Mark T. Banner
Section Chair, 2002-03

Judge Learned Hand observed, more than 75 years ago, that patent lawyers had an "antlike persistency" that could overcome the patience of patent examiners, and that there is "apparently always but one outcome." That persistency was plainly evident on April 29 and 30, when 16 representatives of the IPL Section went up to Capitol Hill to press the effort to end PTO fee diversion.

The Section members came to Washington, DC, as part of the American Bar Association delegation visiting Congress on ABA Day. The 16-person Section of Intellectual Property Law delegation was the largest Section effort to date to fight fee diversion using one-on-one meetings with members and staff of Congress. The effort resulted in an unprecedented number of Senators, Congressman, and their key legislative staff learning first hand our perspective on the problems caused by underfunding of the USPTO and diversion of USPTO fees to other unrelated purposes.

ABA Day is held each year to give the membership of the Association and of its various entities the opportunity to meet directly with congressional decision-makers to let them know the current legislative issues that concern the ABA. From the point of view of the Section, the meeting could not have come at a better time. The number one IP issue to emerge in Congress this year is also the number one issue for the Section. That issue, funding for the USPTO and the diversion of user fee revenue, is currently being considered by Congress in the context of the Bush Administration's proposal (H.R. 1561) to increase PTO user fees in order to implement Director Rogan's reorganization plan for the Office, which includes a number of functional and operational changes.

ABA Day was also timely in that the ABA Board of Governors earlier this year acted on the Section's request and designated the PTO funding and fee diversion issue as a top priority for the Association. The event provided an excellent opportunity to inform Congress of this action, which underscored the importance of these issues to the ABA and to the Section, and of our strong opposition to user fee diversion.

More than 200 lawyers from across the nation participated in this year's ABA Day. In the past the Section has had from three to six participants; this year's group of 16 was by far the largest contingent of Section members to date to participate in this grass roots effort, nearly three times larger than past efforts. As good as our Section participation was, however, I hope that next year we can redouble our efforts again.

The Section contingent held 15 separate meetings with members of the House and Senate and their staffs, seven of which were personal visits with members of Congress who are key decision-makers on IP matters. Included were the Rep. Lamar Smith (R-TX), Chairman of the House Subcommittee on Courts, the Internet, and Intellectual Property (the "IP Subcom-mittee"), and Rep. Howard Berman (D-CA), the Ranking Minority Member of the Subcommittee. In addition, delegates met with three other members of the IP Subcommittee.

This year the Section also targeted members of the House and Senate Appropriations Committees for contact. While the "IP Committees have substantive jurisdiction over the IP laws, the all-important Appropriations Committees determine how much money the USPTO has available to spend. Thus, while the IP Committees will have a large voice in determining how high the USPTO fees will be, the Appropriations Committees will largely determine how much, if any, of the expected fees will be diverted.

The reason for this is that unlike a business, when the USPTO collects fees they do not go into a "PTO" account. Rather, they go to the general treasury, just as do taxes and other government income. The USPTO is allowed to spend only so much as Congress appropriates, no matter how much is collected. The House and Senate Appropriations Committees domi-nate the appropriations process. Over the past decade nearly $750 million in user fees have been diverted from the USPTO to other programs.

Section members met with Senator Kay Bailey Hutchison (R-TX), a member of the Senate Appropriations Subcommittee that determines PTO funding. In addition members met with key staff from the offices of Senator Dianne Feinstein (D-CA) and Senator Richard Durbin (D-IL). Both Senators Feinstein and Durbin are members of the Senate Appropriations and Judiciary Committees, which appropriate funds and oversee operations of the USPTO, respectively. On the House side a delegation met with staff for Congressman Coble (R-AZ), a member of the House Appropriations Subcommittee.

The new leadership in the House was not neglected either. We met with key policy advisers to both Speaker of the House (Congressman Dennis Hastert, R-IL) and to the House Minority Leader (Congresswoman Nancy Pelosi, D-CA). In addition, Section members met with numerous other members and staff for the Senate and House subcommittees that deal with intellectual property issues. In all of these meetings the goal was to send them a single, unified message: the organized intellectual property bar will not relent in its efforts to bring an end to the fee diversion at the USPTO. To help spread the message we left behind a one-page handout describing the problem and outlining the united opposition of the IP bar. (A copy of that handout can be found on the Section website at www.abanet.org/intelprop/feediversion.pdf.

