Charles P. Baker
Section Chair, 2001-2002

On December 26, 2001, the Sections Legislative Consultant, Hayden Gregory, and I met with James E. Rogan, the recently confirmed new Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. For those of you who do not know him, he was a Congressman for two terms from a Los Angeles area District that includes Hollywood studios, and he served on the House Judiciary Committee, which has responsibility for intellectual property laws. He therefore has a solid background in IP issues both from the interests of his constituents and his experience in the House.

In this get-acquainted meeting, Hayden and I began by mentioning the issues that seem to us and the Section to be of the highest importance the pendency problem and getting enough funds for the PTO to do its job promptly and with quality. Director Rogan is fully aware of the problems as well as the political challenges involved in solving them. Hayden and I feel that he will be working hard on these issues.

We also mentioned international harmonization as a current and difficult issue, and again we found him familiar with the subject and understanding of the issues and the difficulties in resolving them.

On other topics, he mentioned that the Office would be moving in the direction of more and more electronic filing and communication, which he understood the Section opposed. I responded that our opposition was not an absolute one, but rather a concern about moving too fast, before the Office or the public are ready to utilize it without mistakes. He was pleased to hear that the Section had opposed the addition of three political appointees to the PTO staff, which the Senate included in a "technical amendments" bill for the AIPA. (For a copy of our December 21 letter on this to Congressmen Howard Coble and Howard Berman, the Chairman and Ranking Minority Member, respectively, of the House IP Subcommittee, see the Section Advocacy page on our web site).

We concluded by saying the Section was always ready and willing to help him in any way we could. We have asked him to speak at out Summer IPL Conference in Philadelphia on June 27, and he has accepted.

In sum, Hayden and I believe the new Director has a good understanding of the issues and will be working hard in the interests of the intellectual property field.

Section Opposes New Political Appointments in U.S. PTO

Hayden W. Gregory
Section Legislative Consultant

In a December 21 letter to the Chairman and Ranking Minority Member of the House IP Subcommittee, IPL Section Chair Charles Baker expressed the opposition of the Section to a Senate proposal to create three new presidential appointments in the PTO. The proposal is contained a Senate amendment to a technical amendments bill, S. 320, which now being considered in the House.

The November 15 Senate amendment calls for the President to appoint in the PTO a Deputy Under Secretary of Commerce for Intellectual Property and Deputy Commissioner of the USPTO, a Special Counsel for Intellectual Property Policy, and a Deputy Commissioner for Legislative and International Affairs.

The Baker letter expresses concern that these changes in the top management structure of the PTO would unduly diminish the authority and responsibility of the Under Secretary of Commerce for Intellectual Property for the management and direction of the PTO, as called for in the American Inventors Protection Act (AIPA) that was enacted only two years ago. He noted that the Senate amendment provides for no role by the Under Secretary in the selection or removal of these three officers, which would reduce his ability to manage the Office. Most of the duties assigned to these new officers are currently being performed by the Commissioner for Patents, the Commissioner for Trademarks, and the Director of the Office of Legislative and International Affairs, all of whom are accountable to the Under Secretary under the provisions of the AIPA.

The Baker letter concluded with the observation that these significant changes in the management and direction of the PTO have not been recommended by the PTO, the Department of Commerce, or the Administration, are not the product of congressional hearings and oversight of the PTO, and are contrary to good management common sense.

A copy of the Baker letter to Congressmen Coble and Berman is posted on the Section website.

 FTC and Justice Plan IP and Antitrust Law Hearings

Hayden W. Gregory
Section Legislative Consultant

Two federal agencies, the Federal Trade Commission and the Department of Justice, are planning a series of joint hearings on the relationship between competition and intellectual property. The ABA Section of Intellectual Property Law has made a request that it be permitted to testify at the hearings, and preliminary indications are that this request will be granted.

On November 21, the FTC published a Federal Register Notice of public hearings beginning in January 2002 on "Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy." The hearings "will focus primarily on the implications of antitrust and patent law and policy for innovation and other aspects of consumer welfare," and will be co-hosted by the FTC and Antitrust Division of the Department of Justice. Since publication of the Federal Register Notice, the FTC has indicated that as many as 20 days of hearings may be held, beginning in February and continuing over a period of several weeks or months.

