Mark T. Banner
Section Chair, 2002-03

Mid-Winter Meeting Shows Committees at Work

Committee 103, on PTO Affairs (Patents), is examining numerous issues, including possible changes to the calculation of patent term adjustment, electronic filing, current PTO Information Disclosure Statement practice, possible outsourcing of prior art searches to non-PTO organizations (as is likely to be proposed in the new PTO Strategic Plan), improvements to the re-examination process, and other aspects of PTO operations.

One focus of Committee 103, and virtually all of the patent practitioners active in the Section, is the likely shape of the soon-to-be-released revised PTO Strategic Plan and the proposed PTO Fee Increases, both of which are scheduled for release on February 3, 2003. (More about that important matter appears later in this Bulletin, and will appear in our next Section newsletter.)

Committtee 108 (Patent System Policy Planning) is reviewing the bona fide purchaser defense, the on-sale bar, patent harmonization, Markman claim construction issues, and appellate review of patent cases in view of Holmes v. Vornado, which determined that the appeal of a case in which the complaint itself does not allege a claim arising under the federal patent law does not rest exclusively with the Federal Circuit.

Trademark dilution was the focus of much Section activity this year, and is being studied closely by Committee 201 (Federal Trademark Legislation). The Section sponsored and wrote an ABA amicus curiae brief in Moseley v. Victoria Secret Catalogue, Inc, a case in which the Supreme Court heard oral arguments on November 12, 2002. Depending on the outcome of that case Committee 201 may recommend legislation on the subject.

A number of Committees in Division II (Trademarks) are looking at issues of trade dress, functionality, and the impact of the design protection directive of the European Union.

Committee 254, a special committee on trademarks and the internet, is following the application of the Anticybersquatting Consumer Protection Act (and the impact of the efforts by Ernest and Julio Gallo to obtain the domain name ernestandjuliogallo.com from "Spider Webs Ltd." (The district court ordered the domain name transferred, and the Fifth Circuit recently affirmed.) In addition it is reviewing the scope of in rem actions under that law.

As always the committees of Division III (Copyrights) are actively following the pending changes to copyright law, and the court cases interpreting current law. Committee 301 (Copyright Legislation) is watching bills that were introduced in the last Congress and may be introduced again.

In addition Committee 301 is following key cases interpreting the copyright law in the past year.

Committee 302 is planning on providing a summary of recent copyright cases having international issues, and Committee 303 will study and provide a report on matters concerning the Copyright Office, including a status report on the Copyright Office Electronic Registration, Recordation and Deposit System ("CORDS"). Committee 304 is reviewing the scope of protection afforded to useful articles under the Copyright laws, as well as the impact of "visual search" engines, and the relationship of this new technology to copyright law and fair use.

These are just a few of the issues being reviewed and considered by the committees this year. More information will follow in the next Chair's Bulletin, but all Section members are invited to review the list of committees and volunteer to become involved. Committees of this Section are involved in studying and evaluating all aspects of intellectual property law. All of the Section committees are listed on the Section's web page at www.abanet.org/intelprop/committees .

By Hayden W. Gregory
Section Legislative Consultant

In the January edition of the Chair's Bulletin, Section Chair Mark Banner reported on the intensive efforts he and his predecessor, Charles Baker, have been involved in on behalf of the ABA and the Section in recent months regarding Bush Administration proposals for the funding and operations of the USPTO. Last June, the focus of these efforts became a proposed bill that the Administration sent to Congress calling for substantial increases in patent fees. The Section Chair's January report described in some detail the flaws in that proposal, the most fundamental of which was a proposed fee structure that would raise about $200 million above the amount needed to operate the PTO, in order to provide revenue to be diverted to other uses. He also noted that the Section and other organizations were working together and with the PTO to develop a revised Strategic Plan and fee structure for the Office that would be constructive and acceptable.

