William L. LaFuze
Section Chair, 2004–05

As I write this month’s letter, the Section is about to hold its midwinter leadership meeting at the Trump International Sonesta Beach Resort near Miami, Florida.
The Section’s Officers, Council, committee chairs, and subcommittee chairs will spend January 23-25 engaged in meetings and discussions to consider the current status of various projects currently underway in Section committees and task forces.
The weekend will begin on Saturday, January 22, when the Officers and members of the Long Range Planning Committee will meet with Sarina Butler, who is the associate executive director of the Communications Group of the ABA. The goal of this meeting will be to identify communication tactics and strategies to help implement the Long Range Plan goals. These goals emerged from the Section leadership’s long range planning retreat about a year ago.
Council will meet on Sunday, January 23, to consider the progress of many committee matters, as well as resolutions suggested by committees to be adopted as official positions of the Section.
On Monday and Tuesday, January 24 and 25, each Section committee will have its committee chairs and co-chairs report on the current status of all committee work to date since the last meeting, in August of 2004. These reports will permit each committee to educate the Section leadership about ongoing activities, including proposed resolutions presented to Council as candidates for official positions of the Section or the ABA. This forum will allow members of the leadership to share information and provide constructive criticism to each other, and to exchange ideas about the activities underway in the Section on a wide variety of projects.
The committee reports will be supplemented by the reports of three task forces.
The National Academy of Sciences (NAS) completed a four-year study of the U.S. patent system and delivered a final report last year. This report proposes comprehensive and sweeping substantive changes to the U.S. patent system. I appointed a task force, headed by Don Martens, to analyze the many changes proposed by NAS and to make recommendations to the Section Council in the form of a report. The report includes resolutions to implement those changes that are deemed by the Section to improve the patent system.
Don Martens also heads a task force that has studied recommendations by the Federal Trade Commission with respect to patent law reform. During the leadership meeting, Don Martens and task force members Bob Armitage and Gary Griswold will give an overview of the most significant of the proposals in the NAS and FTC reports.
I also appointed a task force, headed by Donna Bergsgaard, to study the issues raised by the Induce Act and the Grokster case, for which the U. S. Supreme Court has recently granted a Petition for Certiorari. New technology continues to pose new issues about 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, which did not pass in the last Congress, 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 issues involves determining the proper balance as a matter of policy as to those who should be liable for violations of copyright law who are not direct infringers. During the leadership meeting, this task force will deliver a report that highlights the sometimes-strong dichotomy of views between the two sides of this issue.
This meeting promises to provide the Section leadership with an opportunity to enhance and promote the many worthwhile and important projects that affect intellectual property law and the profession.
I would like to thank our Section leaders for their dedication and service to the intellectual property law bar.

Committee News

Minorities and Women in the Profession (Committee 504)

Yoncha L. Kundupoglu, Chair

To increase participation in the Section by women and minorities, the Committee on Women and Minorities in the Profession is assembling a nationwide list of “state membership coordinators.” The goal is to have at least one, and hopefully more than one, coordinator per state. The Committee is actively 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 that they meet who are not yet members of the Section, and encourage them to join the Section and sign up for a committee.
During our annual and other meetings, state membership coordinators and anyone who would like to join the group will gather informally to socialize at least once when there is no formally organized Section event. This will give the coordinators an opportunity to network among themselves and others who attend the meeting.
While the Committee now has 24 membership coordinators from 11 states, we are still seeking coordinators from the following states: Alaska, Colorado, Connecticut, Delaware, Maryland, Massachusetts, Nevada, New Jersey, Ohio, Oregon, Pennsylvania, Rhode Island, and Washington, among others.
Please 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.

Corporate Practice
(Committee 511)

Nancy Linck and
James C. Simmons, Co-Chairs

No one questions the proposition that more participation by corporate counsel would make the Section a more effective and satisfying experience for all. Yet the years go by and participation has not increased. Committee 511 has set out to change the trend of non-participation by corporate counsel – clearly a huge challenge.
Through exchanges of e-mails and teleconferences, participating members all agree that corporate counsel need more of a “voice” in the organization. Several ideas for making this happen are being considered, including: communication with and active participation in other committees, perhaps as corporate liaisons; presentation of programs of value to in-house counsel (June 2005 will be the first); and direct communication to the section leaders, i.e., Officers and Council members. 
It’s difficult to make changes without support, and, in this case, it’s difficult to get support without making changes. If you are in-house counsel and would like to see in-house counsel have more of a voice in what the Section does and supports, please join Committee 511 to “get on the bandwagon.” You can do so by filling out the committee form at www.abanet.org/intelprop/committee_registration.html or by contacting one of the co-chairs, Nancy Linck (LinckN@guilfordpharm.com or 410-631-6460) or Jim Simmons (jcsimmons@ratnerprestia.com or 610-530-8100). Please invite other in-house counsel with whom you work to join as well.   

