Mark T. Banner
Section Chair 2002-03

Last June the U.S. Patent and Trademark Office (PTO) unveiled its five-year Strategic Plan and simultaneously announced it would seek, in conjunction with the Plan, massive structural changes in the fees for PTO services. The PTO Strategic Plan was ambitious in its goals but contained numerous provisions that were widely opposed in the patent community. The aspect of the proposed Strategic Plan would have had (as one option) patent applicants hire private (but certified) search firms to do the patent searching, rather than use examiners for searching. Another provision would have instituted mandatory Information Disclosure Statements. A third proposal would have encouraged deferred examination of patent applications. These were widely criticized by the patent bar, including our Section, in testimony before Congress.

The fee structure was even more controversial, generating a firestorm of protest that certain of the fees were punitive in nature and completely unrelated to the cost of the services provided. On the fee side, it was pointed out that some continuation applications could incur filing fees of $16,000 or more. Applications having 50 or more sheets of specification and drawings would have an additional fee “as prescribed by the Director.” One member wrote me calling these fees “obscene,” adding, “This needs to be fought now.” Another said, “I sure hope the Association will do its best to muster all of the opposition it can to this outrageous fee proposal.” A third added, “The proposal is somewhere between ridiculous and absurd.” One member even wrote, “I must quote Nero Wolfe: ‘Pfui!’. Otherwise, my comments are not suitable for inclusion in a family-oriented publication.”

Needless to say, your Association responded swiftly and vigorously. Along with other Associations (including AIPLA and IPO), the Section testified against the major aspects of the PTO Fee Bill. Faced with unanimous user-group opposition, the PTO proposal was “dead on arrival” on Capitol Hill. When Congress and the Administration failed to agree on a FY03 Budget before the November elections, the PTO was funded at current levels but told, by Congress, to (in essence) come up with a better plan that could meet with better user community acceptance.

At the same time the Associations were criticizing large aspects of the PTO proposal on Capitol Hill, they were engaging in formal and informal discussions with PTO officials on how to reshape the Strategic Plan and revise the fee increase proposals to make them acceptable. My last Chair’s Column highlighted some of those activities. Through the efforts of your Officers, and particularly your immediate past Section Chair Charles Baker, our views were expressed in meetings with OMB Deputy Director Nancy Dorn, Commerce Secretary Donald Evans, and OMB Director Mitchell Daniels, as well as a host of PTO officials. As a result of these efforts major changes have been made to the PTO’s pending revision to its Strategic Plan. Although as of this writing the final plan is not yet public, it is expected that many of the most objectionable aspects of the prior version will be deleted, including an elimination of statutory provisions providing for deferred examination. In addition, the Administration is in the final stages of completing its FY04 budget request to Congress, which is expected to include many aspects of the PTO’s prior fee proposals. Again, many of the most objectionable fee proposals that the Associations opposed are not likely to be included in the Administration proposal.

It is now time to see what the Administration will propose. A lynchpin of this Association’s position on PTO funding has been the elimination of user fee “diversion”– the practice by which the PTO receives (as appropriations from Congress) less than what the PTO collects in user fees. Although such “diversion” has been ongoing for some time, it was only during the Clinton Administration that the President’s proposed budget included diversion as an Administration request. The ABA IPL Section has asked the Administration, through all of the contacts mentioned above, to find a way to end diversion, and to not seek such diversion as part of the President’s budget request. The October 25 letter to OMB Director Daniels said, for example:

“We continue to urge, however, that ending diversion of PTO user fees be made a part of any legislation to increase fees…Since this practice began about 10 years ago, nearly $1,000,000,000 has been diverted in this way. If this money had been left in the hands of patent applicants and patent owners, much of it would have been invested in more research or in creating new jobs in new technology businesses… We continue to urge Congress to end the pernicious and self-defeating diversion of fees. It is simply bad policy to tax innovation, and we oppose it. “

By the time you receive this we will likely know whether the Association efforts have met their mark, or whether they have fallen on deaf ears. Association support for increased PTO fees will likely be predicated on the Administration (and Congress) addressing the diversion issue in a meaningful way. Soon we, the PTO user community will be asked to once again make our voice heard in Washington. Our voices could be raised in praise for the efforts to end diversion, or they may be raised as part of our continuing challenge to this pernicious tax on innovation.

