Amicus Curiae Brief
Filed in Knorr-Bremse

On November 3, the ABA filed an amicus curiae brief asking the U.S. Court of Appeals for the Federal Circuit to overrule its precedent permitting an adverse inference of willful infringement to be drawn from the invocation of the attorney-client privilege. The text of the brief is reprinted below, and I know you will share my pride in having generated this brief from our Section. Kudos go to the primary drafters, Rich Beem and Joe Welch, who co-chair our Section's Amicus Brief Committee, as well as others who contributed their insights and in-put. We also appreciate the sound guidance of the ABA Standing Committee on Amicus Briefs.

See the content of the Amicus Brief.

ABA Seeks an End to USPTO
User Fee Diversion

On October 10, ABA President Dennis W. Archer wrote to House Speaker Dennis Hastert and House Minority Leader Nancy Pelosi, urging passage of H.R. 1561, which would revise the PTO fee structure and statutorily end the practice of diverting PTO user fees to fund unrelated programs. The bill would end diversion by making all fee collections available to the PTO immediately, without the need for the funds to first be appropriated back to the agency. H.R. 1561 has been reported favorably by the Judiciary Committee, and is awaiting action in the House. See the text of President Archer's letter.

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October 10, 2003

The Honorable J. Dennis Hastert
Speaker
U.S. House of Representatives
Washington, DC 20515-6501

Dear Mr. Speaker:

I am writing to express the strong support of the American Bar Association for the enactment of H.R. 1561, a bill to provide for the continued financing of the U.S. Patent and Trademark Office (USPTO) entirely by user fees, and to guarantee that all revenue from such fees is used exclusively to fund the agency.

Patents and trademarks encourage and support invention, innovation, and investment. For American inventors and high technology innovators to compete in the world economy, it is essential that the USPTO act promptly and accurately on applications for patents and trademarks. Unfortunately, this is not happening. The agency has a backlog of almost half a million unopened patent applications, and the trend suggests even worse to come. The PTO projects that the time it takes to obtain a patent, which now averages over two years, will nearly double in the next few years. The quality of patents issued is diminishing, leading to legal uncer-tainty, costly litigation, and crippling delays in development and marketing.

Insufficient funding for the USPTO is a prime factor in these problems. User fees paid to the agency should be adequate to fix the problems, and the PTO's customers have expressed willingness to pay more if needed. However, for a decade Congress has failed to allow the PTO to use all of its collections. In these ten years, more than $650 million have been diverted to fund other programs.

H.R. 1561 as reported by the Judiciary Committee is a comprehensive and effective bipartisan response to the funding needs of the USPTO. It would produce the revenue requested by the Administration to carry out USPTO Director Rogan's reform plans, and guarantee that none of that revenue is diverted to fund unre-lated programs.

Three years ago, the American Bar Association recognized the need for legislation such as H.R. 1561, and called on Congress to end PTO user fee diversion. In February of this year, we found that need to have grown even more critical, and identified the need to stop PTO user fee diversion as one of the Association's twelve highest legislative priorities. We believe that H.R. 1561 would do the job, and urge that the House approve the bill as expeditiously as possible.

Sincerely,

Dennis W. Archer

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This advocacy is based on ABA anti-PTO fee diversion policy adopted in 2000 by the ABA House of Delegates, and designation of this issue as an ABA legislative priority in February, 2003.

I encourage Section members to send letters or e-mails to their own representatives in the House of Representatives, urging passage of H.R. 1561 and ending user fee diversion. Points made in President Archer's letter can be repeated, in your own words, in your communication to your own member of Congress. Communications to your member of Congress should stress the importance of ending fee diversion, and make clear your opposition to increased user fees that are not dedicated entirely to support of PTO operations. The ABA website will help you identify your representative in the House and obtain contact information. Go to www.abanet.org and select "Legislative and Governmental Advocacy" and then "Grassroots Legislative Action Center."