Arbitration and Other Alternative Procedures (Committee 602)

William P. Atkins and
Richard P. Beem, Co-Chairs

Patrick F. McGowan, chair, Survey Subcommittee, developed an alternative dispute resolution survey for IP disputes, which was approved by the Committee and published in the August 2004 Chair’s Bulletin, in order to evaluate the effectiveness of various ADR techniques in IP cases. The survey asked for each respondent’s practice environment, followed by 12 questions in multiple-choice format. The survey results have been received and, as promised, are reported below. 
The survey makes it clear that although mediation and use of special masters are highly regarded by IP practitioners, the use of arbitration is not similarly favored.
 Of the 36 lawyers responding, 14 percent practiced in corporate legal departments, 54 percent in law firms, and 32 percent in “other” environments. 
The first section of the survey dealt with arbitration. Only 44 percent of those replying stated that their clients usually included mandatory arbitration in their IP licensing contracts. 56 percent replied in the negative. With respect to IP disputes, only 36 percent replied that if negotiations and mediations failed, that their clients sought to use arbitration to solve them. 64 percent replied in the negative.
For those recipients whose clients used arbitration, 38 percent replied that it would be more cost-effective than litigation, 21 percent that there was less risk, e.g. no collateral estoppel effect on the validity or ownership of the IP, 21 percent that resolution would be faster, 10 percent that arbitration would be more convenient, and 10 percent marked other reasons.
For those recipients whose clients have declined arbitration, 23 percent felt that litigation was more aggressive and reinforced the seriousness of the claim, 14 percent stated that for public companies, it inspired investor confidence that major IP rights were being enforced, 19 percent felt that the courthouse was the best forum, 24 percent said that in case of a bad result, strong appellate rights existed, and 10 percent specified other reasons. 
The second section of the survey involved mediation. 56 percent of the respondents use mediation of IP disputes before litigation; 44 percent did not. After the litigation has begun, 66 percent use mediation; 34 percent do not. When mediation is used, the timing is such that 37 percent is before discovery, 9 percent before dispositive motions and 20 percent before claims construction, 14 percent after claims construction, and 20 percent before trial but after the close of discovery.
When picking a mediator, 41 percent thought substantive expertise was the most important quality, whereas 59 percent thought good mediation skills were more important. As to classes of mediators, 24 percent favored former judges, 52 percent preferred attorney practitioners, and 24 percent wanted mediators from specialized panels, e.g. INTA, WIPO, AAA. 
The third section involved special masters. 53 percent of the recipients’ clients had used special masters, whereas 47 percent had not. In patent cases, 39 percent of clients preferred special masters to decide claims construction, whereas 61 percent did not. Finally, 81 percent thought it would be helpful if the Section published a list of mediators, arbitrators, and special masters who have demonstrated success in IP matters, whereas 19 percent thought a list was unnecessary.
The Committee would like to thank all those who responded to the survey.

Commissioner for Patents Announces Retirement
The following information was released by the United States Patent and Trademark Office:
Nicholas P. Godici, Commissioner for Patents, announced today that he will be retiring from the U.S. Patent and Trademark Office and will not be seeking reappointment to the Commissioner for Patents position. His term expires on March 29, 2005.
“It's been an honor to serve the USPTO and the patent community as Commissioner. I want to thank my colleagues in the office, especially members of the executive team, for their support and contributions during my term,” said Mr. Godici.
Under Secretary Jon Dudas noted, “I want personally to thank Nick Godici for his years of service to the USPTO. He is an outstanding public servant. Many important milestones have been reached during his tenure as Commissioner, most notably full automation of the patent application process.”
The Secretary of Commerce appointed Mr. Godici to the position of Commissioner for Patents in March 2000. He started in the USPTO in 1972 as a patent examiner and has held numerous management positions within the office. From January to December of 2001, he was the Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO.
During his time as Commissioner, the PTO has implemented complete electronic patent application processing; expanded the patent examination staff to deal with increased patent filings, implemented special pay and work-at-home programs that have reduced employee turn-over, and implemented initiatives to improve the quality of the patent examination process.

Section Reveals Continued Design Enhancements
With its new masthead, this issue of the Chair’s Bulletin displays the continuation of the Section’s design makeover. The new, streamlined approach to Section publications, e-mail transmissions, and eventually, the Section website, will help build a unified message of who the Section of Intellectual Property Law is and how it hopes to portray itself. This “branding,” in marketing terms, will give the Section a recognizable logo and overall image – for members, potential members, and other groups and organizations with which the Section interacts. Further design enhancements will be rolled out in the coming months. A strategic communications plan will also be implemented to improve communication with Section membership. Remember that your feedback is always welcome on how the Section can better serve you.

Mark Your Calendar—

Mediation and Arbitration of Intellectual Property Disputes
Co-sponsored with WIPO
March 30, 2005
United Nations Headquarters
New York, NY

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