Mark T. Banner
Section Chair 2002-03

There is no doubt that Intellectual Property Law is a "hot" area of law. Last year the Supreme Court heard and decided two cases dealing with patent law, JEM Ag Supply Int’l, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124, 122 S. Ct. 593, 60 USPQ2d 1865 (2001) and Festo Corp v. Shoketsu Kinzoku Kogyo Co.¸ 122 SCt 1831, 62 USPQ2d 1705 (2002). In both cases this Section had taken positions, secured ABA policy, and the ABA submitted amicus curiae briefs reflecting the Section's comments.

In its next term the Court will hear two more intellectual property cases. One deals with copyright law and the other deals with trademarks. The copyright case involves a challenge to the Copyright Term Extension Act of 1998 (CTEA), Pub. L. No. 105298 (1998). The case, Eldred v. Ashcroft, challenges the 20-year extension for existing and future copyrights as being beyond the power of Congress and being unconstitutional on various grounds. The Section had supported enactment of the CTEA when originally developed.

The trademark case to be heard involves the Federal Trademark Dilution Act. In Victor Moseley and Kathy Moseley, d.b.a .Victor’s Little Secret v .Victoria’s Secret Catalogue, 122 S.Ct. 1536 (cert. granted April 15, 2002), the Supreme Court will address a split of authority in the regional circuits as to whether, in proving dilution under the Act, a Plaintiff is required to present evidence of actual harm, or whether only a likelihood of harm is necessary. In this case the position of the Section will be presented to the Court through an amicus brief of the American Bar Association.

These are just some of the examples where Section activity can help shape the law.

The Section expresses its view in many forums as well. During the past year Section positions were presented to Congress, to the Department of Justice, to the FTC, to the U.S. Trade Representative, to various international organizations, and in formal and informal sessions with representatives of the U.S. Patent and Trademark Office. Section positions covered the proposed PTO fee schedule adjustments, the ongoing hearings Section Testifies on PTO Fee Schedule and Reforms conducted by the FTC and DOJ involving "Competition And Intellectual Property Law And Policy In The Knowledge-Based Economy," and on the subject of Market Power and Intellectual Property. Therefore, Section positions touch on virtually all aspects of IP law.

Where do these positions come from? They come from you, the members of the Section. None of these positions would have existed without the active participation of the membership, acting through the more than 85 Section committees. Active committees of the Section are where Section positions are devised, debated, refined, and voted upon by members of the committee. In the normal course of events, when a committee has taken a position on an important topic, it is reviewed by any other committees having an interest in the area, and ultimately reviewed by the Section Council. In some instances, where time may be of the essence, the Council can adopt a position on behalf of the Section. In other instances, the Council may present the Committee work to the entire membership for consideration at its business session held at the Summer IPL Conference each June. In either event the entire membership has an opportunity to review and approve or disapprove any action presented by the Committees or taken on these issues by the Section Council.

Committees of this Section are involved in studying and evaluating all aspects of intellectual property law. The various committees are listed on our Section's web page at www.abanet.org/intelprop /committees.

One of my goals for the coming year is to continue to promote membership involvement in the work of the committees. Through this broad-based committee structure, with active voting members from all aspects of our Bar, the work of the Section can truly represent the viewpoints of the intellectual property bar as a whole. Although the committees cover the waterfront in terms of subject of areas, technical competencies, and professional topics, there remains an ongoing challenge to ensure that the committees have active participation of a broad range of members from different practice settings, ages, and experiences. Too often professional association work is left to "someone else," as the challenges of daily practice increase and less time is available for "extracurricular" activities.

I hope to reverse that trend. Our profession deserves the best our members have to offer. I therefore encourage every Section member to be involved in at least one committee of the Section. I especially solicit participation from corporate settings, younger lawyers, women lawyers, and members that can bring racial and ethnic diversity to our deliberations. I encourage lawyers from big firms and from solo practices to bring their unique and sometimes differing perspectives to the work of the Section. When we take advantage of our great diversity, our committee work, which then results in positions that are taken to the entire membership, will be truly reflective of the considered judgment of a broad and richly diverse body of professional experience.

Any Section member who has an interest in the work of a particular committee or subject area, and wishes to become a member of that committee, will be appointed and will have the opportunity to participate in developing the policies that shape intellectual property law. In addition, I challenge every committee chair, division head, and other leader in this Section to reach out and find at least one Section member who has not been actively involved in the past, and to encourage and mentor that member as a new and active participant in the work of the IP Law Section.

If you want to be involved in intellectual property law, contact me directly, or contact the committee chairman directly, and you will have that opportunity. That is our commitment to our membership, which comprise our Section’s greatest strength.

On October 16, 2002, the U.S. Patent and Trademark Office will hold a gala celebration dinner to commemorate the bicentennial of the U.S. Patent and Trademark Office. Although the patent system began in 1790, early patents were examined by State Department Clerks who held other responsibilities. It wasn’t until 1802 that a separate government entity was created to examine patents, and the first Patent Office was formed.

The Section of Intellectual Property Law is one of the organizations helping to underwrite this wonderful celebration. All of us can be proud of the work of our P.T.O. over the years, and can join in the celebration. A link to a Presidential Proclamation commemorating the bicentennial of the U.S. Patent and Trademark Office can be found at www.abanet.org/intelprop.

By Hayden W. Gregory
Section Legislative Consultant

On July 31, the U.S. Senate passed S. 812, the "Greater Access to Affordable Pharmaceuticals Act of 2002," a bill designed to improve public access to affordable medicines, largely through improving the competitive position of generic drug manufacturers. The bill contains a number of patent-related amendments to the Drug Price Competition and Patent Term Restoration Act of 1984 ("Hatch-Waxman"). Under the balance struck by Hatch-Waxman, research-based pharmaceutical firms are able to recover some of the patent term effectively lost during regulatory review, and generic drug manufacturers benefit from accelerated regulatory review procedures for their new versions of approved products. Despite its numerous patent law amendments, S. 812 was not referred to or acted on by the Judiciary Committee, which has jurisdiction over patent matters. During the ABA Annual Meeting in early August, the Section Council approved four resolutions expressing opposition to provisions of S. 812 that would curtail patent protection in the Hatch-Waxman context. The four resolutions were recommended in an expedited report of the Section’s Patent Legislation Committee. The opposed provisions include ones that would preclude enforcement of patents for failure to comply with administrative reporting requirements and for failure to bring an enforcement action within an administratively defined time period following filing of a generic application. Also opposed are provisions that would curtail the right of a patent holder to a 30-month stay of FDA action on generic drug applications that are the subject of patent infringement suits. The resolutions as approved by the Section Council and the report of Committee 101 recommending them are available on the Section website.

S. 812 now moves to the U.S. House of Representatives, where action on the bill is uncertain.