Chair's Bulletin
VOL. 8 NO. 11 JULY 2004
From the Chair
A Few Reflections
Robert W. Sacoff
Section Chair, 2003-04
The Association year is quickly approaching its closing months and weeks, ending for all practical purposes with the ABA Annual Meeting in August. In contrast to the reporting format I have generally used for this column, I am going to express a few personal reflections this month. The unusually large number of major IP policy issues we have seen and confronted this year have afforded your Section and its Chair a unique and rewarding opportunity to forge sound consensus positions, usually under difficult time pressures, work them through the applicable ABA procedures and requirements, and then advocate them in a timely and strategically calculated manner.
But that pales by comparison to the rewards of having gotten to know, well, and having worked with so many talented, unselfish and energetic members of this Section. The year has seen innumerable personal challenges to, and accomplishments by, individuals in this Section. Our friend and Immediate Past Chair Mark Banner’s ongoing, courageous battle with cancer is but one example. The year has seen among our friends and Section members cases won and lost, serious surgeries survived, weddings and new births celebrated, the unexpected death of a spouse and the death of a former Council member mourned, firm switches, mergers and geographical moves affecting members, new partnerships achieved, strides made in combating gender, racial and sexual orientation bias and discrimination, the list is almost endless. Throughout it all, our active members have been united by the bonds of friendship and collegiality, and a shared desire to improve the intellectual property law system in which we all have the wonderfully good fortune in which to find ourselves practicing these days.
You should also know how hard your Section staff have worked this year to support our meetings and other activities, particularly Section Director Betsi Roach and Assistant Director Mike Winkler. They began by supporting three labor-intensive Section events last fall which were above and beyond the normal annual Section agenda: our weekend-long strategic planning retreat in September, the membership satisfaction survey conducted contemporaneously, and the CLE program we co-sponsored at Fordham Law School in October, featuring five mini-trials of a hypothetical IP case before visiting judges from five foreign countries. Now that summer has arrived, it is probably the busiest time of the Association year, as year-long committee reports, resolutions and task force projects reach culmination, and two Section meetings must be organized and produced, the Summer IPL Conference in June and the ABA Annual Meeting in August. During this time, we have been operating at a 50% staffing shortfall, as one member of the Section staff took another job within the ABA and a second is on a leave of absence. So Betsi and Mike have not only had to do their own jobs, they have also had to do double-duty on two other staff jobs as well. Their tireless and cheerful work, which has enabled us to accomplish so much this year, deserves to be acknowledged.
Hayden Gregory, our Section’s Legislative Consultant in Washington, DC, has also worked extremely hard for us and should be recognized. Hayden has an annual consulting agreement with the Section (other Sections rely on the ABA legislative offices in Washington DC but we are fortunate to have the benefit of Hayden's many years on Capitol Hill dealing with IP issues), but has been so busy for us this year that his work has already exhausted the budgeted hours. Therefore, Council has approved a contract amendment to add the further authorization and funding necessary to carry Hayden's services through the end of the Association year in August. Hayden has been invaluable in monitoring legislative developments on Capitol Hill, helping us formulate the numerous requests for Blanket Authority we have circulated throughout the ABA, and serving as our liaison with Senators, Representatives and their staffers on the many IP policy issues we have addressed, from opposing PTO fee diversion to our testimony on the proposed FTDA amendments and the far-reaching FTC and NAS recommendations to reform the patent system.
Before mentioning the various Task Force projects that are nearing completion, I think it is worth mentioning the pending Section bylaws amendment (discussed in more detail later in this Bulletin) which is a great step in the direction of yet greater inclusiveness and accessibility in Section governance. For many years our Nominating Committee has comprised three members, two past Section Chairs and a non-officer. With membership now hovering around 20,000, the Section leadership concluded the Nominating Committee should be enlarged from three to five members, and we anticipate that the necessary bylaws amendment will be approved by the Board of Governors at the ABA Annual Meeting and will be operative in the new Association year.
Now for a few other updates. Because many policy issues this year did not fall squarely within a single IPL Section committee's scope, I set up a number of task forces to deal with them. Our Task Force on the USPTO Rules of Professional Conduct, led by Carol Langford and Ron Myrick, has concluded its six-month work in evaluating the proposed overhaul of the ethics rules and drafted a superb 25 page commentary, largely measuring the proposals against the ABA Model Rules of Professional Conduct and the best interests of the IP bar. We have requested and anticipate receiving authority to submit them to the USPTO within the June 11th deadline.
