Robert W. Sacoff
Section Chair, 2003-04

During the 2003-04 Association year, Section officers, Council members, Committees and Task Forces have been devoting enormous amounts of effort to bring major Section initiatives to fruition, including but not limited to: advocating Section interests on Capitol Hill during ABA Day, May 5th and 6th; putting on the annual Summer IPL Conference in Toronto from June 16-20; formulating the Section's policy responses to the FTC’s ten recommendations, and the National Academies of Sciences’ seven recommendations, for reforming the U.S. patent law system; formulating the Section's policy responses to the USPTO’s proposed rules package overhauling its Code of Professional Responsibility; distilling and organizing the Section's past policy, and addressing new policy issues, on global patent improvement and harmonization; the Section's first outreach trip to China, from July 3-11; and jointly administering the AIPLEF, the American Intellectual Property Law Education Fund. Brief updates follow.

ABA Day – May 5th and 6th

The Section advocated its IP agenda, once again, in the ABA’s annual assault on Capitol Hill, meeting with key congressional decision makers on intellectual property law legislative issues. Chair-Elect Bill LaFuze led our delegation, which also included Vice-Chair Tony Figg, Council Members Susan Montgomery and Rob Lindefjeld, ABA Board of Governors Member John Uilkema, Section Liaison to WIPO Todd Dickinson, Section Liaison to the ABA Standing Committee on Technology and Information Systems Marylee Jenkins, and Hayden Gregory, our Legislative Consultant.

Last year we focused on gaining House support for ending USPTO user fee diversion, which is one of the ABA’s 12 Legislative Priorities. Two weeks after the 2003 ABA Day, the House IP Subcommittee amended the PTO fee bill, H.R. 1561, to add the anti-diversion language we supported. On March 3, 2004, the House passed H.R. 1561 and sent it to Senate.

With the bill now in the hands of the Senate, our 2004 delegation concentrated on members of the Senate Judiciary Committee, which has responsibility for PTO fee legislation, and the Senate Appropriations Committee, which provides PTO funding. We met with Senator Kay Bailey Hutchison (R-TX) of the Appropriations Committee and Senator John Cornyn (R-TX) of the Judiciary Committee, who both expressed support for H.R. 1561. We also met with Sena-tor Rick Santorum (R-PA), with the offices of three Senators who sit on both the Judiciary and Appropria-tions Committees (Specter (R-PA), DeWine (R-OH), and Durbin (D-IL)), and with the top staff persons for both the majority and minority leadership of the Senate Judiciary Committee.

Finally, we also met and discussed IP issues with Alberto Gonzales, Counsel to the President, and Harriet Miers, Deputy Chief of Staff, the White House.

Summer IPL Conference in Toronto – June 16-20

If you have not registered yet for the Section's main meeting of the year, in the beautiful city of Toronto, I encourage you to do so now. If you do not have the meeting brochure in hard copy, you can easily download it from the Section web site. The meeting will feature great CLE, the famous policy debates of the Section Business Session, hockey legend Ken Dryden, an evening at The Second City, and more. There will also be time for committees to hold face-to-face meetings. To find out whether your committee is doing so, contact your Committee Chair. Toronto is home to a large IP lawyer community, and it has enthusiastically supported our conference activities. Mary and I look forward to seeing many of you in Toronto.

FTC and NAS Reports on Patent Law Reform

The FTC Report Task Force, led by Don Martens, has done excep-tionally hard, fast and excellent work formulating the Section's policy response to the ten recommendations in the FTC Report, and is busy working on the recently is-sued NAS Report which covers both overlapping and different issues. Along with Division I Chair Tom Wozny, Key Committee Chairs contributing to this effort are Jeff Kushan (Committee 201), Sam Helfgott (Committee 202), Ron Myrick and Donna Meuth (Com-mittee 203), Todd Dickinson and Sharon Barner (Committee 108) and Phil Swain (Committee 601). As detailed elsewhere in this Bulletin and on our Section's web site, Council approved resolutions on eight out of ten of the FTC's rec-ommendations, and classified two of the other resolutions for Full Debate at our Summer IPL Conference. We are hopeful of having reports and resolutions on the NAS report and recommendations shortly. Reportedly, Congressional hearings are being scheduled on both reports some time during the month of June.

