William L. LaFuze
Section Chair, 2004–05

What a wonderful group of leaders we have in the Section of Intellectual Property Law!! The Section has made tremendous progress on many important projects in the first quarter of this ABA year. In fact, so much noteworthy activity has occurred that I am only able to report on just a few in this letter. Thank you, thank you, to our many dedicated leaders!!
First, a special note of appreciation to Chair-Elect Tony Figg who covered for me during a week and a half while I was unavailable for my normal chair duties due to preparation for and being in a trial. Thanks, Tony.
Next, Committee 464, under the able leadership of Donna Suchy, has just completed the final draft of a book entitled Fundamentals of IP Valuation. This work gives practical and invaluable information about how intellectual property assets may be valued and used to their greatest economic potential. Many thanks to Donna and her committee for the long effort that resulted in the first publication of its kind by the Section. This book will be of great potential benefit to its members and others.
As a followup to the work of the Long Range Planning Task Force, chaired by Tony Figg, Council recently made important decisions regarding material change for the Section. In the future, the midwinter meeting of the section leadership will be moved from January to November, beginning with the first leadership meeting in the fall of 2005. Also, the summer conference held in June, usually at a resort location, and the major CLE programs associated with the summer conference, will be moved to the ABA’s Annual Meeting, which is held in August. This change will take effect in 2007.
I appointed a Task Force recently, headed by Donna Bergsgaard, to study the Induce Act. New technology continues to pose new issues as to the extent of protection under our copyright law and enforcement alternatives. As a sequel to the Napster litigation, the Grokster case considered the legality of file sharing and transfer of copyrighted work in light of technology which moved would-be copyright infringers one step further from the clear reach of copyright protection. The Induce Act, if passed, would afford copyright owners a broad form of enforcement by imposing liability on those who create and commercialize new technologies used to manipulate and transfer copyrighted works. A basic issue arises for technologies that have both infringing and non-infringing uses. Consideration of the Induce Act involves determining the proper balance as a matter of policy as to who should be liable for violations of copyright law. This Task Force recently presented a resolution to Council which is under consideration as of this writing.
I also appointed a Task Force to design a new electronic masthead and “look and feel” for Section publications to enhance our marketing efforts. Chaired by former Section Chair Bob Sacoff, this Task Force recommended a new design that has been approved by Council. Look for the new “look and feel” in the near future on all Section materials and publications.
Don Martens is chairing two Task Forces– both the FTC Task Force and the National Academy of Sciences Task Force. These two Task Forces are considering substantive possible changes to our patent laws that could have dramatic effects on patent law and patent litigation. The FTC Task Force is expected to complete its work by December and the final report on the NAS study is expected in January. Thanks, Don, for doing double duty on these two very important projects.
Finally, the Section held a successful teleconference program on Recent Developments in Copyright Law: MGM v. Grokster and the Future of Internet File-Sharing on November 10. More teleconference programs of this type are expected in the future.
This promises to be an active and productive year for our Section, and I look forward to working with the many quality volunteers who serve the Section.

Committee News

Nominating Committee

 

The following Nominating Committee has been appointed by Section Chair William L. LaFuze for 2004-2005:

Charles P. Baker, Chair
Fizpatrick Cella Harper & Scinto
30 Rockefeller Plaza
New York, NY  10112-3801
212-218-2100.  Fax: 212-218-2200
cbaker@fchs.com

Cecilia Gonzalez
Howrey Simon Arnold & White, LLP
1299 Pennsylvania Avenue, NW
Washington, DC  20004
202-383-6595.  Fax: 202-383-7250
gonzalezc@howrey.com

Dolores K. Hanna
Bell, Boyd & Lloyd LLC
70 W Madison Street, Ste. 3300
Chicago, IL  60602-4284
312-807-4403.  Fax: 312-827-1276
dhanna@bellboyd.com

Craig S. Summers
Knobbe Martens Olson & Bear, LLP
2040 Main Street, 14th Floor
Irvine, CA  92614
949-760-0404.  Fax: 949-760-9502
csummers@kmob.com

 

Philip C. Swain
Foley Hoag LLP
155 Seaport Boulevard
Boston, MA  02210
617-832-1150.  Fax: 617-832-7000
pswain@foleyhoag.com

The Nominating Committee welcomes members’ suggestions for nominees for the offices of Chair-Elect, Vice Chair, Secretary, Financial Officer, Section Delegate to the ABA House of Delegates for a three-year term expiring in 2008, and four new members of Council for four-year terms expiring in 2009.
Contact Nominating Committee Chair Charles P. Baker.
Under the Section Bylaws, Anthony Figg, current Chair-Elect, will automatically assume the office of Section Chair on September 1, 2005.
The Section’s Business Session with Elections will be held Saturday, August 6, 2005 at the ABA Annual Meeting in Chicago. All Section members are invited to attend this meeting and vote.

