Robert W. Sacoff
Section Chair, 2003-04

As Socrates said to the jury in the Court of Athens, "The unexamined life is not worth living." Consistent with that good advice, the IPL Section is undertaking a critical self-examination of its strategy, methods, activities and comparative position vis-a-vis other IP professional associations. As this column is written, we have just disseminated a member survey to measure member satisfaction with what we are doing and how well we are doing it. In addition, the Section's leadership is about to convene in Chicago over the weekend of September 12, 13 and 14 for its triennial Long-Range Strategic Planning Retreat. Our meeting facilitator has conducted detailed preparatory interviews with all the participants, whose comments have generated the discussion agenda.

As reported last month, our Section's pre-survey and pre-retreat strategy for the year comprises a number of themes: maintain and expand our high-powered CLE meetings and output; maintain and improve the types and quality of our publications; increase diversity in our Section's membership, leadership and activities; maintain and improve our Section's advocacy both domestically and inter-nationally. Some details follow on what we are doing to achieve these goals.

Education

In addition to presenting its own educational programs, our Section co-sponsors programs with other ABA and non-ABA entities when we believe it will enhance our Section's reputation and promote our goal of providing high-quality CLE. As of this writing, we will co-sponsor two CLE programs in the coming year. First, we will co-sponsor with AIPPI a day-and-a-half seminar at Fordham Law School on October 3 and 4 entitled "Trying an IP Case in Foreign Countries - Five Mini-Trials." IPL Section representatives are integrally involved as organizers and speakers, and the program will be co-moderated by our International Activities Coordinator, Mike Meller. The program brochure is accessible online at www.aippius.org/meetings.htm.

Second, our Section will co-sponsor a program with the Law Education Institute in Snowmass, Colorado, from January 3 to 8, 2004. The IP portion of the program will be co-moderated by Section Council Member Linda Resh. The IP program is accessible online at www.lawedinstitute.com/pdf/Intellectual.pdf.

Our own CLE programs are already being planned by the pertinent committee co-chairs. Our 19th Annual Spring CLE Program will take place in Washington, DC, on April 1-2, 2004. If you wish to suggest topics or recommend speakers, please contact our program co-chairs directly, Amy Benjamin (abenjamin@darbylaw.com) and Monique Morneault (mmorneault@wallywag.com).

Our Summer IPL Conference in Toronto will take place from June 16-19, 2004. Toronto and environs are the home of several Canadian IP organizations, and they have already expressed enthusiasm in hosting our annual meeting, as well as attending and participating in it with us. Please contact program co-chairs Marisia Campbell (mcampbell@osler.com) and Fred Koenig (cfk@volpe-koenig.com) with program suggestions.

Publications

We will be reexamining the types and quality of Section publications in our strategic planning retreat, such as the Chair's Bulletin and quartely IPL Newsletter. But meanwhile, we already have several exciting projects in process with BNA Books. First, Jerry Riedinger is leading the preparation of a book on drafting patent claims with an eye toward litigation. Second, Brian Banner is leading the preparation of a book on trademark remedies.

Diversity

An essential goal of our Section is promoting membership and leadership diversity of all types - gender, racial, ethnic, young lawyers vs. senior lawyers, in-house counsel vs. private practitioners vs. law school professors, patent lawyers vs. trademark lawyers vs. copyright lawyers, and so forth. Our Section and our effectiveness can only benefit by maximizing the diversity of the individuals comprising our Section and its leadership, and I have tried to implement these principles in making committee chair appointments for the year.

To these ends, June Besek and Dolores Hanna are working on a number of creative initiatives as co-chairs of our Committee on Women and Minorities in the Profession, including a speakers' bureau and networking receptions such as the one held in San Diego. Patti Smart has been appointed our Section's liaison to the ABA Commission on Women. Philip Hampton has been appointed our liaison to the ABA Commission on Racial and Ethnic Diversity in the Profession. As a former Commissioner for Trademarks, Phil is well connected in the IP profession and will do a great job in helping us.

From the standpoint of affording opportunities to young lawyers, Council and a blue ribbon committee are considering a creative proposal from Kim Jessum and Melanye Johnson, co-chairs of our Young Lawyers Committee, to create a Young Lawyers Fellows Program. With respect to encouraging in-house counsel to become more active in our Section, Lisa Dunner and Nick Setty have devoted more space to in-house concerns in our quarterly IPL Newsletter, and we have set up a Special Committee on In-House - Outside Counsel partnering this year, in addition to our Committee on Corporate
Practice.