Revision of USPTO Code of Professional Responsibility

Another huge effort that has been ongoing since early December is formulating a commentary in response to the USPTO’s notice of proposed rulemaking overhauling its Code of Professional Responsibility. Since the stated purpose is to conform to the ABA’s Model Code, the ABA obviously has a special interest. Carol Langford and Ron Myrick worked tirelessly to prepare a thorough analysis of the 200 page proposal and have coordinated with other (non-IP) standing committees and entities of the ABA devoted to professional responsibility issues. We anticipate presenting the proposed commentary to Council for discussion and approval at its June 1st special meeting, and then seeking blanket authority to submit it to the USPTO. Global Patent Improvement and Harmonization.

As reported previously, our Chair-Elect Bill LaFuze has spearheaded a Task Force on Patent Improvement and Harmonization, endeavoring to review and organize our often obsolete and sometimes conflicting past Section policy, and to formulate new policy as appropriate, to position the ABA to be a positive force in harmonization negotiations. Special appreciation is deserved by Task Force member Bob Armitage, who has worked tirelessly and effectively to aid in the effort of making what is extremely complex, understandable and manageable. The work of this Task Force, and of Council in addressing its recommendations, is ongoing.

Section Trip To China – July 3-11

Elizabeth Chien-Hale reports that the China trip has reached its target critical mass and will proceed. It is not too late to sign up. Contact Elizabeth at chien-hale@aol.com. The trip will be a wonderful opportunity to explore China while meeting with professional IP colleagues and officials of Chinese governmental offices, commissions, courts and tribunals that have responsibility for intellec-tual property matters and disputes.

AIPLEF

The work of some unsung heroes of the Section is detailed later in this Bulletin in connection with the Jan Jancin award, and I wanted to mention the names of, and give thanks to, the three IPL Section leaders who we have ap-pointed as Trustees of the Ameri-can Intellectual Property Law Education Foundation, and who are serving in that capacity: Patti Smart, Kate Spelman, and Gordon Arnold are doing a wonderful job in that capacity.

I conclude with a note of thanks to all Section members for their hard and good work on behalf of our Section and the IP system thus far this year. I hope to see you in Toronto!

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Section Seeks Contributors For Two New Books

The Section is seeking contributors for a two new books, Trademark Infringement Remedies, and Writing Patents for Litigation.

For Trademark Infringement Remedies, the opportunity is available to practicing attorneys with substantial experience counseling U.S. clients, prosecuting trademark applications or litigating the enforcement of trademarks, who have some experience writing. The Section also needs members to peer-review individual chapters and offer constructive comments to the authors. To find out more about contributing to this important Section sponsored trademark reference book, contact Brian Banner at bbaner@bannerwitcoff.com with a brief synopsis of your trademark practice and writing experience.

For Writing Patents for Litigation, practicing attorneys with substantial experience litigating patents (or prosecuting patents), and who like to write, are invited to consider the opportunity.

The Section seeks a team of authors and peer reviewers to develop the chapters and balance the views of what works in the courtroom with what will also pass muster with the patent examiner. To find out more about contributing to this innovative legal reference, contact Jerry Riedinger at jriedinger@perkinscoie.com with a brief synopsis of your patent practice and writing experience.

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Committee News

Pro Bono Activities Committee (Committee #509)

The Pro Bono Activities Committee (#509) has spent the last year gathering information on the various entities in the U.S. that pro-vide pro bono intellectual property services. The committee has gathered and organized this information by state and plans to launch an informational website that allows pro bono clients to locate appropriate IP services in their area. The website can be found clicking this link.