Markman Revisited

My earlier Chair’s Column on the Markman decision and its progeny has generated a fair amount of letters and e-mails. Suggestions for changes, large and small, have come from all aspects of our membership, and one thoughtful letter was even received by a sitting federal judge! We welcome all of the suggestions, including those that question the wisdom of the Chair for even raising the issue. Our Committee 108 is studying the issue, and I will forward any of your ideas.

Former Section Chair Beverly Pattishall Dies

Beverly W. Pattishall, 86, a past Chair of the Section of Intellectual Property Law (then the Section of Patent, Trademark and Copyright Law) in 1963-64, died November 23, 2002.

Mr. Pattishall was a senior partner in the law firm of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, and a pioneer in the field of trademark law. He was widely recognized as the Dean of the American Trademark Bar and a leader of the International Trademark Bar.

He co-authored Trademarks and Unfair Competition (LexisNexis Publishing, 5th edition, 2002) and Trademarks and Unfair Competition Deskbook (LexisNexis Publishing 2001), which have become essential reference books for law students, as well as those practicing intellectual property law.

From 1955-1957, he served as President of   the International Patent and Trademark Association. He was a Director of The Chicago Bar Foundation from 1977-1983 and a Director of the U.S. Trademark Association (now known as the International Trademark Association) from 1963-1965.

He graduated from Northwestern University in 1938, and the University of Virginia School of Law in 1941. He served to the rank of Lieutenant Commander in the United States Navy and participated in both the Pacific and the European theatres of action during World War II.

Committee News

IPL Newsletter (Committee 901)

Lisa Dunner and Nick Setty,
Co-Chairs

IPL Committee 901 has had the benefit of inheriting a very well written and thoughtful publication.  Historically, the IPL Newsletter has attracted many leading intellectual property authors seeking to present concise points of view to a national forum of intellectual property practitioners. The incoming Chairpersons, therefore, were faced with the challenge of how to improve an already high quality publication.

With that backdrop, in its first quarterly teleconference, the Committee has considered and agreed that a number of additional recurring pieces or segments would enhance the IPL Newsletter, as well as ad hoc contributions by the Committee Members.  By the Spring 2003 issue, we have resolved to add two new columns to the content of the quarterly IPL Newsletter.  The first will be a column focused on those intellectual property issues that are most pressing and current from the perspective of in-house counsel, a so-called Corporate IP Column.  The second will be a column authored by the Co-Editors, the committee co-chairs, which may address important and timely cases, encapsulate interviews with a leading practitioner or judge, or perhaps occasionally provide “editorial” commentary.  These two new columns are geared toward entirely new genre of content for the IPL Newsletter.

Finally, by way of ad hoc contribution, we have agreed that committee members should take on a greater role in both original authorship and editorial work.  That is, by the Spring 2003 issue, committee members will author new articles on a regular basis to augment the existing stream of unsolicited articles and will take on editorial projects from the committee co-chairs.  These measures, again, are intended to enhance an already high quality publication with perhaps innovative content for a newsletter of this type.

2001-02 Annual Report Available Later This Month

The 2001-02 edition of the Section of Intellectual Property Law Annual Report will be available on the Section website by the end of January. Visitors to the website will be able to download the report, which will be in PDF format, or select portions of the report to print.

A limited number of CD-ROM versions of the Annual Report will be produced. A CD-ROM will be available free to Section members who specifically request one. To receive the CD-ROM version, contact intelprop@abanet.org, and request the 2001-02 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 made by January 31, 2003.

Spring IP Law Conference to Feature Prominent Speakers

All IP law practitioners are invited to register for The 18th Annual Intellectual Property Law Conference, April 3-4, 2003 at the International Trade Center in the Ronald Reagan Building in Washington, DC. Program brochures will be mailed in January and full program and registration information will be available on the Section website at www.abanet.org/intelprop at the end of January.

