and some professional. Contributing to a professional association, like the ABA, AIPLA, INTA, or others, takes a tremendous amount of time and energy. Our Section members write books, plan CLE, publish papers, study issues, attend meetings (at the PTO, WIPO, and elsewhere around the world), and do countless other tasks all without compensation and usually without the recognition and praise they deserve. To Chair the Section is a humbling experience; just keeping track of all these activities is a challenge.

There never are enough hours in a day. That's why, amidst the numerous programs and activities in any Association year, one initiative tends to stand out as a priority for the Chair. This year our goal was to take a significant crack at ending PTO fee diversion. Bringing an end to this tax on technology and innovation has been a goal of the Section for some time, and a policy of the ABA itself since 2000. The efforts intensified this year, and for the first time the ABA Board of Governors designated it as one of the dozen or so legislative priorities within the entire ABA family of interests. The effort continued with the Section energizing a large cotingent to bring the message to Washington, D.C. on ABA Day. It continues to this day, with members contacting their Representatives in the home districts and when they visit Washington on business.

The effort continues to show promise. This month we can report that the House Committee on the Judiciary, chaired by Rep. F. James Sensenbrenner, Jr. (R-WI), voted to "favorably report" a bill that would end diversion by making all funds collected available to the PTO for operations. Under the bill all user fees collected would be made available to the PTO immediately upon collection, without the need for those funds to first be appropriated back to the PTO. The bill, H.R. 1561, the "United States Patent and Trademark Fee Modernization Act of 2003," would increase PTO fees by about 15%, an amount the PTO estimates is necessary to accomplish the goals set forth in its 21st Century Strategic Plan. Importantly, however, the bill would also end the practice of using fees collected by the PTO for unrelated government programs. As we reported last month, the provision to end diversion was added by the Subcommittee on Courts, the Internet, and Intellectual Property, chaired by Rep. Lamar Smith (R-TX) with strong bipartisan support from Rep. Howard Berman (D-CA) and Rep. Zoe Lofgren (D-CA).

The next step of the process will require vigilance as well. The bill, with its anti-fee diversion provision, will be considered by the full House of Representatives. Similar measures have been reported out of the Committee on the Judiciary in the past. They met vigorous opposition from members of the House Appropriations Committee, who saw the provision as impinging on their prerogatives. Prior efforts to end fee diversion died in the House.

This time, however, the ABA can point to the support of the Administration for an ultimate end to all PTO fee diversion. In a statement earlier this year, Secretary of Commerce Evans said that he was committed to finding a way to end diversion. While encouraged by the statement, we were discouraged by the fact that the Administration nevertheless proposed a budget that would continue fee diversion, at least for the coming year. We were encouraged, however, by this formal statement from a high Administration official pledging to end diversion at some unspecified point in the future. We have also been encouraged by the manmy informal contacts we have had within the Administration indicating that future budget requests would reduce or eliminate fee diversion. Our goal, of course, is to end this disruptive practice now. Our challenge is to convince members of Congress to do so.

It's possible that the leadership of the Judiciary Committee will work behind the scenes with the leadership of the Appropriations Committee before the bill comes to the floor of the House. Certainly such work would be commendable, and should be supported by our members. While bringing an end to fee diversion has bipartisan support in the Judiciary Committee, it will need support throughout the House to pass. Congresswoman Lofgren indicated that if the House enacted a PTO fee increase without the anti-diversion provisions, she would introduce legislation to roll back the fee increases. The Section has supported substantial fee increases for the PTO, but it has limited its support to amounts that would not provide for any fee diversion. Our position has been simple: PTO customers should get what they pay for and not pay for something they don't get.

The task of fighting PTO fee diversion will continue until the Administration no longer requests budgets that anticipate diversion and the Congress in the end no longer approves budgets that contain it. Until that time our members, our staff, and our Association, working hand-in-hand with other sister organizations (such as the AIPLA, INTA, and IPO) must remain active, vocal, and strong.

This brings me to the second topic: it's never as easy as it seems. Not only has the effort to fight fee diversion required the strong efforts of many of our members, but also the overall work of the Section in its many different facets reflects the vast amount of work of many interested and talented people. Crafting our Section positions is not as easy as it seems.