In a November 15 speech announcing the hearings, FTC Chairman Timothy J. Muris outlined the concerns and developments that prompted the FTC to schedule these hearings. Muris first referred to the 1970s as a period in which antitrust law enforcement perhaps did not show a proper appreciation for the need for intellectual property protection. He contrasted those developments with current conditions, in which he noted that many observers believe we are again at a crossroads in the relationship between the two doctrines, but that this time, "perhaps it is intellectual property doctrine that is not showing a proper appreciation for the innovation that competition may spur. They argue that overly broad grants, interpretations, or applications of intellectual property rights may unduly limit competition. Still others question whether antitrust doctrine and antitrust enforcers have yet found the right balance between the two doctrines especially in particular cases."

The Muris speech and the November 21 Federal Register Notice indicate that the hearings will examine the antitrust implications of a number of recent patent law developments. These include the growing number of patents generally and business method patents in particular, the role of the Federal Circuit and the impact of its decisions on antitrust law, and the antitrust implications of cross-licensing, patent pooling, and refusals to license by IP owners.

Copies of the November 15 speech by FTC Chairman Muris and November 21 Federal Register Notice announcing the hearings are posted on the Section website.

Specialization (Committee 507)

John R. Kirk, Jr., Committee Chair

What is going on out there? The silence concerning this issue is deafening. We are liaison to the ABA Standing Committee on Specialization, and they report that nothing is happening in the area of certification of any field of practice that is called Intellectual Property. If anything is proposed on the state level the committee would like to know about it.

The committees report in the Section Annual Reports, when there is one, has been remarkably uniform over the past decade. The exception was 1997-8 when the Section passed a resolution to participate with certification administered by the American Board of Legal Specialization to which the ABA Standing Committee refers certification request.

The Sections Specialization Committee appears to have no current practical purpose, and it is the committee chairs recommendation that it beAsunsetted@.

Lawsuit Challenges Diversion of PTO Funds

On August 7, 2001, Miguel Figueroa, an inventor from Puerto Rico, filed a class action law suit on behalf of all people who have paid fees to the U.S. Patent and Trademark Office in connection with patent applications or issued patents during or after fiscal year 1991. The complaint states that the diversion of PTO funds has caused the pendency of patent applications to increase from less than twenty months in 1990 to about twenty-five months in 2000, and estimates that the diversion will cause the pendency to increase to more than thirty-eight months by the year 2006. The suit alleges that the diversion of fees exceeds the limited grant of power and other constitutional limitations imposed by Article I, Section 8, of the U.S. Constitution, and is a direct tax in violation of Article I, Section 9, of the Constitution.

On December 6, 2001, plaintiff filed a First Notice of Additional Plaintiffs. The notice indicated that the Biometrics Imagineering, Inc., Illinois Technology Transfer, LLC, as well as several individuals were being added as co-plaintiffs.

If you would like more information about the lawsuit, please contact Bill Rowland, chair of Committee 155, at billr@burnsdoane.com, or see the website of the plaintiffs attorney: www.hhoglund.com, where numerous court documents on the litigation can be found.

Section Profile: Marylee Jenkins

Marylee Jenkins is a member of the Sections Council and a liaison to the ABA Section Officers Conference (SOC) Technology Committee.

Her practice concentrates on intellectual property matters involving the Internet and New Media, including domain name disputes, trademark and patent prosecution and litigation and Internet-related transactions and agreements.

She has been an active member of the Section since the mid-1990s. For her, the Section offers the opportunity to stay informed on current topics B she feels the Section does an excellent job of covering all areas of intellectual property law thoroughly and with insight. She is also attracted to membership in the Section because of the people B the Section affords members the opportunity to meet intellectual property practitioners from around the world at its numerous meetings throughout the country. Section members are leaders in particular areas of intellectual property law, the judiciary, and officials from the USPTO B so this is a major benefit.

Since being the Section's membership chairperson (1996-98), she is constantly amazed how the Section continues to grow B through more practitioners interested in the area, more international members getting involved, and the continued interest from law students. She sees the Section continuing to grow and diversify B and feels this is a good thing.

Since getting involved in the Section, she has found that the members and the leadership have been supportive and accessible B something you often don't find in other IP organizations. She believes this makes the Section unique and thus is an organization to which she truly enjoys devoting her extracurricular time.