Chair's Bulletin
VOL. 8 NO. 6 FEBRUARY 2004
From the Chair
Section
Energizes Meetings and Advocacy
Robert W. Sacoff
Section Chair, 2003-04
Our Section continues to be busy and effective in advocating the
interests of the intellectual property bar. In the January Bulletin,
I reported on the Section policy adopted through the hard work of Chris
Steinhardt's special committee and our Section's Council. I am pleased
to provide an updated report that our Section has received authority
to communicate its views to Congress, and has sent the following letter
to Senator Orrin Hatch, Chairman of the Senate Committee on the Judiciary,
which has jurisdiction over intellectual property matters.
An electronic copy of this letter is available at www.abanet.org/intelprop/hatch.doc
Dear Mr. Chairman:
On behalf of the American Bar Association Section of Intellectual Property
Law ("the IP Law Section"), I write to express our opposition
to a provision in the Conference Report on H.R. 2673, the Consolidated
Appropriations Act, 2004, that would prohibit the use of funds appropriated
by the Act to issue patents on claims directed to or encompassing a
human organism. Popularly known and referred to herein as the "Weldon
amendment," the provision originated as a House amendment to H.R.
2799, the Departments of Commerce, Justice, and State, the Judiciary,
and related agencies
Appropriations Act for the fiscal year ending September 30, 2004. It
now appears as section 634 of Division B of the Conference Report on
H.R. 2673, Consolidated Appropriations Act, 2004. The Conference Report
has been adopted in the House, and will be the first order of business
when the Senate returns for the 2nd Session of the 108th Congress on
January 20.
The ABA's IPL Section opposes the Weldon amendment on both procedural
and substantive grounds. We oppose the amendment on procedural grounds
because we do not believe that patent laws should be modified through
indirect means such as the funding restrictions contained in the Weldon
amendment. Changes to basic principles of patent law, such as those
in the Weldon amendment restricting patentable subject matter, should
only be adopted after hearings and other appropriate consideration by
the Senate and House committees with jurisdiction and subject matter
expertise, namely the Senate and House Judiciary Committees. The truncated,
unsuccessful 11th hour attempts on the House floor and in the Conference
Committee to address issues of ambiguity and possible unintended over
breadth of the Weldon amendment underscore the shortcomings and dangers
of proceeding other than through regular legislative order on such matters.
We also oppose the Weldon amendment on substantive grounds, because
we do believe that the patent law should not be used for the purpose
of discouraging or prohibiting activity that may be regarded as objectionable
on grounds unrelated to patent law. The scope of patentable subject
matter is, and should remain, a determination to be made by application
of universal principles spelled out in section 101 of title 35, U.S.
Code. A patent merely gives the patent owner the right to exclude others
from practicing the patented invention, and does not give the patent
owner-or anyone else-any affirmative right to practice the patented
invention.
In June of 2002, when an amendment similar to the Weldon amendment was
proposed in the Senate, you expressed agreement with patent experts
"who do not believe that changing the patent law is the appropriate
vehicle for exercising governmental control over the multitude of issues
relating to cloning. . . It would be a big mistake to leave the important
broad societal moral, ethical, and public health issues to PTO experts
applying technical patent laws."
We believe that the principles that you articulated at that time are
applicable to the current amendment, and that the scope of patentable
subject matter should not be redefined, either directly by permanent
legislation or indirectly through fund restrictions such as the Weldon
amendment, to regulate conduct that should be governed by laws other
than patent laws.
We recognize that, given the parliamentary circumstances under which
the Conference Report will be considered, the opportunity for meaningful
opposition to the Weldon amendment is very limited at this time. We
nonetheless wanted you to know of our con-cerns and opposition, especially
in view of the fact that the Weldon amendment is a temporary measure,
and the issues involved may be presented again in the near future.
Respectfully submitted,
Robert W. Sacoff, Chair
Also since our January Bulletin, our Section has jointly authored comments
on the proposed revisions of the Antimonopoly Act of Japan, together
with the ABA Sections of Antitrust and International Law. In the commentary,
we stated the IP bar's opposition to the application of the "essential
facilities" doctrine to intellectual property. The essential facilities
doctrine in the United States is a form of compulsory licensing occasionally
applied to physical property or facilities when lack of access results
in an anticompetitive situation. Through the hard work of Ed Filardi
and the Section's Antitrust Matters Committee #409, which he chairs,
and the careful deliberation of our Section Council, we successfully
concluded delicate negotiations with the other Sections to produce a
report acceptable to all. A request has been circulated to other ABA
Sections and entities seeking authority to communicate the positions
to the Japanese authorities. If approved, the commentary will be posted
shortly on the Section website.