Last month the Section concluded its 110th Annual Business Meeting. The session, in San Diego, California, included debate on more than a dozen Resolutions selected by the Council for full debate. These resolutions are just the tip of the iceberg, selected from among the many resolutions passed by Committees of the Section and considered by the Council to be sufficiently controversial so as to warrant debate at the open meeting of the Section membership. The full results of those deliberations are reported elsewhere, but the effort that went into preparing, presenting, and ultimately passing the Resolutions by the membership can not be overestimated.

A few examples from this year's meeting tell the story. One of the resolutions debated was Resolution 103-3. That resolution opposes the outsourcing of the search function by the USPTO "unless and until pilot studies demonstrate that efficiency and/or quality will be improved by outsourcing."

A subcommittee of Committee 103, chaired by Donna Suchy, first prepared the resolution and reported it to the full Committee 103, chaired by Ron Myrick. The entire committee voted on (and passed) the resolution, which then was sent to the Council of the Section. The Council had several options, including approving the report and the resolution as it was, disapproving the report, recommitting it for further study, or "tabling" it by having it "rest as the committee report." Council had one other option, which it chose: scheduling the resolution for full debate at the Summer IPL Conference. Along the way, Council changed the wording of the resolution to more clearly and concisely state its principle and articulate the Section's specific conditions for removing its opposition to the proposed outsourcing.

At the Summer IPL Conference, the resolution was assigned two speakers to present the issue: one "pro" and one "con." Each was assigned the task of preparing a four-minute presentation to summarize the points. Donna Suchy was assigned to present the "pro" side of the arguments and Nancy Linck was assigned to present the "con" side of the argument. (Assignment to this task was made to facilitate the debate that followed. The "pro" and "con" speakers did not need to subscribe to the points they addressed; rather, they acted as advocates to crystallize and clarify the points for the membership.) They coordinated in advance so that each would address the points fairly and fully. After these presentations, the Chair called on individual Section members to present their arguments, either for or against the proposal.

The debate raised many interesting and provocative issues that went to the heart of the merits (or demerits) of the PTO's outsourcing proposal. The opportunity existed for members to amend the language of the resolution from the floor. Each proposal for amendment was discussed and debated. Every argument, for and against outsourcing, was aired. In the end, the Section took a vote, and the resolution was approved.

It is interesting to note that during the mark-up at which the Judiciary Committee adopted the PTO fee bill that would end diversion, the Committee also adopted an amendment to condition implementation of the PTO plan to outsource patent searching on the successful completion of an 18-month pilot project to demonstrate the feasibility of such outsourcing. According to the amendment, the results of the pilot project would be reported to the Patent Public Advisory Committee, which would evaluate the success of the project and report its findings to Congress. Full implementation of contractor searching could proceed one year later unless Congress enacts legislation to prohibit it. The bipartisan leadership of the Subcommittee, Chairman Lamar Smith and Ranking Member Howard Berman, proposed the amendment.

As I said, it's not as easy as it looks - but when it works, it works.

Another example shows how quickly the Section can act when needed. Resolution 604-1 opposes, in principle, any court's reliance on dictionaries in construing or interpreting disputed portions of a patent claim "unless (a) that material has been made part of the record and (b) the parties have had a full and fair opportunity to address, challenge, or rebut that material." That Resolution stems from the work of Committee 604 following the Federal Circuit's endorsement of the sua sponte use by trial and appellate courts of dictionaries, encyclopedias, and treatises as a primary basis for interpreting patent claim terms. Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002), rehearing and rehearing en banc denied, (Dec 09, 2002), cert. denied, 123 S.Ct. 2230 (May 17, 2003).

Committee 604 drafted a Resolution and report to address the issues raised by the Texas Digital case. Inside that committee it was hotly debated, but ultimately the Resolution was approved by a vote of 17 in favor and 6 against.

A then-pending petition for writ of certiorari prompted the Committee effort. If the Section could have any input by way of an amicus brief, it needed a position on the issue, and needed to have the position adopted by the ABA House of Delegates. The petition was denied a few days before the Section meeting, and largely because time was limited during the Summer IPL Meeting, the Council decided to recommend that the Resolution be recommitted for further study and additional vote during the next Association year. Others thought reconsideration was not necessary, and the issue was ripe for Section consideration, especially since the issue (use of dictionaries) was not likely to dissipate.

At the end of the Business Session, therefore, a motion was made from the floor to bring this issue up. The motion carried and the Resolution was debated at length. Following the debate it passed. I am grateful for the work of Committee 604 and the diligence of the Section members who worked on its position paper. In particular, two of our members, Rich Beem and Phil Swain, worked hard to ensure that the Section had the benefit of a full record for its considered debate on this Resolution.