International and Domestic Advocacy

We are taking steps to increase our visibility and voice on the international level. Co-sponsoring the Fordham program on foreign trial practice, as described above, is a good example. As another example, the Section will participate in a Patent Harmonization Meeting in London on November 10 and 11. The meeting is being sponsored by AIPLA and the Institute of Chartered Patent Agents. The ABA IPL Section will be represented by a delegation led by Chair-Elect Bill LaFuze, and will also include Mike Meller, our International Activities Coordinator, and Todd Dickinson, co-chair of our Committee on Pat-ent System Policy Planning.

As for Section advocacy to the U.S. courts, legislature and regulatory agencies, we will continue our efforts to end patent fee diversion and monitor the top-to-bottom restructuring of the USPTO that is in progress. Our committees are all starting their year's work on the reports and resolutions that form the foundation on which Section and ABA policy is built. I look forward to giving you further progress reports as the year progresses, as well as news of the outcome of our survey and strategic planning process.

Fee Diversion Lawsuit Survives Dismissal Motion

Hayden W. Gregory
Section Legislative Consultant

A legal challenge to the practice of diversion of USPTO user fees to fund unrelated programs was kept alive by a court ruling in August.

Two years ago, suit was filed in the U.S. Court of Federal Claims challenging the diversion of USPTO user fee revenue on several constitutional grounds. Figueroa v. U.S., (01-457C). On August 15, the Court ruled on a motion to dismiss filed by the United States. The Court dismissed a count alleging that fee diversion violates the 5th Amendment prohibition against taking of private property without just compensation and another alleging that diversion constitutes an unconstitutional direct tax. However, the Court refused to dismiss and ordered further proceedings on the count that relates most specifically to intellectual property and to PTO user fee diversion. This count alleges that diversion of user fee revenue violates the IP clause of the Constitution, in that the appropriations acts that provide for such diversion violate a constitutional requirement that all patent and copyright laws must "promote the progress of science and useful arts."

At a November 14, 2002 hearing on the government's motion to dismiss, Judge Futey noted the relevance of the case challenging the Copyright Term Extension Act (CTEA) to Figueroa's challenge. That case, Eldred v. Ashcroft, had been argued in the Supreme Court and was awaiting decision. The Eldred petitioners' complaint, like that in Figueroa, challenged the statute in question on grounds that it failed to "promote the progress of science and useful arts." Judge Futey therefore deferred ruling on the motion to dismiss the Figueroa complaint until Eldred was decided.

Following the Supreme Court's January 15, 2003 decision in Eldred, Judge Futey ordered further proceedings on the motion to dismiss, leading to his August 15 decision.

The government argued that since the Eldred petitioners did not directly challenge the CTEA in their Supreme Court appeal on grounds that it violated the "promotion" introductory language of the IP Clause, and since the Supreme Court did not address the issue in its opinion, the state of the law on this issue was left unchanged by Eldred. The government further argued that an earlier decision of the U.S. Circuit Court of Appeals for the District of Columbia (Snapper v. U.S.) was left as controlling precedent. Snapper had held that the introductory language of the IP Clause is not a substantive limit on the power of Congress to enact IP legislation.

Judge Futey agreed that Eldred left the law unchanged in this regard, but reasoned that relevant Federal Circuit decisions that express views contrary to the D.C. Circuit's Snapper decision were also left intact. Judge Futey opined that, given a conflict between the two Circuits on the issue in question, the Federal Circuit decisions are controlling. He also expressed reluctance to deny any substantive meaning to the phrase "to promote the progress of science and useful arts" in the IP Clause. He found support for this view in the opinion of the Supreme Court in Eldred, which contained the following analysis: "The justifications we earlier set out for Congress' enactment of the CTEA, . . . , provide a rational basis for the conclusion that the CTEA 'promote[s] the Progress of Science.'" Judge Futey reasoned, "If the introductory language lacked any substantive limitation, the Supreme Court would not have engaged in what would have been deemed extraneous and unnecessary analysis."

A copy of the U.S. Court of Federal Claims Opinion can be seen at www.abanet.org/intelprop/figueroa.pdf. An extensive list of pleadings and court filings in the case is available at www.hhoglund.com.