FTC Report on Antitrust / IP Policy Portends Greater IP Involvement

On October 28, the Federal Trade Commission issued its long-awaited report entitled "To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy." The report emanates from extensive hearings last year, in which the Section testified, and suggests greater FTC involvement in IP policy in the future. An Executive Summary of the FTC report is posted on the Section web site at www.abanet.org/inteprop/ftc_rpt_ex.pdf. The full report is available on the FTC web site at www.ftc.gov/opp/intellect/index.htm.

In 2002, the FTC and the Department of Justice Antitrust Division conducted 24 joint hearings on balancing IP and antitrust interests. Contemporaneous publicity suggested the hearings might have an anti-IP theme, and in a Fall 2002 speech, FTC Chairman Timothy Muris noted the observation by some that "perhaps it is intellectual property doctrine that is not showing a proper appreciation for the innovation that competition may spur."

Our Section testified extensively in the hearings. Mark T. Banner, 2002-03 Section Chair, and Robert P. Taylor, 2002-03 Chair of Committee 409 (Antitrust Matters), testified on behalf of the Section. Charles P. Baker, 2001-02 Section Chair, also testified in an individual capacity. These witnesses' testimony, cited more than 20 times in the FTC report, strongly contributed balance to the proceedings and the ensuing report.

The FTC report makes 10 recommendations for modifying the present patent system:

1. Legislation to establish post-grant opposition proceedings in USPTO.
2. Legislation to establish a "preponderance of the evidence" standard for patent validity challenges.
3. Tighten legal standards for obviousness.
4. Provide adequate funding for the USPTO.
5. Modify rules on prior art citations and examining procedures.
6. Consider harm to competition before expanding patentable subject matter.
7. Publish all patent applications 18 months after filing.
8. Create prior user rights to protect against continuing applications.
9. Legislation to require actual notice or deliberate copying for liability for willful patent infringement.
10. Consider economic thinking and antitrust policy in patent law decision-making.

Based on the report, which will be controversial, we can anticipate greater FTC involvement in patent policy formulation and execution, more FTC amicus briefs in patent cases, and even direct FTC challenges to patent validity in select cases. The FTC will issue a second report, jointly with the DOJ, with recommendations for modifying the antitrust system, probably after the first of the year.

Coincidentally, the FTC released its report just two days before a previously scheduled meeting with Section leadership. Twelve section officers and council members met with Suzanne Michel, FTC Chief Counsel of Intellectual Property and her three associate IP Counsel for a useful discussion of opportunities for cooperation and collaboration between the FTC and the Section.

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Committee News

Copyright Office Affairs
(Committee 303)

Donna M. DeGrandi
Committee Chair

The Section's annual meeting with the Register of Copyrights and senior Copyright Office staff members will take place January 12, 2004. The meeting will occur from 9:30 a.m. to 1:00 p.m. in the Register's Conference Room on the 4th floor of the Library of Congress.

This informative presentation includes ample opportunity for questions and dialogue. If you plan to attend, please RSVP to Jessica Cohen, Vice Chair of Committee 303, phone: 212-309-6764, email: jcohen@morganlewis.com, or fax: 212-309-6001.

Special Committee on IP Valuation
(Committee 464)

Donna Suchy
Committee Chair

This committee focuses on corporate members' needs in the area of intellectual property of corporate assets. The objective is to gather information that is valuable in helping corporate IP attorneys value or supervise the valuation of their intellectual property assets. Committee members represent a wide range of corporations including major corporations in the area of software, manufacturing, biotech, telecommunications, and business methods as well as IP valuation experts, accountants and law firm members.

The Committee's agenda for this year includes preparing an IP valuation primer for corporate attorneys. They are also planning to conduct a survey of ABA corporate members to determine their current practices - a snapshot of IP valuation in the corporate environment today. They may also include in this survey members of LES and IPO organizations making this one of the most comprehensive surveys ever conducted in the area of IP valuation. They ultimately want to devise a series of best practice recommendations from the committee for corporate members.