These are just a few examples. Each year many Resolutions dealing with all areas of intellectual property law go through a similar path. Indeed, every Resolution passed by the Section this year - and there are quite a number of them - was the result of a similar sustained effort by many people.

Which leads me to my final point, and concluding thought, as Chair of the Section this past year. I have been fortunate to work with a great set of Officers, a tremendous Council, and an outstanding staff. Truly, "It's not the team with the greatest players that wins, but rather it is the players with the greatest team."

Committee on Minorities and Women in the Profession (Committee 504)

June M. Besek and
Dolores K. Hanna, Co-Chairs

Committee 504 introduced several new initiatives in the 2002-03 year, which it plans to continue and expand during the 2003-04 Association Year. The Committee is committed to providing opportunities for minorities and women to participate in the activities of the Section and to assume leadership roles.

The Reception/Breakfast sub-committee under the leadership of Benjamin C. Hsing and David S. Lee, Co-Chairs, held a very successful Reception on June 19th in San Diego during the Summer IPL Conference. It was well attended by women and minority lawyers, Chair Mark Banner, and former Chair Charles Baker. Co-Chair Ben Hsing told the group of the activities of the Committee and invited participation. As a highlight of the Reception, Errol Taylor spoke about his experiences as a minority lawyer in the profession.

Mark D. Engelmann, Chair of the Speakers Bureau subcommittee, is creating a list of minority and women speakers who are willing to speak at meetings and functions of the Section, as well as at events of other Sections of the ABA. If you know of anyone who should be added to the list, please hurl the name(s) to Mark at mengelmann@frosszelnick.com.

A new project is under consideration. The Committee is conferring with Anthony K. Greene, Past President of the American Intellectual Property Law Foundation (AIPLEF), Philip Hampton, Liaison to the ABA Commission on Racial & Ethnic Diversity in the Profession, and Shawn Fraser, Project Coordinator, to consider a Minority IP Law Student Judicial Intern Program. We are having discussions with a number of judges and the ABA Section of Litigation to determine how to structure and implement this program.

Committee 504 welcomes volunteers and new ideas. Contact Co-Chairs June M. Besek at jbesek@law.columbia.edu and Dolores K. Hanna at dhanna @bellboyd.com

IP Infringement In Foreign Countries Program Slated

A program entitled "Trying an Infringment Case in Foreign Countries - Five Mini-Trials" is set for October 3-4 at Fordham University School of Law in New York.

The day-and-a-half program will feature five mini-trials of an intellectual property case raising patent, trademark and copyright infringement issues. The lively presentations will illustrate trial practice in the courts of China, Germany, Italy, Japan and the United Kingdom. The mini-trials will be conducted entirely in the English language, before sitting judges from the respective foreign courts, through foreign trial lawyers practicing before those courts, and coordinated by U.S. corporate counsel. All mini-trials will be based on the same set of hypothetical set of facts, which will be distributed at the beginning of the program.

The AIPPI-US, ABA Section of Intellectual Property Law, ABA Section of International Law, New York Intellectual Property Law Association, and Fordham University Law School are co-sponsoring the program

Enforcing and Defending Patents:
Practical Tips Program To Be Held in Chicago

A one-day CLE program "Practical Tips on Enforcing and Defending Patents" will be held again this year on September 19 at the John Marshall School of Law in Chicago. The program focuses on the enforcement and defense of patents in court, offering a number of "model" documents typically used in patent litigation. The program is designed to enhance IP law skills and better enable IP practitioners to handle the many tasks that routinely arise in this field of practice. It provides practical advice on dealing with the "nuts and bolts" of everyday IP practice. This program follows a successful presentation on the same topic on June 17 in San Diego.

The Practical Tips series, now in its 6th year, is presented by the Section's Young Lawyers Committee. In addition to Practical Tips on Enforcing and Defending Patents, the Committee has presented Practical Tips on Intellectual Property Law, Practical Tips on Trademark Litigation, and Practical Tips on Patent Practice programs in past years.

The September 19 program is presented in cooperation with The John Marshall Law School and the Intellectual Property Law Association of Chicago.

For full program and registration information visit the website at www.abanet.org/intelprop/2003ptips_chicago. Advance registration deadline is September 4.