The conference will feature prominent speakers in the IP field, including chief officials of the U.S. Patent and Trademark Office; the U.S. Copyright Office, prominent law firm and industry representatives, and international IP law experts. Topics will cover the full spectrum of IP law, including two sessions for which Ethics CLE credit will be available for those in states requiring Ethics credit.

On Thursday morning April 3, the two general session tracks will cover Litigation Issues and Trademark Issues. Thursday afternoon the sessions will cover Patent Issues and General IP Issues.

Friday morning, April 4, three sessions will cover Patent Issues, Internet Issues and Ethics for Trademark and General IP Practioners. Friday afternoon the three sessions will cover Corporate Counsel Issues, Copyright Issues and Ethics Issues for Patent Practitioners.

Luncheon will be offered both days for $35 in the ITC Atrium. There will also be a welcome reception in the ITC Pavilion Room on Thursday afternoon, April 3, immediately following the afternoon programs. All participants are invited to this reception, hosted by Banner & Witcoff, Ltd.

A block of hotel rooms has been secured at the nearby J.W. Marriott Hotel for those needing overnight accommodations. Reservations at the J.W. Marriott are available at the special program rate of $213 single/double occupancy. Call 202/393-2000 or 800/228-9290, and mention the ABA IPL Section Annual Intellectual Property Law Conference to receive the discounted rate. The cutoff date for hotel reservations is March 10, but the room block fills up fast, so registrants are urged to make their hotel reservations early.

Individuals interested in participating in the teleconference sessions will find registration information for the teleconferences in the registration brochure as well as on the website.

If you need a brochure, and do not have internet access, call 312/988-5598.

The Annual Intellectual Property Law Conference is recognized nationwide as a leader in continuing legal education in the IP field, and traditionally draws a capacity attendance. Therefore, although the pre-registration deadline is March 19, individuals are urged to register early to ensure admission.

Young Lawyers Committee To Host One Day Program: Practical Tips on IP Law

This year’s 18th Annual Intellectual Property Law Conference will be preceded by a separate one-day CLE program, Practical Tips on Intellectual Property Law, Wednesday, April 2, also at the International Trade Center. This program is sponsored by the Young Lawyers Committee of the Section.

This year’s program will cover the broad spectrum of intellectual property law, and is aimed at the newer practitioner in the IP law field. It will be run in two tracks so participants will have a choice of sessions to attend. The one-day program will serve as a good primer for participation in the larger two-day Annual Intellectual Property Law Conference that follows on April 3-4, 2003.

A brochure for this program will be mailed in January and information will also be available on the Section website.

Summer IPL Conference Goes West to Coronado

Beautiful Coronado, off the coast of San Diego, California, will play host to the 2003 Summer IPL Conference, June 18-22, 2003, at the Loews Coronado Bay Resort.

Coronado and the Resort will form a scenic and relaxing backdrop for what promises to be a truly memorable conference, with a comprehensive mix of CLE programs, networking opportunities, committee meetings, social events, exhibits, sporting tournaments and tours.

Tours of interest to the whole family are tentatively planned for the San Diego Zoo, Balboa Park, La Jolla, Coronado, Old Town and Seaport Village, and the Foxploration studio in Rosarito, Mexico. A special evening at Sea World, with dinner, is also being planned.

In addition to the traditional golf and tennis tournaments, a choice of bicycling, kayaking, pedal boating, and jet skiing will also be offered.

For hotel reservations, call the Loews Coronado Bay Resort at 619/424-4000 or 800/81-LOEWS and refer to the ABA Section of Intellectual Property Law 2003 Summer IPL Conference. A special group rate of $239 single/double occupancy has been set for the conference.

Watch the Section website, www.abanet.org/intelprop for updates and complete information in March.

[1] See our Section testimony at www.abanet.org/intelprop/PTOFeeRestructuring071802.doc.