The 16 persons representing the Section included current Chair Mark Banner, future Chairs Bob Sacoff and Bill LaFuze, Immediate Past Chair Charles Baker, and Section Member of the Board of Governors John Uilkema. In addition Council members Gordon Arnold, Mark Dickson, Pamela Banner Krupka, Rob Lindefjeld, Theresa Rea, and Kate Spellman attended. Other Section members attending included Todd Dickinson, Michael Klipper, and Philip Swain, and we were accompanied and guided by our Legislative Consultant, Hayden Gregory, and our Section Director, Betsi Roach.

The House IP Subcommittee is expected to vote on the PTO fee bill and related issues in the next few weeks. The Section representatives used these visits to impress upon Congress the Section's support for adequate funding to provide quality and timely patent and trademark services, but at the same time stressed that the ABA and the Section would oppose using the fee bill to raise money to be diverted to fund other unrelated programs. This message seemed to be well received by the members of the IP Subcommittee, several of whom expressed similar views. The members of Congress and their staffs expressed interest in learning all they can of the direct economic impact of funding shortfalls and declining services at the PTO, particularly when that impact is in their own localities. The Section contingent was able to provide a number of specific such instances, and promised further monitoring and reporting.

I pointed out in my February Chair's Column that the late Senator Everett Dirksen once said, "When I feel the heat, I see the light." Our goal in Washington is to make Congress "see the light." Our plan was (and remains) to use the "antlike persistency" of our Section members to end PTO fee diversion and bring about a first-class PTO.

What can you do? Retrieve the handout from our website,www.abanet.org/intelprop/feediversion.pdf, and contact your representatives in Congress to demand an end to PTO fee diversion. If your representatives are members of either the House or Senate Appropriations Committees, your participation is even more important. Point out how an under-funded PTO is bad for your clients, your district, your state, and your country. Offer to meet with them (or their staffs) when they next visit the home district, and ask to let you show them how quality patents help the economy, while poor-quality PTO services hurt our nation's businesses. Through steady attention, and ef-fort we can end fee diversion and have our PTO funded at a level that will ensure high quality and timely services.

Committee on Electronic Filing in the U.S. Patent and Trademark Office
Committee 754
Bradley K. DeSandro, Committee Chair

The Committee on Electronic Filing in the U.S. Patent and Trademark Office (754) has prepared a paper on recently announced tools soon to be made available to electronically filed patent applications and related documents in the USPTO. These tools are being developed by WIPO and the EPO. Other tools are being made available by commercial software vendors.

The paper will be presented on Wednesday, June 18 by the Committee 754 Chair at the 2003 Summer IPL Conference in a forum titled "Electronic Business with the USPTO and WIPO: Are You Ready". Following the presentation of the paper, patent attorney Maria Eliseeva of Houston Eliseeva LLP will give a patent prosecutor's point of view of these new tools.

The Section Council met on April 28 to discuss resolutions proposed by the Section Committees for adoption as Section policy. From these, the Council selected 14 from various areas of IP law for debate during this year's Summer IPL Conference. The remainder were approved, allowed to rest as committee reports or recommitted to the committees for further consideration.

The following resolutions will be debated at the Summer IPL Conference, at the Section Business Session, Thursday, June 19, 2003. To access the committee report that accompanies each proposed resolu-tion, visit the Section website at www.abanet.org/intelprop/summer2003/business_session.html. If you have questions, contact the Section at intelprop@abanet.org, or call 312/988-5598.

Provide Comments

All members should review the proposed resolutions immediately. If you have any objections to the classification or suggested changes to any proposed resolution, please contact the appropriate committee chair prior to the debate on the resolution (indeed, if possible, prior to the meeting). Each committee chair's address, telephone number and e-mail address can be found on the Section website. If you need help in locating a committee chair, contact the Section office. This procedure should expedite the making of non-controversial changes in form and allow more time for debate on the substantive issues presented by the resolutions.

