Robert W. Sacoff
Section Chair, 2003-04

This issue of the Chair's Bulletin is unique in that it contains the Summer IPL Conference brochure, to be held June 16-20 in Toronto. Accordingly, we are sending this issue to many who are not already Section members, but are IP practitioners and members of various Canadian Bar Associations, local Bar Associations and members of sponsoring firms. I therefore take this opportunity to invite all to attend our Summer IPL Conference; to welcome readers who do not already belong to the ABA or the IPL Section, and to encourage them to join; and finally, to report on recent Section developments.

The Upcoming Summer IPL Conference in Toronto

The Summer IPL Conference will combine a comprehensive selection of continuing legal education sessions covering a wide array of intellectual property law issues. A detailed CLE program is included in this issue. The Section's traditional policy-making debates at the Business Session that focus on important IP issues of the day are a program highlight. The Section Council meets in April to discuss resolutions proposed by the Section Committees for adoption as Section policy at the Busi-ness Session. From these, the Council selects resolutions from various areas of IP law for debate during this year's Summer IPL Conference. The resolutions are posted on the Section website in advance of the debate at www.
abanet.org/intelprop/spring2004/resolutions and will also be identified in the June Chair's Bulletin. In addition to current issues discussed in the CLE programs and the Business Session, there will be CLE programs on ethics.
The Conference will also afford excellent networking opportunities among international colleagues. Toronto is a world-class city, and our meeting will feature a number of social events, such as various receptions, an evening at The Second City (the famous comedy repertory troupe), and an art gallery "crawl." Recreational events include the annual tennis and golf tournaments, as well as a scenic bike ride. Again, specifics of these events are available in the enclosed program brochure. I hope to see many of you there - both familiar faces and first time attendees.

ABA Membership

The ABA welcomes lawyers practicing outside the United States, legal educators, paralegals and legal assistants, law-office administrators, law librarians, consultants, and anyone else who has an interest in the law to become a member. As an Associate Member of the ABA, you will receive benefits and services that connect you to the national and international legal communities. Benefits include career-enhancing networking opportunities by phone, online or in person; cutting-edge legal developments from award-winning publications; specialty Sections, Divisions, Fo-rums in all substantive areas of interest; exclusive discounts; and more.

ABA membership provides a wealth of information about the legal community through the weekly e-Report and the monthly ABA Journal, which identifies legal trends. Additionally, the ABA Member Advantage Program offers preferred savings on products and services, such as lodging and car rental.

ABA Section of Intellectual Property Law Membership

Anyone, who is not already a member of the Section, or ABA, can easily join today at www.abanet.org/members/join. The Section of Intellectual Property Law advances the interests and endeavors of intellectual property lawyers to improve intellectual property law. Section leaders work hard to advocate these interests in Congress, before applicable agencies, in the U.S. Courts and abroad, as sweeping changes face the intellectual property law system and community.

Section membership affords you timely IP law e-mail updates, delivered to members through the monthly Chair's Bulletin and on-line through our e-News. The Legislative Newsletter, from our legislative consultant in Washington D.C, Hayden Gregory, is sent via e-mail as soon as legislative news breaks. The IPL Newsletter provides in-depth articles and analysis that arrive quarterly through the year. The Annual

Report contains substantive reports and resolutions from our Section's approximately 85 committees.
Section membership also enables you to join any of our Committees - free of charge. Section committees allow you to delve into specialized areas of intellectual property law. Committee meetings and member-only discussion lists will give you access to an inner circle of the world's leading experts in specialized areas. Connect with potential employers, clients and mentors, and distinguish yourself as a leader among the nation's best IP lawyers.

The Section's homepage, www.abanet.org/intelprop contains a wealth of information of interest to intellectual property lawyers. In addition to offering links to all of the Legislative, Ex-ecutive and Judicial branch activities (including our testimony and amicus curiae briefs), the web page offers useful information on employment opportunities, information on a career in IP law, e-mail discussion groups (on legislative activities, international practice and for law students, as well as law professors) and information on the Committees of the Section and future Section out-reach initiatives, such as the Section Trip to China scheduled for July.

Section membership offers discounted rates to various CLE offerings and meetings, including the Summer IPL Conference. The Section offers a number of CLE opportunities in different geographic locations, which are posted at www.abanet.org/intelprop/calendar.html.

