Meetings

ABA Copyright Office Day will take place from 9:00 am to noon on January 12, 2004, at the U.S. Copyright Office in Washington, DC. This successful, informal session has been a highlight of our Section activities for many years, and is looked forward to by both Section members and Copyright Office officials. For details, contact Jessica Cohen, Vice Chair of Com-mittee #303, at 212-309-6764, or jcohen@morganlewis.com.

Our annual Section Midwinter Meeting will be held January 24 - 28 in Rancho Mirage, California. Traditionally, invitations have been extended to the Section leadership, including Officers, Council members, Division and Committee Chairs (many of whom are new this year). For the first time this year, we are extending invitations to Sub-committee Chairs as well. This will facilitate more face-to-face interac-tion and networking, goals identified in our Fall long-range planning re-treat. To promote more inclusion and collegiality in Section activities and leadership, we are also formal-izing a "Women in IP Law" breakfast, with the assistance of Council members Susan Montgomery and Kate Spelman.

In another "first" for our Section, and in close cooperation with Commissioner for Trademarks Anne Chasser, we are planning the inaugural ABA Trademark Office Day in early March. This will afford Section trademark lawyers an informal opportunity for an informational give-and-take with Trademark Office personnel with whom they deal on a regular basis. For more information, contact Jim Vana, Chair of Committee #203, at 414-297-5777, or jvana@foleylaw.com, or Keith Sharkin, at 212-556-2639, or ksharkin@kslaw.com.

Domestic IP Issues and Advocacy

We recently submitted detailed written testimony on the USPTO's proposed Patent Rules Revisions in accordance with the Office's strategic plan. Donna Meuth, Co-Chair of Committee (#103) Patent Office Af-fairs, led the study of the proposed revisions and the drafting of our Section's comments, as discussed further in her article below.

Jonathan Jennings, Chair of Committee (#201) Federal Trademark Legislation, has been working hard on outreach efforts with other ABA sections in preparation for our submission of the Section's Right of Publicity Report and Recommendation to the House of Delegates at its Midyear Meeting in February.

Finally, our Legislative Consultant Hayden Gregory reports below on the latest developments on the funding and fee diversion front, which we are following and participating in to the extent possible.

International IP Issues and Advocacy

The Section goals identified at the start of the year included a higher profile and a greater voice on international IP issues. In this realm, our International Coordina-tor Mike Meller reports below on the successful conference on comparative international trial practice in IP cases that we jointly held with AIPPI this Fall at Fordham University Law School.

Also following below is an article by Ed Filardi, Chair of our Antitrust Committee (#409), on the detailed commentary that the Section co-authored and submitted with three other ABA Sections on the EC Technology Transfer Block Exemption Amendments.

I can also report that Erv Basinski, a Subcommittee Chair in our International Patent Law Committee (#102), is spearheading a study and commentary on the European Community Software Patents Directive, which appears to present a number of issues for U.S. companies and IP lawyers.

Also, Donna Gies, Chair of our Computer Programs Committee (#701), reports on the U.S. Delegation to the Working Group on Electronic Commerce of the United Nations Commission on International Trade Law.

On the other side of the world, Section member Joe Rogers reports on the U.S. Ambassador's Roundtable that took place in Beijing, China, in November. Finally, our Section Chair spotlight this month features Elizabeth Chien-Hale, who among other activities is looking into a possible Section trip to China. In sum, this Bulletin illustrates Section activities which operate at a high energy level, and also fit harmoniously into our Section overall strategy.

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Committee News

Patent and Trademark Office Affairs - Patents
(Committee #103)

Donna Meuth
Committee Co-Chair

On September 12, 2003, the U.S. Patent and Trademark Office issued a Notice of Proposed Rulemaking entitled "Changes to Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan" (68 Fed. Reg. 53816). Public comments were requested. Committee #103 prepared comments, which were then submitted to the Office on behalf of the Section. The comments are available on the Section's website.