 

Government Relations to Patents (Committee 105)

Justin Boyce and Bryan J. Sinclair, Committee Co-Chairs

Bryan Sinclair, co-chair of the Government Relations to Patents Committee, is organizing a panel titled “Mining Uncle Sam’s IP Portfolio: Strategies for Commercializing Government IP.” The discussion is slated for the Section’s 20th Annual Intellectual Property Law Conference, April 14-16, in Arlington, VA.
The panel will discuss the strategic legal and economic issues to consider in connection with a potential purchase or license of IP assets from the United States government, and the future commercialization of those assets.
Sinclair, an IP litigation partner in the Palo Alto office of Dechert LLP, will be joined in the panel discussion by Richard Ostiller, a financial consultant and IP damages valuation expert with Navigant Consulting, and Kathi Kedrowski, another financial consultant with extensive experience in the area of IP valuation in the Chicago office of Ernst & Young.
For more information about the planned program, contact Bryan Sinclair at 650-813-4874 or bryan.sinclair@dechert.com.

Ethics and Professional Responsibility (Committee 502)

Carol M. Langford and John Steele, Committee Co-Chairs

The Ethics and Professional Responsibility Committee is in the process of finalizing a report prepared by Carol M. Langford, Chair. Ms. Langford did this report on her own as part of her writing responsibilities as an adjunct professor of law at the University of San Francisco School of Law. The report will be circulated among committee members for their comments.
The report started as a research project to discover if there was a typical profile of an IP attorney and their alcohol and drug use (both prescription and non-prescription). Ms. Langford and her staff worked long and hard to find information specific to IP lawyers, but came across little, if any. They developed a survey in an attempt to gather the missing information, and got some interesting results. First of all, the people who responded were overwhelmingly young lawyers and lawyers at about retirement age. Lawyers in their 40s and 50s did not respond in as great numbers. Not all of the results will be printed here, but suffice it to say that IP lawyers – at least those who answered the survey – do not have real substance abuse issues. They are not always happy with the money they make, and are more likely to be dissatisfied with life in general if they are divorced and in their 40s. Ms. Langford believes that if an IP lawyer is going to have a substance abuse issue, that lawyer will generally be in his or her 40s or 50s, and divorced.
This is in contrast to non-IP lawyers, who have three times the normal rate of alcohol and substance abuse issues than the general population. This report thus may be the first step in lowering the malpractice insurance coverage rate for IP lawyers, a cost that is driving out small firm and solo practitioners from the field. This is because many discipline cases involve some type of alcohol or drug abuse.
The Committee has also prepared a conflicts analysis Committee Report that was finalized in draft form at the end of November.

Minorities and Women in the Profession (Committee 504)

Philip G. Hampton, II and Yoncha L. Kundupoglu, Co-Chairs

The goal of the Committee on Women and Minorities in the Profession this year is to increase participation in the Section by women and minorities who are already members of the Section and to increase membership by women and minorities in general.
To achieve our goals, the committee is in the process of assembling a nation-wide list of “state membership coordinators.” The goal is to have at least one coordinator per state. The Committee is currently seeking volunteers to become state membership coordinators. Those who volunteer to be state membership coordinators will be sent materials by e-mail about the Section and an e-mail invitation to join the Section. State membership coordinators will be asked to forward these materials by e-mail to women and minorities in the profession who are not yet members of the Section and encourage them to join the Section and sign up for a committee.
It is anticipated that, during the annual and other meetings, state membership coordinators will gather to socialize at least once during Section meetings when there is no formally organized Section event. The informal gatherings will be open to anyone who would like to come so that the coordinators can network among themselves and others who attend the meeting.
A list of those who agree to be coordinators will be assembled and distributed to state membership coordinators for use as a networking reference tool. Being a state membership coordinator will be an easy way to get involved in the Section, meet other members of the Section, and begin participating in a new, exciting, and diverse network of IP professionals. Hopefully it will be fun too!
Contact committee chair Yoncha Kundupoglu at YLKundupoglu@HHLaw.com if you would like to be a state membership coordinator or if you have any questions.