The Committee will send their corporate members a survey and will welcome participation from each corporation that deals in intellectual property valuation. They will offer those that participate in the survey specific results. Please contact Donna Suchy with questions, or comments at dsuchy@hselaw.com or 585-231-1191.

Ethics and Professional Responsibility Committee
(Committee 502)

Carol M. Langford
Committee Chair

The Ethics and Professional Responsibility Committee began a study of the ethical and legal malpractice pitfalls of intellectual property lawyers, which are unique to the practice. This committee aims to identify the problems and suggest solutions.
Contact Carol M. Langford with any relevant information at 925-938-3870. The results will be presented at the Spring Conference in Washington, D.C.

Experts Committee
(Committee 606)

Luke Dauchot
Committee Chair

Given the proliferation of experts in IP litigation, the Section has de-cided to devote a committee to this subject. Broadly speaking, it will address procedural and substantive considerations raised by the use of experts on the part of both trial courts and litigants. Particular areas of focus will include (a) the use of tutorials, technical advisors, and special masters by trial courts, (b) patent experts, (c) survey experts, (d) Daubert issues, and (e) Fed. R. Civ. P. 26 considerations. The Committee is open to any additional suggestions. The Committee invites Section members to join and are particularly interested in those willing to assume a committee leadership role by taking responsibility for a specific area of focus.
Please contact Luke Dauchot with questions or comments at ldauchot@kirkland.com.

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2002-03 Annual Report
Available This Month

The 2002-03 edition of the Section of Intellectual Property Law Annual Report will be available on the Section website by the end of December.

A limited number of CD-ROM versions of the Annual Report will be available free to Section members who specifically request one. To receive the CD-ROM version, contact intelprop@abanet.org and request the 2002-03 Section of Intellectual Property Law Annual Report. Requests should include name, firm, address, city, state, zip, phone, fax and e-mail address information. Requests should be made by January 31, 2004.

Section Dues Increase Approved

The Section Council approved a dues increase that will increase Section dues from $35 to $55. The increase will become effective September 1, 2004. The ABA Board last approved a dues increase for regular/associate members of the Section that went into effect September 1, 1993.

The increase is necessary to meet rising costs and maintain the current level of Section activities, such as Section programming, publications, and the new Section electronic monthly newsletter e News, as well as to support increased committee activities.

Section Profile:
J. Michael Monahan

J. Michael Monahan is Chair of the Section's Special Committee on Possible New Section Publications (952). He is also a member of the ABA's Business Law Section and the Forum on Franchising. He practices law with Phelps Dunbar in New Orleans.

Michael joined the Section as a young lawyer five years ago. Throughout his legal career, Michael has practiced with firms that strongly supported activity in the ABA and worked with many partners who were leaders in other sections. From Michael's first contact with the Section, he found real camaraderie in the members, even though their experience level and specialties varied.

Michael's practice traverses many areas of "soft IP" including trademarks, copyrights, trade secrets and related issues. Most of his work is litigation, although he also does trademark registration work and a variety of licensing. As a young attorney with the more general practice that is required in a mid-sized city, he especially enjoys staying involved in, and abreast of, the newest issues in intellectual property law through the Section. Many times, senior Section members have graciously helped him as a mentor and/or sounding board when he has faced complex intellectual property issues.

As for the future of the profession and the Section, Michael identifies an increasingly broad and diverse range of people that intellectual property law newly impacts. The Section's huge membership reflects this phenomenon, which is excellent for the profession. It is a tremendous opportunity for the Section, because it represents a calling. He is confident that the Section will respond to this growth, most directly in the area of publications. Michael feels that working on the Section's publications is his direct response to the recent growth in the intellectual property field and a means to return some of the benefits that the Section has given him.

The publications committee that Michael chairs is working with those involved with the Section's existing publications and outside organizations to generate new content and commentary for new decisions regarding patents, copyrights and trademarks. Ideally, this new content can be delivered electronically as another means to directly connect with the Section's broader membership.