Updates on IPL Section Activities

I am pleased to report that the Section has succeeded in obtaining Blanket Authority from the ABA to advocate our Section's positions on three current issues. "Blanket Authority" is the procedure through which an ABA Section obtains clearance to present its views and positions to a governmental body. The Section has now obtained this authority to advocate its positions on: (1) proposed amendments to the Federal Trademark Dilution Act (FTDA); (2) the Hague Convention on Ju-risdiction and Enforcement of Foreign Judgments; and (3) the European Union Commission's Proposed Directive on the Pat-entability of Computer-Implemented Inventions.

Updating our Section advocacy efforts, our Section Council adopted an additional resolution at its March meeting, favoring amending the FTDA to cover dilution by tarnishment as well as dilution by blurring. Most of the trademark bar had thought the FTDA already covered the traditional tarnishment theory of dilu-tion, but that was called into question by dicta in the Supreme Court's opinion in the Victoria's Secret case. We are circulating a request for Blanket Authority to expand my proposed testimony, www.abanet.org/intelprop/rws_testimony.doc in an April 22, 2004, hearing before the House Subcommittee on the Courts, the Internet, and Intellectual Property (see prior report at www.abanet.org/intelprop/april04chair.html).

Also posted on the Section's web site is the January 30, 2004, 24-page commentary on the USPTO's Notice of Proposed Rulemaking on amendments to the Rules of Practice before the USPTO Board of Interferences and Patent Appeals. The Section's commentary was submitted pur-suant to Blanket Authority, and the full text can be found at www.abanet.org/intelprop/rulemaking. I would like to thank Donna Meuth, co-chair of Com-mittee #103 (PTO Affairs - Patents), for her hard and excellent work in leading the preparation of this commentary.

On the Section CLE front, I would like to thank Amy Benjamin and Monique Morneault and all their speakers and moderators for their terrific job in organizing and presenting the Section's successful 19th Annual Intellectual Property Law Conference in Washington DC on April 1st and 2nd. Thanks also go to Melanye Johnson and Kim Jessum, co-chairs of the Section's Young Lawyers Committee, as well as their speakers, for putting on the popular Practical Tips program that immediately preceded the conference.

I encourage all who are not already members to join the ABA and our Section of Intellectual Property Law, and look forward to welcoming you to the Summer IPL Conference in Toronto, Ontario, June 16-20, 2004.

IP Legislative Update

Hayden Gregory
Legislative Consultant

House Passes Legislation to
Relax Obviousness Standard

The House of Representatives on March 10, 2004, passed H.R. 2391, the "Cooperative Research and Technology Enhancement (CREATE) Act of 2004." H.R. 2391 would make it easier for collaborative inventors who represent more than one organization to obtain patent pro-tection by relaxing the obviousness standard for patenting inventions that result from joint R&D programs.

The origins of these amendments go back to 1984, when Congress amended section 103 of title 35, United States Code to permit greater team research within corporations, businesses, and universities with-out the risk of a loss of patentability as a result of a determination that confidential information shared will-ingly among research partners con-stitutes prior art for obviousness purposes.

The current legislation was prompted by the Federal Circuit's 1997 obviousness ruling in OddzOn Products Inc. v. Just Toys Inc., the effective result of which is to limit the scope of the 1984 amendments to collaborative research efforts within a single legal entity, such as a corporation or university. This is because the exclusion enacted in 1984 applies only when the prior art subject matter and the claimed invention are "owned by the same person," which is ordinarily not the case in collaborative research efforts between more than one company or university.

H.R. 2391 would address this problem by defining the statutory term "owned by the same person" to include the parties to the joint R&D agreement, if (1) the joint R&D agreement was in effect before the invention was made; (2) the invention was made within the scope of the agreement; and (3) the patent application discloses the names of the parties to the agreement.