More specifically, the Section's comments addressed proposed changes in the following rules: (1) §1.4 Nature of correspondence and signature requirements; (2) §1.57 Incorporation by reference; (3) §1.105 Requirements for information; (4) §1.111 Reply by applicant or patent owner to a non-final Office Action; (5) §1.213 Nonpublication request; rescission of a nonpublica-tion request; notice of subsequent foreign filing; and (6) §1.291 Protests by the public against pending applications. Comments were also provided in support of changes to 37 C.F.R. § 1.705 Patent term adjustment determination.

One of the more controversial proposed changes relates to the additions to §1.105 and the ability of the Examiner to request information from applicants. The Office proposed to broaden examiners' investigative powers by adding to paragraph (a)(1) of §1.105 a provision that empowers examiners to demand from applicants "[t]echnical information known to applicant concerning the interpretation of the related art, the disclosure, the claimed subject matter, other information pertinent to patentability, or the accuracy of the examiner's stated interpretation of such items." The demands could be made in the form of interrogatories or requests for stipulations to which applicants may agree or disagree. The Section opposed the proposed rule for three primary reasons: first, it will not give the Office access to better information than current Rule 105; second it will burden both the Office and applicants; and finally it is subject to abuse by shifting the burden of showing patentability to applicants, contrary to 35 U.S.C. §§ 102 and 103. The proposed rule would be particularly onerous on pro se inventors.

Federal Trademark Legislation
(Committee #201)

Jonathan Jennings
Committee Chair

The Section has proposed the following recommendation for adoption as ABA policy at the ABA Midyear Meeting in February, 2004:

RESOLVED: That the American Bar Association supports the enactment of federal legislation to protect an individual's right of publicity to the extent the individual's identity is used for a commercial purpose in "commerce", as that term is defined in Section 45 of the Lanham Act, 15 U.S.C. § 1127, and to
prospectively preempt inconsistent state and territorial laws.

If the recommendation becomes ABA policy by being approved by the House of Delegates, the Section would then draft specific legislation to take to Congress.

By way of background, the right of publicity is a doctrine that for the last fifty years has protected individuals' identities, e.g., their names, images, voices, against unauthorized commercial use. Despite this history, at least twenty-two states still do not explicitly recognize the right, and even among those that do, the scope varies dramatically. For example, in many states, individuals' rights of publicity extend after their deaths, but there is no consensus on how long the right should continue and the terms range from 100 years to an undetermined amount of time under the common law. At least two states do not recognize post-mortem rights at all. Similarly, some states only protect individuals with some degree of fame while most others extend the right to average people.

In the Internet era, the right of publicity has outgrown its state-based origins. In bringing uniformity to the law, a federal right of publicity statute would aid businesses that conduct national advertising and individuals who cannot clearly discern their rights under the current system. Such a statute also would help to avoid some decisions that have unfairly squelched creative expression.

The Section itself has reached out for support of its Recommendation to many other Sections, Forums, Divisions and Bar Associations with voting rights in the House of Delegates. Although the Section already has received several commitments of support from these organizations, the effort to win additional support will continue until the actual vote in February. Part of the process involves convincing these organizations that in proposing this recommendation, the Section represents the interests of no particular interest group or industry. Instead, the Section offers the recommendation as a practical solution to the uncertainty every individual or group faces under the current morass of conflicting state rights.

For more information about this recommendation or to help in gaining support for its passage in the House of Delegates among other member entities within the ABA, please contact Committee #201 Chair, Jonathan S. Jennings, at jsj@pattishall.com.

Computer Programs
(Committee #701)

Donna H. Gies
Committee Chair

The U.S. Delegation to the Working Group on Electronic Commerce of the United Nations Commission on International Trade Law (UNCITRAL) is interested in hearing from IP practitioners as they work toward a draft convention on electronic contracting. If you are interested in participating please contact Bill Luddy at wjl@rh.edu to have your name and email address placed on a listserv for notifications of upcoming conference calls. Also, please contact Donna Gies, Committee #701, at donna.gies@thomson.com to facilitate providing information about the project to the Section.

