Mark T. Banner
Section Chair, 2002-03

One of the frequent questions I am asked about Section activity is "What can I do?" The question comes in two forms. The first is in a monotone voice with no empha-sis on any of the words, as if to ask, "I'd like to help, how can I become involved?" The second emphasizes the word "I", as if to say, "No individual can make a difference, so why bother?"

An undercurrent to both questions is a perceived futility of volunteer work in an Association, such as this Section. So often today we encounter greater and greater demands on our time, especially from our work environment. Fewer and fewer corporate lawyers are allowed the time (and money) to volunteer their time on professional association activities. Young lawyers are facing minimum billable hour requirements where previously none existed, and where they previously existed they are higher than ever before. As the pace of the economy slows, the pace of business commitments speeds up, and it some-times seems as though we are never free from the job. Not too long ago the pace of our work lives was governed by daily mail deliveries, relatively infrequent Telex and Cable messages, and the telephone. Today we are bombarded by e-mail, instant mes-sages, and the ubiquitous Blackberry wireless device.

As the pace of work has increased, too often its professional character has decreased. The idea of "work life" has been transformed from two concepts to one, and lawyers of all types, including IP lawyers, are finding it harder and harder to justify spending time on professional associations.

We are all the poorer for it.

What can you do? What can you do? I offer "the four 'Rs' as answers.

First, recognize the situation. Elsewhere in this issue we report on the first steps to end PTO fee diversion, which has robbed the PTO for nearly 20 years. The effort is far from over, but the first steps have been encouraging, and they were accom-plished by a group of people from our Section (working in harmony with our sister organizations, AIPLA, INTA, and others), who refused to not become involved. They spent their time, and will spend more, working first with the Administration (the PTO, OMB and the Department of Commerce) and then with Congress (both House and Senate) to insist that fee diversion end.

Second, if you are in a position of leadership at work, reward those who work with and for you for participating in their professional associations. Encourage them to be more than just members; inspire them to get involved. The Section is soliciting from every member his or her preferences for committee assignments for the next Association year. A list of those committees is published in this issue. Stimulate your co-workers to take active positions in Association work. Count it along with corporate priorities and billable hours. Reward it when promotions are considered or salaries are set.

Third, recruit at least one other to become involved as well. If you already are involved in Association activities, make a commitment to convince one person to make a quality commitment of time to whatever type of Association activity interests him or her. If you are not already involved, use the "buddy system" and recruit just one additional member to become an active participant, with you, in the work of this Section, or another professional group. Volunteer organizations like the American Bar Association are only as strong as its members make it. This Section is active only to the degree that its members commit themselves to being so.

Finally, if you are none of the above but you have read this far, respond to the call to action contained in our Committee preference survey. Respond by indicating you want to be a voting member (not merely an "information only" member) of a committee. Volunteer to be a subcommittee chair; take on a project and see it through.

Members of this Section have the potential to do enormous good, limited only by our imaginations. Pick any topic and there are limitless projects you could do if you wanted. Are you interested in copyrights? The American Bar Association is commit-ted, as one of its primary goals, to advancing the rule of law. Think of the educational, promotional, and informational opportunities this offers! The Section - that is you - could develop brochures or a booklet for use in high schools and colleges on the importance of copyright. Or write and sponsor "movie trailers" that highlight the role and impor-tance of copyright in the creative process.

Is your interest in trademarks? We've had at least two significant trademark cases decided by the Supreme Court this year alone, the most recent being Dastar Corp. v. Twentieth Century Fox Film Corp., ___ U.S. ___, Case No. 02-428 (June 2, 2003), holding that Section 43(a) of the Lanham Act does not prevent the unaccredited copying of an uncopy-righted work, or one whose copyright has expired. Our trademark commit-tees are always looking for volunteers to follow and report on the law in the various Circuits, suggest legislative improvements, look for ways to comment on national or international regulations, stimulate positions for possible Amicus briefs (as the one we filed in the Victoria's Secret case, an-other Supreme Court decision), and otherwise advance the law.

Are you a patent lawyer asking, "What can I do?" This year's Annual Business Session will see debates on resolutions from patent-related committees dealing with the timing of considering patent term adjustment, the appropriateness of having the PTO outsource patent searching and, thus, separating the "search" from the "examination" functions, the jurisdiction of the Federal Circuit over appeals where patent issues are raised by way of counterclaim, and a host of other patent issues. Every one of these was the result of a study and recommendation by a member who volunteered, whose work was then presented to the committee (which voted on it), which then was referred to the Council which slated it for debate by the members as a whole.

"What can I do?" You can recognize that the possibilities are endless if you become involved, reward your co-workers when they contribute to this Section or other associations, recruit at least one colleague to join you in active participation, and re-spond to your Association's request for your participation. I can assure you that doing so will enrich your profession, your society, and yes, even your "work life."