The site currently includes a listing of pro bono entities across the country that provide pro bono intellectual property services. The website was just launched and is in the process of being refined. Ultimately, users will be able to search for pro bono entities by state. The information displayed for each entity will include the entity’s name, contact person, services offered, eligibility criteria, etc. The website will also allow new pro bono entities and attorneys interested in volunteering to register with the site. Since the launch of the site in May, inquiries have al-ready come in from more pro bono entities that want to be included on the site.

Committee Chair Mark V. Campagna wishes to thank the hard work of sub-committee chairs Stephen Christopher Swift, Barbara Beth Bressler, Anne Cowett, and Joseph W. Mott, who helped gather the necessary information and contact the various pro bono entities in the U.S. Providing this information in a centralized and easy to use website will further the goals of this committee, which include supporting the pro bono activities of the intellectual property bar. Matching clients in need of pro bono IP services with attorneys who want to give back to their communities is a noble and worthwhile goal that should be furthered by this initiative.

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ABA Moves Headquarters to New Location

At the end of the business day on May 13, the American Bar Association officially moved from its longtime home at 321 N. Clark Street, and satellite location at 541 N. Fairbanks, to its new headquarters at 321 N. Clark Street, opening there on May 17.

More than 350 truckloads carrying more than 20,000 boxes – including some 29,000 linear feet of filing – were moved.

The American Bar Headquarters, as it will be known, will be dedicated on Friday, June 11. Presiding over the ceremonies will be ABA President Dennis W. Archer of Detroit. The ceremony will include a keynote address by U.S. Supreme Court Justice Anthony M. Kennedy. Archer and Kennedy will be joined by numerous state, county and city officials.

Please note the address change in your files, rolodexes, databases, etc., for all staff of the ABA, including your Section of Intellectual Property Law staff. The Section’s new address is:

American Bar Association Section of Intellectual Property Law 321 N. Clark St., 19th Floor Chicago, IL 60610

Phone numbers and e-mail addresses remain the same, but the Section fax number has changed to 312/988-6800.

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2004 Jan Jancin Award Nominations Sought

The American Intellectual Property Law Education Foundation (AIPLEF), the American Bar Association Section of Intellectual Property Law (ABA-IPL), and the American Intellectual Property Law Association (AIPLA), announce that invitations have been extended to accredited law schools to nominate a law student who has excelled in the study of intellectual property law, to be the recipient of the 2004 Jan Jancin Award, which includes a cash award of $5,000.

The late Jan Jancin served not only as President of AIPLA and Chair of the ABA-IPL Section, but served with distinction in other leadership roles in other intellectual property law associations, nationally and internationally. Students of IP law and growth in quality IP law education were keen interests of Mr. Jancin. Additionally, he was a persistent and perceptive observer of the legislative process as it related to all aspects of IP law, and regularly reported to several IP law associations on those activities. The ABA-IPL Section, AIPLA and AIPLEF are pleased to continue the tradition of honoring an outstanding IP law student each year in the name of Jan Jancin. The winner will receive, in addition to the $5,000 cash award, reasonable travel expenses to receive the award at the 2004 AIPLA Annual Meeting in Washington D.C. October 14-16, 2004. The recipient must be able to attend in person to receive the award, which will be presented during the conference. Law schools may submit a nomination of a law student enrolled in their institution in the year 2004 (including year 2004 graduation candidates) who has exemplified excellence in intellectual property academic studies, is interested in pursuing a career in intellectual property law, and may have participated as a leader in intellectual property-related student activities. Nominations should be submitted in the form of a letter of recommendation, enclosing a one-page summary of the achievements of the nominee. Nominations should be submitted so that they are received by no later than June 15, 2004, addressed to:

American Intellectual Property Law Education Foundation, 485 Kinderkamack Road, 2nd Floor, Oradell, NJ 07649. Fax: 201/634-1871. e-mail: admin@aiplefoundation.org.

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Council Selects Resolutions for Summer IPL Conference Debate

The Section Council met on April 26 to discuss resolutions proposed by the Section Committees for adoption as Section policy. From these, the Council selected six 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 Section Business Session, Thursday, June 17, 2004, during the 2004 Summer IPL Conference. To access the committee report that accompanies each proposed resolution, visit the Section website at www.abanet.org/intelprop/summer2004/business_session.html. If you have questions, contact the Section at intelprop@abanet.org, or call 312/988-5595.