Copyright Royalty Arbitration
Reform Bill Passes House

On March 3, the House passed H.R. 1417, the "Copyright Royalty and Distribution Reform Act of 2004," which would reform the system established for distribution of copyright compulsory license fee collections by replacing the current Copyright Arbitration Royalty Pan-els (CARPs) with three full-time Copyright Royalty Judges (CRJs).
H.R. 1417 addresses the complaints that the CARP decisions are unpredictable and inconsistent by changing the structure from ad hoc arbitration panels to three permanent copyright royalty judges. To justify the need for these full-time judges, as well as to alleviate the overwhelming workloads at given periods of time, the bill staggers the timing at which the three various statutory licenses can be heard.

The bill also addresses the complaint that the process is unnecessarily expensive by eliminating the costs of arbitration upon private parties, and establishes a specific process designed to give small claimants greater ability to participate.

House Commerce Committee Approves Narrow Database Bill

On March 16, the House Energy and Commerce Committee favorably reported H.R. 3872, the "Consumer Access to Informa-tion Act of 2004," which would call for Federal Trademark Commission enforcement against misappropria-tion of databases. The bill provides that a violation of the act will be treated as an unfair or deceptive act or practice, enforced by the Federal Trade Commission under the Federal Trade Commission Act. A competing bill, H.R. 3261, the "Database and Collections of Information Misappropriations Act," was reported favorably by the Judiciary Committee on February 11 and reported unfavorably by the Energy and Commerce Committee on March 11. H.R. 3261 would provide broader protection for da-tabases than H.R. 3872, as well as for enforcement by private suits rather than by the FTC. The differences between the two bills will have to be resolved before either can be enacted.

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After 20 Years:
ABA Headquarters to
Relocate in May

The ABA will be relocating its headquarters in Chicago, after 20 years at the 321 N. Clark Street address. The new headquarters is located at 321 North Clark Street, Chicago, IL 60610-4714. The Section's office will be located on the 19th floor in the new building.

ABA personal phone numbers and e-mail addresses will remain the same.

The move will take place the weekend of May 14th. Thursday, May 13th is the last day that ABA employees are scheduled to be in their current office space. The ABA will be closed on Friday, May 14th.

Business will re-open at the new location Monday morning, May 17th.

The new location was decided at the 2001 ABA Annual Meeting, after a review of several possible locations in light of the lease expiration in May, 2004 at the current loca-tion on the downtown campus of Northwestern University.

The Section staff will face logistical challenges during this time of transition; your patience and understanding is appreciated.

Section Profile:
L. Marisia Campbell

Marisia Campbell practices law in Canada with the Ottawa office of Osler, Hoskin & Harcourt LLP where her practice concentrates on licensing, technology transfer, trademark prosecution and litigation. She assists members of Osler's Business Law Department by providing advice in major transactions and financings involving intellectual property assets. She also provides advice to technology companies on matters relating to software licensing, distribution and contracting with the Canadian federal government.

Marisia joined the Section in 2000 and since then has attended the Section's annual Summer IPL Conferences. As a Co-Chair of this year's Summer IPL Conference in Toronto, her goals are (a) to raise awareness of cross-border and international intellectual property issues; (b) to provide a forum for committee members to present the results of their activities; (c) to encourage diversification of participants with the assistance of the Women In IP Advocate Group and the Committee on Minorities and Women in the Profession; and (d) to offer differing perspectives on recent issues in intellectual property law through the participation of mem-bers from the bench, academia, government and bar (including both in-house and outside counsel).

Marisia enjoys the Section because it offers her and others the opportunity to network with intellectual property practitioners from the United States and worldwide.

Marisia looks forward to meeting you at the 2004 Summer IPL Conference in Toronto in June. A copy of the brochure for the conference is featured in this Chair's Bulletin. Online registration is now available at www.abanet.org/intelprop/summer2004.

Don Dunner To Be
Jefferson Medal Recipient

The New Jersey Intellectual Property Law Association announced its intention to award to Donald R. Dunner its 2004 Jeffer-son Medal of Honor for his contributions to the field of intellectual property law. The presentation will take place at a dinner dance to be held on June 4, 2004 at the Hilton Hotel in Short Hills, New Jersey.

Mr. Dunner was Chair of the ABA Section of Intellectual Prop-erty Law from 1995-1996.

He is also past President of the American Intellectual Property Law Association. He currently serves as Section Delegate to the ABA House of Delegates.

Mr. Dunner is a Senior Partner of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; he practices in the firm's Washington D.C. office.