Our Task Force on Long-Range Planning, led by Vice Chair Tony Figg, has agreed upon and summarized action points in a report to be presented to Council at the Toronto Summer IPL Conference. This year-long effort commenced with our strategic planning weekend retreat in September and has involved a huge effort.
As previously reported, our FTC Task Force, led by Don Martens, has already forged responses to most of the FTC's ten recommendations for reforming the patent law system, with the remaining issue (post-grant opposition) to be debated by the membership at the Toronto summer conference.
Our NAS Task Force, led by Donna Meuth, is still in the process of formulating Section responses to this second major policy study, containing seven major recommendations on reforming the patent law system. Apparently the congressional hearings anticipated to be scheduled in June will not occur, allowing us more time to study these complex issues and fashion appropriate responses based on prior and new Section policy.
Our Task Force on Patent Improvement and Harmonization, led by Chair-Elect Bill LaFuze, has an enormous task that will not be concluded this year. It has made progress, however, in the complex project of sorting out large numbers of existing Section policy resolutions, identifying obsolete and conflicting positions, and recommending solutions for Council action through the sunsetting of ten-year-old resolutions, and proposing new resolutions like the first-to-file resolution scheduled for debate in Toronto.
Depending on when you are reading this Bulletin – either online after first posting, or in hard copy after it hits your desk – it is either before or after our Summer IPL Conference from June 16th to the 20th in Toronto. If before, I urge you to register for and attend the conference if you have not already decided to do so. If after, I hope you attended, enjoyed it and found it worthwhile and fun.
Notice to Section Membership:
Proposed Amendment of Section Bylaws
An amendment to the Section bylaws to increase the number of persons serving on the Nominating Committee was approved by the Section Council at its meeting on January 24, 2004. According to Section bylaws, a vote by the Section membership must be taken at its annual Business Meeting with Elections. The Business Meeting with Elections will be held on Saturday, August 7, at 9:00 a.m. in International F, Level 6, at The Westin Peachtree Plaza in Atlanta, Georgia. The meeting is held in conjunction with the ABA Annual Meeting.
The current provisions in the bylaws are for a three-member Nominating Committee. The amendment would increase the number of persons serving on the Nominating Committee to five members. The number was fixed at three members years ago when the Section membership was a small fraction of its present size.
The proposed amendment can be reviewed in its entirety below. New language is underlined, and deleted language is struck out.
All Section members are eligible to register for the ABA Annual Meeting and attend the Business Session with Elections to vote on this proposed bylaw amendment. Elections for new Section leadership will also be held at the Business Session with elections. To register for the ABA Annual Meeting, visit the ABA website at www.abanet.org.
The proposed change is listed below, added language is underlined and deleted language is struck out:
Article VII
Elections
Section 4. Nominations. Not later than September of each year,
the Chair shall appoint a Nominating Committee of three five members of the Section not members of the Council, at least one of whom
shall not be an officer, a former officer or a former member of the Council.
The Nominating Committee shall make and report nominations to the Section
for such officers and Council members as are scheduled to be elected at
the annual meeting. No less than eight (8) months prior to the opening
assembly at the annual meeting, written notice of the name and mailing
address of each member of the Nominating Committee and an announcement
of the time and place of the election shall be given to each voting member
of the Section; and no less than five (5) months prior to the opening
assembly at the annual meeting, the report of the Nominating Committee
shall be mailed to all voting members of the Section.
Additional nominations may be made for any position to be elected by petition signed by not less than one hundred (100) members of the Section, listed by their ABA ID numbers, who are representative of at least three (3) states. The petition must state that the individual nominated has agreed to the nomination. The petition shall be sent to the Chair and the Secretary of the Section and must be received not less than four (4) months prior to the opening assembly of the annual meeting.
No less than three (3) months prior to the opening assembly of the annual meeting the Chair or the Secretary of the Section shall publish the names of all nominees for positions.