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. 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/summer2004. Registration brochures for the Summer IPL Conference are in the mail. Support the Section resolution process and register today to attend the 2004 Summer IPL Conference in Toronto.

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 Section Director, Betsi Roach, as soon as possible.

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 2004 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 Section Director, Betsi Roach, for receipt no later than May 25, 2004. 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 25, 2004, 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 2004 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.

 

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2003-04 Resolutions Classified For Full Debate

 

(Asterisk denotes Proposed Resolution was amended by Council at April 26 Classification Meeting.)

 

Proposed Resolution 101-2*
Standing for Declaratory Judgment Actions, and Consequences of Notice on Willful Infringement Liability.

RESOLVED, that the Section of Intellectual Property Law opposes, in principle, legislation that would require a patent owner to provide a particular form of notice of a particular form to a potential an infringer of a patent as a condition precedent to recovery of enhanced damages based on a finding of willful infringement.

Proposed Resolution 101-5
Awarding The Right To Patent To The First Inventor To File.

RESOLVED, that the Section of Intellectual Property Law reaffirms its support in principle for enactment of legislation providing that the right to a patent shall belong to the inventor who first files an application for patent containing an adequate disclosure (35 U.S.C. §112) of the invention or, in the event of an assignment of rights, shall belong to the assignee thereof, and FURTHER, the Section supports concomitant efforts to conclude international patent harmonization agreements that incorporate such principle, and IN ADDITION, the Section rescinds the following past actions as potentially inconsistent with the foregoing: 1992 AR73?R102?8; Defeated by ABA 1993, 1991 AR58?R102?1, 1987 SP 57?R102?1, and 1967 S.SP 71.

Proposed Resolution 101-6*
Rescission Of 1967 ABA Position On Right To Patent.

RESOLVED, that the Section of Intellectual Property Law reaffirms its support for, and recommends to the House of Delegates, the rescission of, the following resolution that was adopted by the American Bar Association in 1967, and so recommends to the House of Delegates:

“RESOLVED, that the American Bar Association is opposed in principle to: … Any change in the law which would have the effect of awarding the patent only to the applicant who is the first to file his application.”

Proposed Resolution 108-8*
FTC Recommendation 7.

RESOLVED, that the Section of Intellectual Property Law supports favors, in principle, the requirement that publication of all patent applications be published within 18-months of filing and that such publication represents as an appropriate balance between the interests of the applicant and the public. and; Specifically, the Section supports in principle, the elimination of special exceptions to and redactions from published U.S. patent applications as permitted under the American Inventors Protection Act and repeal of 35 U.S.C. §122(b)(2)(B)(i)-(v).

Proposed Resolution 108-9*
FTC Recommendation 8.

RESOLVED, that the Section of Intellectual Property Law supports favors, in principle, that commercial use (including substantial preparations for commercial use) should be recognized as a personal defense to patent infringement, if undertaken in good faith by a person who has reduced the patented invention to practice prior to the effective filing date of a patent. and; Specifically, the Section supports an amendment to the provisions of the American Inventors Protection Act of 1999 providing for such rights to remove restrictions on the enjoyment of such rights inconsistent with this principle.

Proposed Resolution 204-1*
Trademark Dilution Federal Preemption of State Trademark Laws.

RESOLVED, that in the event that an amendment to as part of a satisfactory and comprehensive revision of the Federal Trademark Dilution Act codifying the principles underlying Proposed Resolutions 201-1, 201-2, 201-3 and 201-4, is introduced adopting a likelihood of dilution standard, the Section of Intellectual Property Law supports favors, in principle, as part of this amendment to the Federal Trademark Dilution Act the inclusion of a provision that would preempting any state law granting protection protecting against the dilution to of any trademark or service mark not subject to eligible for protection under the Federal Trademark Dilution Act.