Ethics and Professional Responsibility
(Committee 502)

Carol M. Langford
Committee Co-Chair

Since the election of new Section leadership, the Ethics and Professional Responsibility Committee Chair, Carol Langford, drafted several ethical dilemmas and sent them out to committee members for input. The issues were developed with the assistance of the Washburn listserv (a listserv of professors of ethics as well as judges) and the APRL listserv (a listserv of lawyers who practice before the State Bar Court of their particular jurisdiction).

The ethical issues ponder questions, such as how does an intellectual property attorney approach an ethical dilemma that is either not in ethics code, the ABA opinions, or case law, or is inadequately covered.

Since intellectual property matters have the highest malpractice verdict awards, the subject matter is relevant.

Those interested in contributing to this Committee should contact Carol Langford, at 925/938-3870.

IP Licensing
(Committee 413)

David Rose
Committee Chair

A new committee, Licensing and Related Transactional Issues (Committee 413), was created in August. Now is an opportune time to get in on the ground floor and get involved in the work of this new committee.

The scope of the committee includes nearly all licensing topics including patent licensing, trademark licensing, copyright
licensing, international technology transfer, and software licensing. This committee will serve as the engine for programs, meetings and publications on the subject of licensing.


Updated Electronic
Committee Information

A number of different Special Committees join the Section this year. See an updated committee list at www.abanet.org/intelprop/comchair.html. This list also includes Committee Chair contact information.

All Section Committee electronic Listservs® are updated and active. Committee members' email is included in the list for each appropriate Committee. One email address allows mass communication with all Committee members. Committee members are notified of their respective Listserv® address.

EU Software Patent Directive

As this issue went to press, the European Parliament was trying to reach a compromise on the proposed Software Patent Directive. Originally scheduled for September 1, the vote was delayed until September 22 to allow more time for dicussions by the members of Parliament.

In early June, the Parliament's legal affairs committee had produced a report on the matter and made a number of amendments to the Directive as originally proposed by the European Commission. Proposed amendments which would have rejected software patents in all forms were voted down by the legal affairs committee.

A number of amendments were adopted which clarified some points of the original text to emphasize that patents in Europe would only be granted for technical inventions - an expansion into the realm of patents for business methods was not being proposed.

More information will appear in the November issue of the Chair's Bulletin. For further information on this topic, contact Dr. Robert Harrison at rharrison@iprights.com.

CLE Program to Highlight Balancing Interests and IP

The ABA's Section of Public Contract Law will offer a CLE program titled "Intellectual Property: Balancing Government and Contractor Interests" on November 6-7, 2003 in New Orleans.

This program will address the practical application of IP law in a variety of contexts, including the basics of IP negotiations in federal procurements, IP considerations at the state and local level, and the unique challenges for IP. This program will also evaluate IP negotiations from a third dimension, the perspective of the subcontractor in addition to issues that Government and prime contractors face.

Complete program information and registration is available at www.abanet.org/intelprop/november_pcl.pdf.

Chair Appoints Section Nominating Committee

The following Nominating Committee has been appointed by Section Chair, Robert W. Sacoff for the year 2003-2004:

Edward G. Fiorito
IP Consulting Attorney
6925 Spanky Branch Road
Dallas, TX 75248
972/380-1070
Fax: 972/380-9154
ipconsulting@msn.com

Charles P. Baker
Fizpatrick Cella Harper & Scinto
30 Rockefeller Plaza
New York, NY 10112-3801
212/218-2100
Fax: 212/218-2200
cbaker@fchs.com

Cynthia E. Kernick
Reed Smith, LLP
435 Sixth Avenue
Pittsburgh, PA 15219-1809
412/288-4176
Fax: 412/288-3063
ckernick@reedsmith.com

The Nominating Committee welcomes members' suggestions for nominees for the offices of Chair-Elect, Vice Chair, Secretary, Financial Officer, and four new members of Council for four-year terms expiring in 2008.

Contact Nominating Committee Chair Edward G. Fiorito.

Under the Section Bylaws, William L. LaFuze, current Chair-Elect, will automatically assume the office of Section Chair on September 1, 2004.

The Section's Business Session with Elections will be held Saturday, August 7, 2004 at the ABA Annual Meeting in Atlanta. All Section members are invited to attend this meeting and vote.

Plan ahead - visit our meetings calendar page for updates on future Section meetings.