Chair's Bulletin
VOL. 6 NO. 9 MAY 2002
Section Will Broadcast Its Debate On Resolutions
Free Over the Web During Summer IPL Conference
Webcast Debate to include First-to-File, Trade Dress and Copyright Extension Issues
Charles P. Baker
Section Chair, 2001-2002
For the first time all members of the Section will be able to hear and see the debate of proposed resolutions during the principal business meeting of the Section at the Summer IPL Conference. On the afternoon of June 27 the Section will webcast its Business Session from Philadelphia.
The debate during the Business Session is one of the highlights of our Section year. Resolutions proposed by the Section's committees are debated and adopted or rejected. The ones that are approved constitute the policy of the Section when proposing and backing new legislation, and new positions to be urged in international conferences.
Many of your have attended at least one of these meetings over the years and know how interesting they can be. If you have not attended one, and you have wondered how the Section decides what positions to take on current legislation or other matters, you will now be able to watch the process. If you have worked on one of the proposed resolutions, you will be especially interested to see its presentation and the outcome of the ensuing debate.
About a dozen key, current and often controversial issues are identified for debate during the meeting's three-hour session, including one or more issues from each major IP area’s trademarks, patents and copyrights. Former Commissioners of Patents and Trademarks and Registrars of Copyrights who are members of our Section often participate.
CLE accreditation has been requested for attendance at the Business Session from all states that require continuing legal education.
After the debate on each resolution, Section members who are present will vote on which position to adopt as the Section's policy.
Preliminary information about the webcast will be posted by mid-May on the Section website at www.abanet.org/intelprop/summer2002. Written materials identifying the resolutions to be debated and detailed reports and other supporting materials will be available on the site as well. Test video programs will also be provided by June 15 to assure hardware compatibility.
In deciding to conduct this webcast, the Council hoped that exposure to the debate would increase member’s interest in the Section and in its business, increasing future participation in committee work and in the Summer IPL Conference. It will also be a great educational tool for each of us individually about current and future developments in trademarks, patents and copyrights. If you cannot be at the Summer IPL Conference in person, this will be the next best thing. We feel sure you will benefit from attending if only in cyberspace.
Important Note: Deadline Looms for USPTO Survey of Older Registrations
The U.S. Patent and Trademark Office recently surveyed all registrants whose registration numbers are in the range 20,893 through 26,500, inclusive. The purpose of the survey, begun on October 24, 2001, was to ascertain whether these practitioners wish to remain on the register. In the April 2nd Official Gazette, the PTO published a list of 700 practitioners who have failed to return this Patent Office Questionnaire. All who failed to respond are to be taken off the list of registered attorneys if they do not file the completed questionnaire by May 17th. Therefore, a lot of very senior, but still active lawyers may be surprised to learn that they are no longer registered. For further information on this, and to obtain a blue Data Sheet to ensure your registration with the office, please contact LouWilda Turner or Shirley Rasheed Brown via mail addressed to Box OED, U.S. Patent and Trademark Office, P.O. Box 2327 Arlington, VA 22202-2327, or via e-mail to louwilda.turner@uspto.gov or shirley.rasheed@uspto.gov. They may also be reached by telephone at (703) 306-4097.
Practitioners who may know of a former colleague who is deceased but whose name still appears on the list are encouraged to inform OED as noted above.
Committee News
Patent and Trademark Office Affairs’Patents (Committee 103)
Mark Garscia and John C. Todaro, Co-Chairs
Committee 103, Patent and Trademark Office Affairs’ Patents, is considering presenting a resolution to the IPL Section recommending that 37 C.F.R. 705(b) and (d), and perhaps 35 U.S.C., 154(b) (3)(C), be revised to permit a longer period of time for filing a request for reconsideration of the PTO’s patent term adjustment (PTA) determination. At present, 35 U.S.C. 154(b)(3)(B)(ii) provides that the applicant will have one opportunity to request reconsideration of any patent term adjustment determination, made by the PTO. Further, section 154(b)(3)(C) provides that the applicant’s challenge of the PTO’s PTA determination on the grounds that applicant was unable to respond within a three month period "in spite of all due care" (see 35 U.S.C. 154 (b)(2) (C)(ii)), must be made "prior to the issuance of the patent." However, PTO challenges on other grounds, such as a miscalculation of time periods by the PTO, are not restricted by 154 (b)(2)(C)(ii)).
PTO regulation 37 C.F.R. 1.705 (b) provides that an applicant’s request for reconsideration of PTA determination must be filed "no later than the payment of the Issue Fee." In addition, under 37 C.F.R. "1.705 (d), if the patent issues on a date other than the projected issue date, and this necessitates a change in the PTA period, any request for reconsideration must be made within 30 days of the grant of the patent.
It is noted that under 35 U.S.C. 154(b)(4), an appeal of the PTO’s PTA determination must be made in the U.S. District Court for the District of Columbia within 180 days after grant of the patent. Therefore, if the time to request reconsideration is extended beyond the grant of the patent, 35 U.S.C 154(b)(4) would undoubtedly also need to be amended.
The "New Rules" Subcommittee B of Committee 103 has studied the patent term adjustment rules, and has concluded that the time limits of Rules 1.705(b) and (d) are unnecessary. Committee 103 is soliciting comments from members of the IPL Section, and is particularly interested in hearing from members who have experience with challenging PTA determinations. The Committee is also seeking comments on alternative time periods for challenging PTA determinations. Please submit any comments to Susan Mack, chair of Subcommittee B, at smack@sughrue.com
UCITA Working Group Presents Report
At the 2001 ABA Annual Meeting last August, the ABA Board of Governors authorized the creation of a working group of ABA members to review the Uniform Computer Information Transactions Act (UCITA) promulgated by the National Conference of Commissioners on Uniform State Laws (NCCUSL). The working group of nine members was appointed in September 2001 by ABA President Robert Hirshon. The Section of Intellectual Property Law was represented on the Working Group by Section Council member Susan B. Montgomery of Boston.