Pro Bono (Committee 509)

Stephen C. Swift, Chair

The Committee on Pro Bono Matters has a listing of Intellectual Property Law Pro Bono Resources available in the United States at www.abanet.org/intelprop/probono.html. This is a listing of entities that provide free or low-cost legal assistance in intellectual property law matters to persons of limited means and/or to non-profit organizations. It is broken down by the state in which the entities are located. Included for each entity is its name, contact person, telephone number, types of IP services offered, eligibility criteria, regions covered, fees charged, and usually its postal and e-mail addresses, fax number, and website.
If any entity in the United States providing pro bono legal assistance in intellectual property law matters is not listed, but wishes to be listed, and you are authorized to act on behalf of the entity, please contact the Committee Chair, Stephen C. Swift, by telephone at 703-418-0000 or by e-mail at steve@swift.law.pro. If your entity is already listed, but information needs to be updated, please also contact Mr. Swift.

Computer Programs (Committee 701)

Antoinette M. Tease, Chair

The Computer Programs Committee has a tremendously active membership, with committee activities ranging from developing ABA policy to providing case law updates to publishing articles. Kelly Hyndman of the law firm Sughrue Mion, PLLC in Washington, DC, is working with Committee Chair Toni Tease on a position paper and proposed resolution relating to the applicability of Section 271(f) of the Patent Act to software. Hilary Pearson with the firm of Bird & Bird in London and Thomas Jackson with the firm of Phillips Nizer in New York City are heading up a subcommittee that will report to us on European issues relating to computer programs, including the patentability of software in Europe and the EU Directive on Privacy and Electronic Communications.
Mr. Jackson has also volunteered to write an article on software patents in the U.S., and he and Ms. Tease may be working together to develop a presentation on software patents for the 2006 Annual Intellectual Property Law Conference. Steve Greenberg with the firm of Christopher & Weisberg in Ft. Lauderdale, Florida, has teamed up with Brian Buchheit in the Ft. Lauderdale office of Akerman Senterfitt to provide a case law update for the midwinter report. Joel McTague with the firm of Frank Weinberg Black, PL in Plantation, Florida, chairs the subcommittee on anti-spyware legislation. Mr. McTague is working with Don McGowan, Chair of the New Information Technologies Committee, on an article relating to anti-spyware legislation. The Computer Programs Committee currently has 43 active members.

Committee Chair Appointments Open for 2005-2006

Section members interested in being chair or co-chair of a committee for the 2005-2006 Association year are invited to express their interest to Chair-Elect Tony Figg, efigg@rothwellfigg.com, with a copy to Section Director Betsi Roach, at roachb@staff.abanet.org.

Reminder: Turn in Your Committee Preference Forms

For the new Association year, 2004-2005, the Section of Intellectual Property Law is cleaning its membership rosters. All Section members are encouraged to join and actively participate in the committee activities of the Section. The committee form may be found at www.abanet.org/intelprop/bulletin/committee_form.doc.

Discounted IP Law Publications

During the month of December, WorldTrade Executive, Inc., is offering its intellectual property law publications to ABA members at significant discounts. WorldTrade publishes numerous periodicals and special reports on international business law and regulation. To take advantage of this offer, please visit www.wtexec.com/aba or call 978-287-0301 and mention code BS127I.
Global Intellectual Property Asset Management Report is an essential tool for attorneys with responsibility for planning their company or client’s IP strategy. This vital monthly report will help you to anticipate change and be prepared to respond to proposed and adopted international legislation and regulations affecting trademark, patent, and intellectual property assets. The report provides valuable advice on structuring international alliances, licenses partnerships and other marketing arrangements to fully exploit IP. Regularly $659 for 12 monthly issues. During December 2004, just $469 for ABA members. Save $200.
Intellectual Property Law in the European Community, which includes contributions from 24 leading intellectual property attorneys throughout Europe, covers the fundamentals of intellectual property protection law and practice in each of the 25 member countries of the European Union. Each country chapter covers patents, designs, copyright, trademarks, and confidential information; discusses the extent of harmonization of national legislation with that of the European Union; and identifies the countries’ participation in relevant international treaties and conventions. A separate chapter looks at the achievements of the EU in implementing a number of Community-wide laws and its ongoing efforts to promote harmonization in the area of intellectual property protection. Regularly $349. During December 2004, just $269 for ABA members. Save $80.

2003-04 Annual Report Available This Month

The 2003-04 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 iplaw@abanet.org and request the 2003-04 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 received by January 31, 2004.

Mark Your Calendar—

Practical Tips on Intellectual Property Law
April 13, 2005
Crystal Gateway Marriot Hotel
Arlington, VA

20th Annual Intellectual Property Law Conference
April 14-16, 2005
Crystal Gateway Marriot Hotel
Arlington, VA

2005 Summer IPL Conference

June 22-26, 2005
Palace Hotel
San Francisco, CA