Antitrust Matters
(Committee #409)

Edward V. Filardi
Committee Chair

The Section, through efforts of Committee #409, cooperated with the Sections of Antitrust Law, Business Law and International Law and Practice, to submit joint comments ("Joint Comments") on November 25, 2003 on the Draft Commission Regulation on the Application of Article 81(3) of the EC Treaty to Categories of Technology Transfer Agreements ("Draft Regulation") and the Draft Commission Notice on Guidelines on the Application of Article 81 to Technology Transfer Agreements ("Draft Guidelines").

The comments are posted at www.abanet.org/antitrust/comments/ttber.pdf.

On October 3, 2003 the European Commission released for public comment draft measures regulating the application of Article 81 of the EC Treaty to technology transfer agreements. The measures were designed to implement the modernization of antitrust enforcement with Regulation 1/2003, which ended the prior authorization procedure for exempting agreements under Article 81 and transferred much of the responsibility for the enforce-ment of competition law to the member nations.

The Joint Comments generally welcomed the effort to modernize and clarify the law. They also applauded the recognition that licensing is pro-competitive and benefits consumers by reducing costs and introducing new products as well as promoting greater investment in research and development by increasing expected returns.

The Joint Comments did express a number of concerns including the legal uncertainty that will result from using market share thresholds over the life of a long term development and commercialization agreement or in a dynamic and uncertain technology-driven market. Agreements that become successful may become unlawful as a result, forcing renegotiation. Moreover, measuring market share is very difficult and such measurements have limited utility, as market definitions often change very rapidly. To remedy this deficiency, the Joint Comments urge the Commission to adopt safe harbors based on the number of independent sources of technology.

The over-inclusiveness of the "hardcore" provisions was also noted. The Draft Guidelines and Regulations fail to recognize that reciprocal royalty, threshold royalty, market, territorial or customer allocation schemes, and limited right to use provisions more often than not enhance competition.

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USPTO To Be Funded At
$1.22 Billion in FY 04

Hayden W. Gregory
Section Legislative Consultant

On November 25, congressional appropriators filed a conference report which contains agreement on an omnibus funding bill that includes funding for the USPTO in fiscal year 2004 (which began on October 1, 2003). PTO funding is contained in the Commerce Justice State Appropriations Act, which has been combined with six other appropriations acts. The final bill, named the Consolidated Appropriations Act, was passed in the House of Representatives, but controversy over a number of issues contained in the package prevented Senate passage before Congress adjourned for the year. The Consolidated Appropriation will be the first order of business in the Senate when Congress reconvenes on January 20. It is not expected that the agreed upon level of funding for the PTO will change as a result of this delay.

The Consolidated Appropriations Act provides $1, 222,460,000 of funding for the PTO in FY 2004. This is $16 million below the House passed bill, and $5 million above the funding recommended in the Senate. The FY 2003 PTO appropriation was $1,182,000,000.

The bill provides that this funding will be allocated entirely from user fee revenue collected during the year. The PTO has recently projected user fee revenue of about $1.2 billion in FY 2004. If this prediction proves true, little or no diversion will occur. (The House passed bill called for $100 million to be derived from fee collections withheld in earlier years. That approach would mean that up to $100 million in FY 04 fee collections could be diverted.) If collections are less than $1,222,460,000, the bill calls for reducing the appropriation to the amount collected.

This appropriation does not take into account any additional revenue that would be derived from the enactment of H.R. 1561, the bill to increase user fees that is pending in the House. If H.R. 1561 had been enacted by October 1 and in effect for the entire fiscal year, the bill was expected to raise an additional $200 million in FY 04. The President's budget request asked Congress for a contingency clause in the appropriation, making this additional revenue automatically available if the fee bill is later enacted. However, Congress refused that request. Additional funding above the $1.22 billion that could be available from increased fees should be provided to the PTO without a further appropriation if H.R. 1561 is enacted and if the anti-diversion provision added by the Judiciary Committee is retained. Absent the enactment of such a provision, additional fee revenue would require an additional appropriation before it would be available to the PTO.

Proposed Weldon Ban on Patenting Human Organisms

The Consolidated Appropriations Act also contains a provision that would prohibit the PTO from using any of the appropriated funds to issue patents "on claims directed to or encompassing a human organism."