Phil Swain, Chair of the Section's Federal Practice and Procedure Committee
#601, and his committee are studying the proposed new ABA Standards
on Electronic Discovery which have been promulgated for comment. If
anyone is interested in this subject, please contact Phil to become
involved in that project.
Carol Langford reports later in this Bulletin on another highly important
and time-limited initiative to study and comment on the recent USPTO
Ethics Rules Revisions Package concerning the revisions of the USPTO
Code of Professional
Responsibility and imposing mandatory CLE requirements on lawyers practicing
before the Office. This commentary will be discussed with Council at
the Section's Midwinter Meeting in Rancho Mirage, California, along
with reports by Chair-Elect Bill LaFuze on his Task Force on Patent
Improvement and Harmonization, and Vice-Chair Tony Figg on his Task
Force on Long Range Strategic Planning and Implementation.
Our Midwinter Meeting will be attended by a number of honored guests
including Jon Dudas, Act-ing Director of the USPTO, ABA Executive Director
Bob Stein, and representatives of WIPO, AIPLA, INTA and IPO. Among the
topics to be discussed will be possible amendment of the Federal Trademark
Dilution Act, and a possible amicus curiae brief in the trademark case
recently granted certiorari by the Supreme Court (KP Permanent Make?Up
Inc. v. Lasting Impression), involving the elements necessary for establishing
the fair use defense. The Midwinter Meeting will also include the traditional
committee reports on other ongoing activities and projects. As noted
earlier, it will include sub-committee chairs this year for the first
time, along with a breakfast meeting on the subject of "Women in
IP Law."
I conclude with a sense of pride and sincere thanks to all the Section
members who have given their time so generously to enable us to accomplish
a great deal even by now, roughly half-way point through the ABA "year."
It is not too late for additional Section members to become involved
in ongoing or new Section projects, so I repeat my call to action and
invite you all to contact me or our Section Director Betsi Roach if
you would like suggestions or help in getting more involved.
Committee News
Ethics and Professional
Responsibility
(Committee #502)
Carol Langford
Committee Chair
Committee #502 of the ABA's Section of Intellectual Property Law is
hard at work reviewing the complex 122 page proposed rule change package
published by the PTO in the Federal Register with an extremely tight
February 10, 2004, response deadline. They worked all through the holidays
to comply with the PTO deadline for comments.
The PTO's proposed rule changes would apply to their general rules,
including recognition of lawyers to practice before the PTO, their disciplinary
rules and the Rules of Professional Conduct, and would also impose mandatory
CLE requirements for the first time. Since the ABA recently revamped
their Rules of Professional Conduct, it is probably a good idea that
the PTO is reviewing their Rules and attempting to conform, in many
cases, to those Rules. The Ethics Committee has transmitted its draft
comments to Ron Myrick, Co-Chair of Committee 103, USPTO Affairs - Patents
for that committee's input. It is contem-plated that the consensus draft
comments will be submitted to the Section Council for discussion and
approval at the Section's Midwinter Meeting in Rancho Mirage, Califor-nia,
on January 25. The comments in final form will then be circulated to
other ABA Sections and entities with a request for authority to submit
them to the USPTO.
Hats off to all the members of the Section of Intellectual Property
Law who set aside a substantial portion of their time during the new
year to prepare a thorough analysis and commentary on this extremely
important rules package.
ABA and AIPLA Meet the Trademark Office
Keith Sharkin
Section Member
The Committee on PTO Affairs-Trademarks (Committee 203) is planning to host an "ABA and AIPLA Meet the Trademark Office Day" in early March 2004 in Alexandria, Virginia. This program will be a one-day event with interactive discussions between PTO officials and ABA members. Topics will include the implementation of Madrid Protocol at the PTO, the push toward electronic filings at the PTO, prosecution issues at the PTO, and practice before the TTAB. We anticipate participation from several senior PTO officials and Section members. Come meet and discuss these timely issues with officials from the PTO. More details to follow.