Register

Conference information and online registration can be found on the Section website, www.abanet.org/ intelprop/summer2003. Registration brochures for the Summer IPL Conference are in the mail.
Support the Section resolution process and register today to attend the 2003 Summer IPL Conference in San Diego.

Rules of Debate

Robert's Rules of Order Newly Revised (1990 edition) will govern.

Each resolution will be introduced followed by a 4-minute statement in favor of the resolution. The first speaker against will be allowed the same time. If anyone wishes to volunteer for this task please contact Betsi Roach ASAP.

Debate will proceed alternating between pro and con until all speakers for one or the other position have been heard. The time limit for each is one minute. A speaker may speak only once per resolution. No repetition. If your point has been made, please do not try to repeat it.

The Section Parliamentarian, Morton David Goldberg, will advise the Chair on enforcing the rules.

Procedure For Additional Resolutions to Be Presented

The following procedures will be followed for resolutions presented to the Resolutions Committee for consideration at the 2003 Summer IPL Conference:

1. Each noncommittee report resolution intended for consideration by the Section prior to the Business Session of the Summer IPL Conference must be submitted as an e-mail attachment to the chair of the Resolutions Committee and to the IPL Section Director for receipt no later than May 27, 2003. Resolutions received thereafter will not be considered by the Section prior to the Business Session unless the Section Chair rules otherwise.

Any resolution submitted in this manner should be accompanied by the name and conference address of its proponent. The proponent shall recommend the desired action by the Committee, e.g. "full debate when Committee 102 resolutions are considered," and shall also indicate whether or not a hearing before the Committee is desired.

With respect to each resolution properly before it in accordance with this paragraph, the Committee will make one or more of the following recommendations:

The resolution should be considered by the Section in connection with a specific Committee report, as a special order of business, or as New Business.

The resolution should be amended in some specified manner or that a substitute resolution should be considered.

The resolution should be referred to an appropriate committee for study during the coming year.

The Committee's recommendations will be submitted to the Section Chair for a decision prior to the Business Session.

2. Any resolution to be submitted to the Section as New Business at the Conference must first be submitted to the Resolutions Committee in typewritten form so that a sufficient number of copies may be made before such resolution is considered by the Section. Any such resolution must be accompanied by the name and Conference address of its proponent.

The Committee will consider any such resolutions properly before it and make recommendations in accordance with (1) above. During the Business Session, these recommendations shall be reported to the Section for decision by the Section Chair, subject to approval of the Section.

If requested by the proponent, the Committee will also specify a time and place for a hearing, should the Committee agree that a need for a hearing exists. Failure of a proponent to appear at an announced hearing may, at the Committee's discretion, amount to withdrawal of the subject resolution.

The Section Chair may place on the agenda and announce a time certain when the Resolutions Committee will again report to the Section.

3. Late committee reports containing at least one resolution with a favorable committee vote shall be submitted to the Resolutions Committee at the same time they are submitted to other Section personnel who normally receive such reports. If received by the Committee no later than May 27, 2003, the Committee will make recommendations with respect to any approved resolutions in accordance with paragraph (1) above.

4. Should a proponent wish to submit to the Resolutions Committee a resolution which is the same or substantially the same as one considered but not approved by a committee of the Section, the proponent shall:
a. make known to the Resolutions Committee such prior action;
b. make a strong showing of urgency;
c. appear in person before the Resolutions Committee prior to the Council Meeting preceding the Business Session or, if unable to do so, arrange a conference call with the Committee to discuss the resolution; otherwise, the resolution will be referred to the appropriate committee for further study the following year.

5. All resolutions received after the 2003 Summer IPL Conference to be considered at the Business Session of the ABA Annual Meeting will be processed as is set forth above, except that the words "Annual Meeting" are to be substituted for "Conference" whenever appropriate.


2002-03 Resolutions Classified For Full Debate

(Asterisk denotes Proposed Resolution was amended by Council at April 28 Classification Meeting.)

Proposed Resolution 103-1*
RESOLVED, that the Section of Intellectual Property Law supports a change to 37 C.F.R. 705 that would permit reconsideration of term adjustment upon request of the patent owner at any time until expiration of the patent.