This prohibition was originally adopted by the House on July 22 as an amendment to H.R. 2799, the Commerce, Justice, State Appropriations Act.
Comments made in the House on November 21 by Congressman Dave Weldon, the author of this amendment, are available at www.abanet.org/antitrust/comments/ttber.pdf. Weldon's remarks are accompanied by a copy of a letter of support for the amendment that was sent to Congress by PTO Director Rogan on November 20. See a copy of a 1987 policy statement by PTO Commissioner Quigg at www.abanet.org/ intelprop/weldon_remarks.doc. This statement is said to be the basis for the statement in Rogan's letter that the Weldon amendment is consistent with long-standing PTO policy.

The Council and relevant committees of the IPL Section are studying the amendment, with a view toward submission of comments to the Congress on the provision. Since it is structured as a limitation on the use of Fiscal Year 2004 funds, the Weldon amendment, unless extended, would cease to be effective at the end of that year.

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Lamar Smith to Speak at Spring IP Law Conference

Congressman Lamar Smith, Chairman of the House Judiciary Committee Subcommittee on Courts, the Internet, and Intellectual Property, will speak at our annual Spring IP Law Conference in Washington D.C.

Register for The 19th Annual Intellectual Property Law Conference, April 1-2, 2004 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 is available at www.abanet.org/intelprop/
spring2004/html.

The program is recognized nationwide as a leader in continuing legal education in the IP field.

The conference will feature prominent speakers in the IP field. 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.

This year the Conference welcomes the participation of the ABA Section of Science & Technology Law as co-sponsor of several sessions. Members of that Section are invited to attend at the IPL Section member rate.

The conference will also incorporate seven narrowly-focused Special Interest Sessions. Special Interest Session topics will include "Things Counsel Should Know When Responding to Requests from Accountants and Transaction Counsel"; "Electronic Filing"; "Negotiating Technology Licenses In Europe"; "Pharmaceutical Balance of Powers: Do the Hatch-Waxman Reforms Restore Equilibrium"; "Electronic Discovery"; "Economic Aspects of IP Litigation"; and "Accessing Embedded Software: Competition, Infringments and the DMCA". See the program schedule for the days and times of these sessions, and sign up on the registration form.

On Thursday morning April 1, the three general session tracks will cover "Bench and Bar Panel Discus-sions: Patent Litigation Hot Topics and Practical Tips," "Trademark Litigation - Where Do We Go From Here?" and "Open Source: From Software to Genetics."

Thursday afternoon sessions will cover "Patents are a Worldwide Business - International Patent Issues", "Madrid Protocol: The First Six Months- Boom or Bust?" and "The Intersection of Antitrust and IP."

Friday morning, April 2, three sessions will cover "Hot Topics Facing the In-House Counsel;" "Downloading Drama: Strategies for Copyright Protection in the Digital Era" and "Ethical Pitfalls for the Unwary Patent Lawyer: We'll Tell You How To Avoid Them."

Friday afternoon the two sessions will cover "Legal Ethics in Trademark Law: The Domestic and Inter-national Dimensions" and "Recent Developments in Patent Law - What You Need To Know."

Luncheon will be offered both days for $40. A guest luncheon speaker will be featured each day. There will be a welcome reception on Thursday, April 1, immediately following afternoon programs.

Individuals who cannot attend in person but are interested in participating in teleconference sessions will find registration information for select sessions in the registration brochure as well as on the website.

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 Hotel are available at the special conference rate of $222 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 1.

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

The pre-registration deadline is March 17 for discounted rates.

Foreign Trials Program Reported A Success

Michael N. Meller
International Activities Coordinator

The Section, in conjunction with AIPPI-US, co-sponsored a program at Fordham Law School with the ABA Section of International Law and the NYIPLA on October 3-4, 2003 presenting the trial of a case in the courts of the UK, Germany, Italy, Japan and China.

The trial of the same case involving patent, trademark and copyright issues before active judges of these jurisdictions and tried by experienced counsel from these countries was a great success and was received with much acclaim by the audience in Fordham's Amphitheatre in New York City.