The results of these efforts will be reflected in the PTO portion of the President's proposed budget for fiscal year 2004, which will be delivered to Congress on February 3, and in the action taken by Congress on that proposal. The situation regarding PTO funding is unique, and critical, in that not only is the status of funding for the Office in the upcoming fiscal year unresolved, but also unresolved is funding for the current year, which began last October. Following strong opposition from our Section, and other IP organizations, Congress declined to act on the Administration's June fee proposal, as well as on an earlier proposal for similar increases in the form of across the board surcharges on all patent and trademark fees. At the same time, absent a sufficient revenue base to support it, Congress refused to go along with the Administration's request for $200 million increase in PTO spending.

The House took no action on the PTO proposal. The Senate Appropriations Committee recommended that PTO funding be held at the previous year's level. At the same time, the Committee report had good things to say about Director James Rogan's action in developing a five-year Strategic Plan for the PTO, and suggested a willingness to increase funding for the Office if it can succeed in moving a fee bill to enactment.

Since the Department of Commerce was among the many agencies that were not provided permanent funding for the current year before Congress adjourned last fall, the PTO continues to be operating at last year's spending level. Permanent funding is expected to be provided in the coming days or weeks, as the new Congress attempts to promptly complete action on a single omnibus bill to fund all government agencies for the current year. In this regard, seen as a good sign is the introduction last week by the House Appropriations Committee of a bill to increase PTO funding by $110 million above the amount recommended in the Senate.

The next development in the longer range scenario of PTO funding and fees is likely to be seen on February 3, when the President's budget proposal for fiscal year 2004 will be made public. That proposal is likely to be tied to and accompanied by a new draft bill to provide across the board restructuring of PTO fees. As Section Chair Mark Banner noted in his column last month, the Section has reason to believe that the new fee proposal will address most of the defects that the Section found in the June proposal. In formulating a response, the Section leadership will be looking closely for these improvements and for assurances for an end to the practice of PTO user fee diversion.

Watch the Section website for up to date developments as these important events unfold.

Gregory J. Maier, Chair of the Section's Nominating Committee reports that the following candidates have been nominated for the 2003-year.

Chair-Elect: William L. LaFuze, Houston, TX. Mr. LaFuze currently serves as Section Vice-Chair.
Vice-Chair: E. Anthony Figg, Washington, DC. Mr. Figg currently serves on the ABA Standing Committee on Amicus Curiae Briefs and is a former Section Council Member.

Section Delegate to the ABA House of Delegates: Donald R. Dunner (three-year term ending in 2006).
Joseph M. Potenza, Washington, DC. (Secretary) and Mark K. Dickson (Financial Officer) were both re-nominated to their respective positions.

Members of the Section Council for a four-year term ending in 2007: Erich D. Andersen, Seattle, Washington, currently Co-Chair of Committee #701 (Computer Programs), Theodore H. Davis, Jr., Atlanta, GA, currently Chair of Division IX (Publications and Public Education), Mark Garscia, Pasadena, CA, currently Co-Chair of Committee #801 (Summer IPL Conference) and Linda S. Resh, Chicago, IL, currently Chair of Committee #404 (International Technology Transfer).

In addition to Chair Gregory J. Maier, Alexandria, VA, the Nominating Committee is comprised of Edward G. Fiorito of Dallas, TX and Barbara J. Grahn of Minneapolis, MN.

Elections for open positions will be held at the ABA Annual Meeting in San Francisco on Saturday morning, August 9, 2003 at the Four Seasons Hotel during the Section's Annual Business Meeting.

Additional nominations for any position may be made by petition signed by not less than 100 members of the Section, listed by their ABA ID number. The 100 names must be representative of at least three states and must indicate that the individual has agreed to the nomination. The petition must be sent to the Chair and the Secretary of the Section and must be received by these individuals not less than four months before the Opening Assembly of the Annual Meeting. The Opening Assembly will be held on Saturday, August 9, 2003.