Former Section Concil Member, J. Michael Cleary, Dies
J. Michael Cleary, a prominent Washington, D.C. trademark and copyright attorney, and former member of the Section Council from 1994-98 died on Monday, May 31, 2004. He had suffered for several years from the effects of renal cell carcinoma.
In addition to serving on the Section Council, he was active in local and international bar associations, having served as an officer and director of the Intellectual Property Section of the Bar Association of the District of Columbia, the Copyright Society of the United States of America, and the International Trademark Association.
In his professional career, Mr. Cleary represented a large number of companies and individuals in the manufacturing and entertainment industries.
He earned his J.D. from The George Washington University, and his B.A. and M.A. degrees from The Catholic University of America.
He is survived by his mother, Betty Anne Monroe Cleary, of Minneapolis, Minnesota; wife, Patricia, of Arlington, Virginia; a daughter Catherine, son-in-law Raymond, and grandson Joseph of Baltimore, Maryland; and a daughter Sarah, of Arlington, Virginia.
Committee News
Committee 602– Arbitration and Other Alternative Procedures
As this issue of the Chair's Bulletin went to press, Committee 602 was planning to meet on June 17 at the ABA Section of Intellectual Property Law 2004 Summer IPL Conference in Toronto. Initial responses to the Committee meeting notice was strong, boding well for the work of the Committee in 2004-2005.
The subject of the Committee meeting, and the work of the Committee, was dispute resolution in intellectual property cases.
The Committee meeting agenda included the following items:
- Growth of mediation generally and unmet needs in IP cases
- Certification and qualifications of mediators, arbitrators and special masters in IP cases
- The work and goals of the Committee
- Proposed draft survey of IP attorneys regarding experiences and interests in dispute resolution
- Designate subcommittees and members for 2004-2005 (in
2003-2004, there were two
subcommittees, on mediation and surveys) - Progress in changing the name of the Committee to "Dispute Resolution"
Other subjects of interest to Committee members and other persons interested in dispute resolution in IP cases.
For further information or to make suggestions concerning the work of the Committee, please contact Richard P. Beem by e-mail at richard@beemlaw.com or by phone at 312/201-0011.
To join Committee 602, please send an email request to the Section at intelprop@staff.abanet.org.
Committee 754– Electronic Filing
The U.S. Patent and Trademark Office has introduced a new electronic filing system for the simplified filing of patent assignment documents over the internet. The service is called EPAS (Electronic Patent Assignment System). Information concerning this system may be found at epas.uspto.gov. The EPAS system enables a filer to use a simple web-based procedure to record an assignment document. The EPAS system is intended to be simpler than the filing system for patent applications using ePAVE in that the filer does not have to have a cryptographic certificate and does not need to have downloaded and installed ePAVE.
The system is actually very user friendly, and you typically get a Notice of Recordation sent to you by fax the next day.
Fryer Represents Section at WIPO Conference in Venice
It was my privilege to represent the Section at the Awards Ceremony and dinner for Dr. Kamil Idris, WIPO Director General, in Venice, Italy, on May 12.
The Award to Dr Idris was titled: “Venice Award for Intellectual Property”, the first one given by the City of Venice. This recognition had special significance as it was established on the 530th anniversary of the first law on patents, emanated in Venice in the year 1474. The ceremony took place in Palazzo Ducale, the seat of early government in Venice.
I also represented the Section at the WIPO Design Conference held in Venice, Italy, May 13-14. This conference launched a new era in international design protection. The conference was organized to provide world attention for the recently operational Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs and the importance of design protection for each country. The Section had participated in the development of the Geneva Act, for centralizing filing and procedures for design patents, similar to what PCT and the Madrid Protocol do for utility patents and trademarks, respectively.
For further information on this Design Conference, WIPO will be posting some of the conference papers on their web site. It was stressed by the WIPO that their web site has the latest information on the Geneva Act. I will be glad to answer any questions than anyone may have concerning the Design Conference I attended. E-mail me at fryer@fryer.com.
AMERICAN BAR ASSOCIATION
Section
of Intellectual Property Law
321 N. Clark Street, 19th Floor
Chicago, IL 60610
Please note our new address above!
Mark Your Calendar—
ABA Annual Meeting
Section Dates: August 6-8, 2004
Section Hotel: Westin Peachtree Plaza
Atlanta, GA