While the trial illustrated the differences, although the proceedings were all in English, what was perhaps most surprising were the parallels between the handling of these cases before the respective courts.

This type of programming, presented in the U.S. IP world only for the second time, showed how harmonization even in court procedures is being gradually accomplished.

Grateful thanks are due to the participants from around the world and particularly the judges who came and in the case of Japan, three judges, all eager to share with our Section how they handle court proceedings.

Beijing Ambassador Hosts IPL Roundtable

Joseph Rogers
Section Member

The Second Annual IPR Roundtable was held by U.S. Ambassador to China, Clark T. Randt, Jr. in Beijing on November 18. Invitees to the meeting included the Deputy USTR Josette Sheeran Shiner and U.S. ITC Chairman Deanna Tanner Okun, as well as other Embassy Staff and members of the Washington delegation. The U.S. government representatives, Chinese government representatives and U.S. industry representatives gave presentations.

The meeting opened with an introduction by the Ambassador and followed with a presentation by the USTR office, U.S. ITC, USPTO, US-DOJ and other government representatives followed that summarized earlier government-to-government meetings with the Chinese.

This was followed by presentations from representatives of the Chinese government who spoke of the improvements made in the last few years in the laws and enforce-ment. In the afternoon, without the presence of the Chinese government representatives, copyright related organizations such as the MPAA and RIAA as well as the trademark organizations like INTA and Quality Brands Protection Committee (QBPC) and others from IT and drug industry lobbying groups made frank presentations on a range of problematic issues.

The Ambassador intends to help keep the pressure on the Chinese government to address issues identified during the roundtable.

Vice Premier, Ms. Wu YI gave the luncheon speech, which covered Chinese government work on IPR issues and also expressed determination by the government to ensure the protection of intellectual property rights in China. She has been designated by Premier Wen Jiao Bao to head a Task Force on the issue. The government picked her to take charge of the SARS problem after the initial stages and has negotiated the bilateral IPR agreements with the U.S. in the past.
China is pushing its industries toward a knowledge-based economy and they realize the need to solve the IP rights protection problem to support that push.

Section Profile:
Elizabeth Chien-Hale

Elizabeth Chien-Hale has chaired the Section's Committee (#109) on Cooperation with Foreign Patent Offices the past two years; she is also the coordinating member of the China Trip Task Force, which is currently exploring the possibility of a Section trip to China in 2004.

Elizabeth joined the ABA as a student member while in law school, and continued as a member after she started to practice law as an associate in large law firms. She became actively involved with Committee #109 due to the international nature of her practice while she was working in Hong Kong. Upon leaving Hong Kong, she relocated back to California to start her own practice, including starting an organization focused on IP issues in Asia - the Institute for Intellectual Property in Asia. As a former aerospace engineer and computational linguist, she practices in the computer and electrical-mechanical arts. Her practice concentrates on patent procurement, including drafting, prosecution, and opinion work, and some litigation.

Elizabeth is bilingual in Chinese and English, and has traveled and worked in other countries before and after her law career. She has a strong interest in international intellectual property issues, in particular those between the United States and China.

The Section offers her the opportunity to keep current on the latest developments in intellectual property law around the globe. In addition to associating with other Section members who share similar interests, she is able to be connected to many foreign patent offices and to a wonderful network of foreign IP practitioners through her committee work. She believes that intellectual property issues are quickly becoming more internationalized as the world community becomes increasingly connected through world trade.

Because of her professional and personal ties to China, she is actively working with other members of the China Trip Task Force to propose a Section trip to China. China's importance in the global economy accentuates the need for the Section to formulate a policy on IP issues relating to China; the Section trip will serve as a good opportunity for the Section members to have a close look at China's IP system. As a professional organization, the Section can also take the opportunity to conduct "professional-to-professional diplomacy" to shape the future dialog on intellectual property between the two countries.

Elizabeth is also a member of the ABA Section of International Law and Practice, and hopes to see closer cooperation between our section and that section.