Review: West LegalEdcenter Online CLE

Stephana Patton, Ph.D.
Banner & Witcoff, Ltd.

At first, I had some difficulty signing in, but one quick call to the friendly and efficient technical support personnel solved the problem. Once signed in, I found a well-organized listing of interesting courses. For each course, there was a description of the content ands listings of the speakers and the accrediting states.

I enrolled in the ABA Summer IPL Conference: Patent Prosecution and Licensing course, which consisted of on-demand audio, course materials, and a discussion forum. After enrolling, I was given access to the course for 180 days. That is, at any time during the 180 days I was able to go back and listen to any portion of the course. To take the course, I only had to signify whether or not I was taking the course for CLE credit, and if so, for which state I was seeking credit. After that I was a mere click away from the on-demand audio and the course materials.

The on-demand audio was of good quality (even listened to through the speaker on my laptop) and was simple to navigate. I especially liked having the ability to bookmark my place in the presentation. For example, I listened to parts of the program during lunch and other parts during periods of downtime. This flexibility, as well as the 180 days from purchase that I was given access to the program, increased my already positive opinion of the experience.

The course materials were available for downloading or printing before listening and were available to view on-line while listening to the on-demand audio. The materials consisted of the original power-point presentations. Being able to view the power-point presentations during listening made the experience much more engaging.

As for the discussion forum, I did not find any comments posted, either substantive or otherwise. I would have found the availability of the discussion forum useful were I guaranteed a response from one of the speakers or the moderator.
Overall, I found the experience of West LegalEdcenter Online CLE to be positive. West LegalEdcenter Online CLE was very convenient, the navigation through the site was intuitive, the on-demand audio and the materials were very high quality, and the technical support was friendly and efficient. For the busy professional wishing to keep abreast of the latest trends, it provides a valuable service.

About West LegalEdcenter:

West LegalEdcenter (www.westlegaledcenter.com) provides online continuing legal education (CLE). The American Bar Association Section of Intellectual Property Law is
a West LegalEdcenter content partner.

Employment Opportunities Available on Section Website

Employment opportunities in the field of intellectual property law are posted on the Section's web-site, www.abanet.org/intelprop/empyopp.

If your firm, company, school or governmental agency has a position available for an intellectual property attorney, please send (1) a brief summary, or explanation of the position (2) a full job description and (3) an e-mail or web site address where readers can obtain additional information or respond to the posting. Postings will remain on the website for 90 days, or until notified that the item should be removed. Send information to intelprop@abanet.org.

This page is a resource to members who are interested in potential career opportunities in the field. The Section is only accepting "positions available" listings.

Section To Co-Sponsor National CLE Conference

On January 3-8, 2004, the Section will co-sponsor the intellectual property law sessions at the 2004 National CLE Conference, coordi-nated by Law Education Institute (LEI).

The Conference includes nine simultaneous programming tracks, including programs in civil litigation, criminal law, employee benefits law, family law, health law, intellectual property law, labor and employment law, real estate law, and trusts & estate law.

The five-day intellectual property law track includes sessions covering aspects of patents, trademarks, copyrights, global IP law, and e-commerce.

The program will be held at the Snowmass Conference Center in Snowmass Village at Aspen, Colorado. For full details on the conference, and registration information, visit www.lawedinstitute.com, or call 800-926-5895.

Opportunity to Inspire Creativity In Young People

FIRST (For Inspiration and Recognition of Science and Technology) was founded to inspire an appreciation of science and technology in young people. If you are interested in learning more about this organization and ways you and/or your organization can get involved, please contact Pattie Cook at robotsfirst@aol.com.

See more information at www.usfirst.org.

On-Sale Bar Reactions Sought

Second year Yale law student, Leah Fletcher, seeks attorney feed-back for an article regarding the on-sale bar for an article. Her specific focus is the Special Devices v. OEA decision, and the Federal Circuit's referral to create an exception for purchase by inventors from third party manufactures. Contact her at leah.fletcher@yale.edu.