Women in IP Law
The Section introduces a new program called "Women in IP Law,"
which is designed to help facilitate communication among women Section
members. Join their listserv at www.abanet.org/scripts/listcomands.jsp?parm=subscribe/ipl-women.
The listserv address is IP_Women@mail.abanet.org.
Learn more about this Section membership benefit at www.
abanet.org/intelprop/ipl_women.html.
Submit any relevant articles or news events for posting on this page
to Julia Gillespie at gillespj@staff.abanet.org.
Georgetown University Law Student Outreach Program
As a new Section outreach program to law students, a "Lunch and
Learn" program is scheduled at Georgetown University Law School
in Washington D.C.
Space is reserved at Georgetown University's Law School on Thurs-day,
February 26 for the lunch hour (12:30 - 1:30p.m.).
The Section needs #3-4 people from the D.C. area to participate on a
panel discussing IP law and why it is an interesting field for students
to consider. Please contact Julia Gillespie at gillespj@staff.abanet.org,
or 312-988-6254, if you are interested in speaking at this program.
If you do not want to be on the panel, please feel free to join the
attendees for lunch and to help answer questions afterward.
Mark Your Calender for the 2004 Summer IPL Conference
The 2004 Summer IPL Conference is scheduled for the Four Seasons Hotel
in Toronto, June 16-20, 2004.
The conference will provide ample opportunities for continuing legal
education from the top IP practitioners in the field, as well as providing
opportunities to interact with fellow Section members on Section business
in committee meetings, and the Section Business Session. The Summer
IPL Conference will also provide tours, sporting tournaments, and other
networking and small-group educational opportunities. Mark your calendars
and bring the whole family.
Single/double rooms are $330 Canadian (approximately US $253 as of January
20). The phone number is 416-964-0411. Refer to the ABA Section of Intellectual
Property Law 2004 Summer IPL Conference to receive the conference group
rate at the hotel. On-line registration will be available in early February.
More information will be available in the March issue of the Chair's
Bulletin.
ABA Career Resource Center
Offers Professional Counseling
The Career Resource Center integrates ABA career information and creates
and offers online, in-print and in-person career resources. See www.abanet.org/careercounsel.
Offerings include practice area information and job search tactics.
A Tuesday job-search answer board is updated weekly.
See Section leadership attorney profiles at www.abanet.org/intelprop/careercounsel/profile/profession.html.
IPL People News
The Section is reviving a tradition of publishing professional notes on Section members. Submissions can be sent to Julia Gillespie at gillespj@staff.abanet.org.
Robert O. Lindefjeld (Section Council Member) was recently promoted to partner at Jones Day in their Pittsburgh office.
Section Profile:
Chris Steinhardt
Chris Steinhardt is currently chair of the Chemical Practice Committee
(#1004). He has also served as chair of a number of other Section committees.
He joined the ABA as a student while in law school in the 70's, and
has continued his membership over the years. In 1995, he became actively
involved in Division X committees.
Chris has been in both private practice and served as corporate counsel.
He is currently a partner in the San Diego and San Fran-cisco offices
of Knobbe, Martens, Olson & Bear, LLP. His practice focuses on the
biotechnology and the chemical arts, with emphasis on pharmaceutical
applications. He also does medical and mechanical device work. His practice
includes portfolio management, as well as patent drafting, prosecution,
appeal, interference and opinion work. His practice also focuses on
licensing and due diligence matters. His clients range in size from
Fortune 500 companies to start-ups in the U.S. and abroad.
The Section provides Chris the opportunity to keep abreast of the breaking
developments in the field of intellectual property law as well as prepare
reports that will help practitioners in the field. It also offers the
chance to shape the future of practice here in the U.S. and abroad due
to the ABA's influence on the legislative process and on Patent Offices
the world over. He enjoys the interaction with committee members, as
their ideas enrich his outlook on the practice of intellectual property
law.
Chris believes that the profession will continue to be a fascinating
and rewarding career for those individuals willing to extend the effort.
It will require practitioners to become more broadly based in both technology
and in law, and also require them to keep up with the breaking developments
in their technical specialties. The field has expanded greatly since
he started as a patent attorney, and he sees the trend continuing.
Pending Committee Chair and Division Chair Appointments
Active members of the Section who seek Section leadership opportunities should contact Chair-Elect Bill LaFuze at blafuze@velaw.com for information about potential positions as a Committee Chair or Division Chair for the 2004-2005 year.