Proposed Resolution 103 - 3
RESOLVED, that the Section of Intellectual Property Law opposes in principle the outsourcing of the search function by the USPTO to non-USPTO organizations and any move by the USPTO to a multi-track examination process to the extent that it embodies an outsourcing of the search function or an organizational separation of the search function from the examining function, unless and until pilot studies demonstrate that efficiency and/or quality will be improved by outsourcing., but favors the USPTO pursuing the appropriate utilization of search reports from qualified foreign intellectual prop-erty offices.

Proposed Resolution 103-4*
RESOLVED, that the Section of Intellectual Property Law favors in principle that all prior art cited in a proper Information Disclosure Statement (IDS) be given the same degree of full consideration by the examiner, whether or not the pertinence of such prior art is dis-cussed by the applicant in the IDS and whether or not such prior art is discussed or used by the exam-iner to reject claims and
Specifically, the Section favors the amendment of Section 609 (and 2242) of the Manual of Patent Examining Procedure by the Patent and Trademark Office to eliminate the distinction between examiner consideration of prior art cited in an IDS without any discussion of the prior art and examiner consideration with discussion of or reliance on the prior art, and to make clear that all prior art cited in an IDS should be fully and carefully con-sidered by the examiner.

Proposed Resolution 103-5*
RESOLVED, that the Section of Intellectual Property Law favors in principle that inter partes reexamination be further expanded to include:
(1) expanded participation by the third party petitioner in the review process, including right to attend and participate in Examiner interviews and hearings at the Board of Patent Appeals and Interferences;
(2) no estoppel being created for a third party petitioner's other legal remedies, unless the petitioner is a party to an appeal to the Federal Circuit that results in a decision on the merits; and
(3) the requirement that the Examiner who issued the patent be barred from participation in a reexamination proceeding.

Proposed Resolution 103-5(a)*
RESOLVED, that the Section of Intellectual Property Law favors in principle that inter partes reexamination be further expanded and
Specifically, the Section favors expanded participation by the third party petitioner in the review process, including right to attend and participate in Examiner interviews and hearings at the Board of Patent Appeals and Interferences.

Proposed Resolution 103-5(b)*
RESOLVED, that the Section of Intellectual Property Law favors in principle that inter partes reexamination be further expanded and
Specifically, the Section favors no estoppel being created for a third party petitioner's other legal remedies, unless the petitioner is a party to an appeal to the Federal Circuit that results in a decision on the merits.

Proposed Resolution 103-5(c)*
RESOLVED, that the Section of Intellectual Property Law favors in principle that inter partes reexamination be further expanded and
Specifically, the Section favors the requirement that the Examiner who issued the patent be barred from participation in a reexamination proceeding.

Proposed Resolution 108-6*
RESOLVED, that the Section of Intellectual Property Law supports in principle the uniformity, predictability and consistency in the administration of the patent law fostered by having the Federal Circuit Court of Appeals decide appeals of all cases involving a claim which in which the dispute "arises under" the patent laws; and
Specifically the Section supports the proposition that a claim stated in the Complaint or Counterclaim can be relied upon to determine whether a civil action "arises under" federal patent law.

Proposed Resolution 205-1*
RESOLVED, that the Section of Intellectual Property Law rescinds its resolution of February, 1998, AR67-R201-3, which stated, "Section opposes in principle the passage of federal trademark legislation to codify a single and authoritative definition of "inherent distinctiveness" (or "inherently distinctive") as applied to trade dress.

Proposed Resolution 205-12*
RESOLVED, that the Section of Intellectual Property Law opposes in principle the rule set forth in the decision WalMart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000), that the design of a product can never be inherently distinctive as a matter of law.

Proposed Resolution 205-23*
RESOLVED, that the Section of Intellectual Property Law favors in principle the a rule that the design of a product may be inherently distinctive according to a standard derived from the standards in the combined Seabrook Foods, Inc. v. BarWell Foods, Ltd., 568 F.2d 1342 (C.C.P.A. 1977), and -Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1449, 32 U.S.P.Q.2d 1724, 1738 (3d Circ. 1994); and
Specifically, the Section favors a rule that the design of a product may be inherently distinctive according to a combined Seabrook-Duraco standard consisting of the following five elements: 1) the trade dress is unusual and memorable, 2) it is conceptually separable from the product, 3) it is likely to serve primarily as a designator of origin of the product, 4) it is not a mere refinement of a commonly adopted and well-known form of dress for a particular class of goods, and 5) it is capable of creating a commercial impression distinct from any accompanying words on the trade dress. Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342 (C.C.P.A. 1977); Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1449; 32 U.S.P.Q.2d 1724, 1738 (3d Cir. 1994).