 

House IP Subcommittee Approves PTO Fee Bill
Has Strong Anti-Diversion Provision

By Hayden W. Gregory
Section Legislative Consultant

On May 22, the Subcommittee on Courts, the Internet, and Intellectual Property of the House Judiciary Committee marked up and favorably reported H.R. 1561, the "United States Patent and Trademark Fee Modernization Act of 2003," to the full Judiciary Committee. H.R. 1561 contains the Bush Administration's recommendations for patent user fee increases averaging about 15%. This proposal directly implicates the issue of diversion of PTO user fees to fund unrelated programs, since the Administration's budget request for FY2004 calls for $100 million of this new revenue to be diverted. The Section supports the fee bill as a neces-sary step to provide additional funding to address growing problems of pendency and quality in the PTO, provided that any such legislation also effectively addresses the problem of diversion.

To end such diversion, the Subcommittee approved an amendment to H.R. 1561, offered jointly by Chairman Lamar Smith and Ranking Member Howard Berman, that would take PTO funding out of the appropriations process and make fee revenue available to the Office upon collection. Fee collections would be deposited in a PTO account in the U.S. Treasury, where they would be available immediately to the Office. Use of the funds would be specifically limited to support for patent and trademark activities.

This approach to ending user fee diversion, which Smith described as "the strongest possible action we could take," is one that the ABA has specifically indorsed.

In urging members of Congress to include anti-diversion provisions in the fee bill, the IPL Section has been aided by the fact that ending PTO user fee diversion is a policy of the entire Association, not just the Section, and by the fact that the ABA Board of Governors earlier this year saw the problem to be of sufficient importance to be designated one of just 12 top legislative priorities of the Association. The Section believes that this strong support of the Association was a contributing factor in convincing the Subcommittee to select this legislative response to the diversion problem over other alternative approaches that were being lobbied and considered.

While the amendment adopted by the Subcommittee would likely end diversion if it were enacted, enactment is by no means assured. In choosing this approach, the Subcommittee understood that it was steering a course that is likely to be opposed in the House. Its predecessor, H.R. 4034 of the 106th Congress, was favorably reported by the Judiciary Committee only to stall and die after the Chairman of the Appropriations Committee objected to the bill. At the May 22 markup, members of the Subcommittee acknowledged the need to work harder this time to garner support for the measure from the House leadership and from House members generally.

Congressman Berman, who has been considering offering an amendment to restrict the separation of patent search and examination functions and outsourcing of searches, announced at the mark-up that he was not offering such at this time, but that such an amendment might be offered when H.R. 1561 is considered in the full Judiciary Committee.

Section Advocacy on Madrid Protocol Rules

Robert W. Sacoff
Chair Elect, 2003-04

Section Chair-Elect Bob Sacoff testified on May 30th at the USPTO hearing on the Trademark Rules package proposed to implement the Madrid Protocol in the United States. His testimony was based on the Secton's written comments of May 23, 2003, in response to the notice of proposed rulemaking. The following Section members deserve particular recognition for their good work in helping to formulate our Section's position - Jim Walsh (Committee 203 Chair), Clark Lackert (Committee 202 Chair), Barbara Friedman and Jay Hines.

As a prelude, our Section successfully moved the ABA House of Delegates in 2001 to adopt IPL Section policy favoring Madrid as ABA policy in the following resolution: "Resolved, that the American Bar Association approves the adherence by the United States to the Protocol to the Madrid Agreement for the International Registration of Trademarks, adopted in Madrid, Spain on June 27, 1989, and the amendment of the Lanham Act, 15 U.S.C. § 1051 et seq. (1994 & Supp. II 1996), to the minimum extent required for United States adherence."

Our Section's comments on the proposed rules emphasize protecting the rights of trademark owners, maximizing their ability to extend opposition periods, revive unintentionally abandoned applications, and remedy insufficient fee payments, and recommend providing applicants' designated representatives early notice of objections to registrability under the new Madrid system. The full text of the Section's letter is posted on our web site at www.abanet.org/intelprop/response.doc.

Committee On Taxation (Committee 406)

Kerwin Chung,
Committee Chair

The Committee on Taxation is working on hosting two panels with the ABA Tax Section regarding the taxation of intangibles property. One panel will be held at a future Section of Intellectual Property Law meeting and focus on IP tax issues for non-tax lawyers. A second panel will be held at a future ABA Tax Section meeting and will focus on IP issues for non-IP lawyers. The committee is also planning articles for several upcoming IRS guidance projects that will have a significant impact on IP planning.

The committee is also soliciting new members and ideas from the IPL Section leadership on how the Tax Committee can better serve the section.

New Committees

Several new committees have been established by the Section. These include Committee 104 - Interferences, Committee 413 - IP Licensing, and Committee 606 - Experts. The new Committee 104 absorbed what was Committee 152 - Special Committee on Interfer-ences. Other committees have new names, such as Committee 805 - Spring CLE Meeting.

A complete listing of committees can be found at www.abanet.org/intelprop/comchair. To join a committee, please visit www.abanet.org/intelprop/committee_registration.