After months of reviewing UCITA and participating in public meetings in Washington, DC convened by NCCUSL’s UCITA Standby Committee, a report was drafted detailing the group’s evaluation of UCITA. The report was submitted to the ABA Board at its meeting in late January of this year.
Susan Montgomery advises that the group’s report was well received by the Board. The Board however did not engage in discussion of the report or take any action. The response of NCCUSL according to Montgomery has been "non-commital and reasonably cordial." She reported that UCITA will be on the agenda for the NCCUSL Conference this summer and that the concerns described in the Working Group’s report are being considered by the UCITA Standby Committee of NCCUSL for possible recommendation to the Conference.
Montgomery recommends the report to those Section members who are interested in understanding the current version of UCITA, or who may be called upon to participate in discussions at an ABA meeting this summer regarding UCITA, or related issues regarding the relationship between the ABA and NCCUSL. The report is posted in its entirety on the ABA website at www.abanet.org/ ucita/report_on_ucita.pdf
Susan B. Montgomery
Why are you a member of the Section?
In the mid-1980's, when I first learned of the Section, I felt my professional needs would be better met through other organizations (e.g., 8 years as chair of publishing and 3 years on the Board of INTA) and the ABA Section of Business Law. I first ventured back to the IP Law Section on a special committee that was as much commercial law as IP (Security Interests in IP). At this time, I was impressed with the commitment and collegiality of the members, and felt very much encouraged and supported by the leadership (initially John Kirk and Roger Coe, continuing now through Charlie Baker) and the Section staff (Betsi Roach and Hayden Gregory). By the time we had shepherded two law reform efforts (Revised Article 9 and the joint IP Law/Business Law Sections, FIPSA proposal to Congress), I had formed strong professional and social bonds with a number of people and felt very much at home in the Section. I suspect my reasons are fairly common among the members in the end I am a member of the Section of Intellectual Property Law because of the people and because the activities of the Section match my practice and professional interests.
What is your practice area?
My practice is in the areas of intellectual property, international transactions and commercial law, focusing on intellectual property strategic planning, exploitation and protection (cross-border planning for copyright, trademark, patent and trade secret protection); software and technology development; electronic commerce; IP asset acquisitions and collateral; and other domestic and international alliances, mergers and licenses. My clients and the work I do are about evenly divided between U.S. and non-U.S.
What does the future hold for the IP profession and the Section?
As a member of the post-war "baby boom", I have seen the significant impact my generation has had on this country's culture and economy. The increased interest in IP is creating an "IP boom" of new lawyers who could have similar effect on the profession. The IP Law Section is well positioned to influence and serve these boomers, and in doing so to take a leadership role in the practice and in the ABA.
Do you have any interesting anecdote to share?
When I was co-chairing the joint IP Law/Business Law Sections task force, we had over 50 people on the draft circulation list and most of them were on the conference calls, during which we drafted FIPSA by committee. The Business Law and IP Law members both had strong opinions, and very different perspectives and goals. The IP Law Section members did a good job of educating the commercial lawyers and guiding the group to a solution that protected IP rights and maintained the integrity and effect of the Federal IP statutes. But, knowledge and sound reasoning were not alone enough, achieving a successful result required endurance.
Litigation Section Committee Hosts Roundtables
The ABA Section of Litigation’s Intellectual Property Committee invites members of the Section of Intellectual Property Law to participate in its May roundtable luncheon discussions on the subject of "Economic Evidence in Patent Litigation". A number of cities around the nation will be hosting these roundtables throughout the month. Discussions will start at noon and continue for approximately 90 minutes.
The roundtable format helps to make these gatherings informal and easy for participants to meet in small groups at convenient locations to discuss current issues in intellectual property litigation. This successful program of roundtables is now in its third year.
A copy of the registration form and program information can be found on the website of the Litigation Section Intellectual Property Committee at www.abanet.org/litigation/committee/intellectual/roundtable.html. A full schedule of dates and locations for the roundtables is also available at this site.
Interested individuals are urged to invite any colleagues whom they think may be interested. Reservation forms should be submitted one week prior to the date of the Roundtable.
Individuals interested in hosting a program or preparing an outline are welcome to volunteer. Contact Marjory Basile, 313/496-7596 basile@millercanfield.com for more information on participating.
CORRECTION
In last month’s Chair’s Bulletin, the name of Jack C. Goldstein was inadvertently omitted from the Nominating Committee Report.
Mr. Goldstein has been nominated to a three-year term as a Delegate to the ABA House of Delegates. This term expires in 2005, and is a continuation of his current term, which expires in 2002.
ABA Section of Intellectual Property Law
2002 Summer IPL Conference
June 26 - 30, 2002
Networking * Social EventsSection Business * Committee Activity * CLE Programs
Tours * Tournaments
Where IP Lawyers Should Be
Register Online!
www.abanet.org/intelprop/summer2002
PHILADELPHIA
Hotel Room Block Deadline is May 24th. Call the Loews Philadelphia Hotel today to make your room reservations. 215/627-1200. ABA Summer IPL Conference rate is $215 single/$235 double.
For complete information and a registration form, visit the Section website at www.abanet.org/intelprop/summer2002