Proposed Resolution 655-1*
RESOLVED, that the Section of Intellectual Property Law favors opposes in principle the appointment and use of court-appointed technical advisors under the district courts' inherent powers so long as unless procedural safeguards are put in place to protect the litigants' interests.

Proposed Resolution 655-2*
RESOLVED, that the Section of Intellectual Property Law favors opposes in principle the adoption of a new Federal Rule of Evidence to govern the appointment and use of court-appointed technical advisors in a case under the district courts' inherent powers, unless an appropriate Federal Rule or Rules are adopted to govern the use and appointment of court-appointed technical advisors.

Proposed Resolution 655-3*
RESOLVED, that the Section of Intellectual Property Law favors in principle the adoption of a new Federal Rule of Evidence an appropriate Federal Rule or Rules to govern the appointment and use of court-appointed technical advisors ("CATA") in cases under a district courts' inherent powers; and
Specifically, the Section favors a Federal Rule of Evidence which would, at a minimum,: (1) require district court judges to inform parties of his or her intention to appoint a CATA, (2) allow the parties an opportunity to raise objections concerning the competency and/or independence of any CATA selected by the court, (3) require district court judges to inform the parties of the intended role of the CATA, (4) require district court judges to create a record of the CATA's actual role, and (5) require that the parties be provided copies of any written reports prepared by the CATA for the district court judge.

Celebrating 100 Years of Flight

Thomas E. Smith
Past Section Chair, 1994-95

In the 100 years since the Wright Brothers made their legendary first flight, society has achieved staggering heights in the fields of aviation and aerospace. To honor the individuals responsible for taking us higher and farther, the National Inventors Hall of Fame celebrates Induction 2003: A Centennial of Aviation Invention.

On May 3, the Hall of Fame honors 17 inventors who have contributed to aviation and aerospace.
This year's class of inductees includes:

Dr. George Carruthers, Far ultraviolet electrographic camera
Mr. Frank Cepollina, Satellite servicing techniques
Mr. Glenn H. Curtiss, Hydroaeroplane (posthumous)
Dr. Max Faget, Space capsule design
Mr. Leroy Grumman, Retractable landing gear; folding wing (posthumous)
Mr. Charles Kaman, Rotor control mechanism for rotary aircraft
Mr. Paul Kollsman, Altimeter (posthumous)
Mr. Edwin A. Link, Link trainer/simulator (posthumous)
Mr. Thomas Midgley, Jr., Ethyl gasoline (posthumous)
Mr. John K. Northrop, Flying wing plane (posthumous)
Dr. John Pierce, Communications satellite (posthumous)
Dr. Harold Rosen, Geosynchro-nous communications satellite
Dr. Theodore von Kármán, Turbo jet (posthumous)
Dr. Hans von Ohain, Jet engine (posthumous)
Dr. Richard Whitcomb, Super-critical wing
Sir Frank Whittle, Jet engine (posthumous)
Dr. Sam Williams, Small fan-jet engine

In addition, the Hall of Fame will present its Lifetime Achievement Award to Senator John H. Glenn in recognition of his accomplishments that have advanced aviation and aerospace. "John Glenn is an icon of space exploration and represents our continuous quest to pioneer new frontiers," says Clyde Bailey, President of the National Inventors Hall of Fame Foundation. Glenn made history in 1962 as the first American to orbit the Earth. He returned to space in 1998 on the space shuttle Discovery.

The 31st annual induction ceremony marks the first time the Hall of Fame has held a themed ceremony. Many great aviation innovators such as the Wright Brothers, Igor Sikorsky, and Wil-liam Lear are already Hall of Fame inductees. However, as demonstrated by this year's impressive class, many more individuals are deserving of recognition.