William L. LaFuze
Section Chair, 2004–05

It is my distinct privilege to serve as your chair during the 2004-2005 ABA year. The ABA Section of Intellectual Property Law is the world’s largest association of intellectual property lawyers, and the ABA the largest group of lawyers in the world.
At the outset, I want to say how much I appreciate the remarkable job done by Bob Sacoff, my predecessor as Chair of the Section. Bob has led this organization well over the last year, and has established a high bar to follow regarding quality of leadership and the masterful handling of so many important projects. Bob succeeded many other giants in the field of intellectual property law who also chaired the Section over many years in the past and who helped to make this Section the splendid organization that it is today.
I have several goals for the 2004-2005 year. A few of the more important goals are as follows:
PTO Fee Diversion. For the last decade or so, the Department of Commerce has diverted about $800 million, according to some computations, from fees paid by users of the U.S. Patent and Trademark Office, to other agencies within the U.S. Department of Commerce. This money was intended to be used for operations of the PTO. Because of this diversion, the PTO has not been able to fund many essential services necessary to maintain a high-quality patent office search and examination program, nor carry on the process of examining and issuing patents in a timely manner. Some PTO programs have been curtailed or postponed due to lack of sufficient funds. As a result, patent pendency continues to increase, thereby depriving inventors of the full benefits of the patent system. A primary goal of the Section this year will be to end patent fee diversion to ensure that the PTO receives the funds it needs to operate in a manner that provides first-quality service in a timely manner. This issue has also been the subject of one of the ABA’s top 10 legislative initiatives for the last two years.
Diversity. The ABA and the Section have always tried to maintain a goal of having a diverse membership of active members and leaders. This year, we will implement a diversity plan that is designed to produce measurable, positive results by year-end. This will improve the diversity of membership and leadership, especially with respect to women, minorities, corporate practitioners, and young lawyers.
Membership. The ABA is one of the most powerful and influential organizations of attorneys in this country. This year the Section will make a special effort to use that power and influence to increase the size and stature of the intellectual property practitioners in this fine organization. The Section will plan and implement several programs to increase membership of the Section by a substantial number by year-end.
Governance and Control. For years the Section has operated as an extremely democratic organization – with grassroots studies being performed by committees, and resolutions of proposed positions of the Section being drafted and redrafted to conform to specific rules and procedures that often have caused resolutions on important issues to be stalled in a committee for unreasonably long periods of time. This process, although beneficial in many ways, on occasion has resulted in untimely and inefficient operation. This year, I hope to implement changes to give more control and administrative governance to the Section Council. In this manner, the Section can be more responsive to the need for taking positions more quickly and responsively so that the full power and influence of the ABA Section of Intellectual Property Law can be realized.
Patent Law Reform. The National Academy of Science (NAS) has completed a four-year study of the U.S. patent system. The NAS delivered a final report recently, which proposes comprehensive and sweeping substantive changes to the U.S. patent system. The Section will analyze the many changes proposed by the NAS and work to implement the changes we deem will improve the patent system.
FTC Proposals. Last year, the Federal Trade Commission issued a report and made 10 specific recommendations on changes to the patent system. The Section is in the process of studying these recommendations and will prepare a detailed response as to the merits and advisability of implementing these recommendations.
Council Meeting in Atlanta. Several significant matters were discussed at the Section Council meeting in Atlanta on August 7, 2004. Visit www.abanet.org/intelprop/Sept2004Chair’sBulletinAddendum.html to learn more.
Finally, the Section should know that I am extremely fortunate to work with the highest-quality individuals from the Section leadership, including the Council, Division Chairs, and Committee Chairs. I am proud to be associated with such a splendid group of superb lawyers in serving the Section this year. With the assistance of our very able and helpful Section staff, I expect this to be a very busy and highly productive year.

Section Delegation Visits People’s Republic of China

Elizabeth Chien-Hale
Past Chair, Committee 109-Cooperation with Foreign Patent Offices

Elizabeth Chien-Hale, the immediate past chair of Committee 109-Cooperation with Foreign Patent Offices, organized a trip to China for interested members. The delegation visited China July 4-12, 2004. The primary professional goal of this trip was to establish communication channels with the various stakeholders in the Chinese IP community, including government officials, judges, Chinese IP professionals, and industry representatives. The delegates – Elisabeth Bridge, Emil Chang, Elizabeth Chien-Hale, Albert Jacobs, Jr., Robert Lindefjeld, Steven Ludwig, Lea Nicholson, Thorsten Schmidt, Lyle Vander Schaaf, Holly Li, and Xiang Wang – met with various IP officials in Beijing and Shanghai to gain a deeper understanding of the current Chinese IP procurement and enforcement systems.
In Beijing, the delegation visited the State Intellectual Property Office, the Trademark Office of the State Administration for Industry and Commerce, the National Copyright Administration, and the People’s Supreme Court. The delegation received a warm welcome and detailed reports from the officials and judges who met with it; the group also had plenty of opportunities to ask questions and express its concerns.
The Beijing portion of the trip concluded with a full-day seminar on the comparative IP systems of the United States and China. The morning plenary session had three speakers: Gao Lulin, president of the All-China Patent Agents Association and former Commissioner of the State Intellectual Property Office, gave an overview of the Chinese IP system; Beijing Higher People’s Court Judge Zhang Lumin discussed the rules and regulations for enforcing IP rights in China through the judicial route; Senior Legal Director of Chinese portal Sina.com Xie Guomin outlined the current IP challenges faced by Chinese high-tech companies. In the afternoon, delegates Emil Chang, Albert Jacobs, Robert Lindefjeld, Steven Ludwig, Lyle Vander Schaaf, Holly Li, U.S. Embassy Economic Section Officer Adam Ross, and Jones Day lawyer Benjamin Bai, gave presentations on the various aspects of the U.S. IP system.
The All-China Patent Agents Association was the group’s host in Beijing, and provided generous support for our meetings.
In Shanghai, the delegation visited the Shanghai Intellectual Property Administration and Shanghai Customs. The Shanghai Intellectual Property Administration explained the collaborative efforts by the Yangtze Delta local officials in curbing local protectionism. The Shanghai Customs explained, among other things, the importance for foreign IP holders to register their IP rights with the Chinese Customs General. Joseph Rogers, Committee 109 subcommittee chair, helped to coordinate the various activities in Shanghai.
Four delegates ventured further for a one-day visit to Guangzhou where they held meetings with local economic development officials, business consultants, and the Guangzhou Administration for Industry and Commerce. Section Council Member Robert Lindefjeld represented the Section in these meetings. The group learned that China continues to welcome foreign investments, and observed the administrative mechanism for fighting counterfeit products in Guangzhou.
 The delegates were very busy with the many professional events and functions during their trip, but they also took the many luncheon and reception opportunities to sample Chinese food. The delegation expresses appreciation for the generous support of the Section, the Chinese host, and the many other Chinese and U.S. law firms, organizations, and companies which helped to make this event a success.

Federal Circuit to Give En Banc Consideration to Patent Claim Construction

Barry Grossman
Former Section Council Member

Help may be on the horizon. A solution may be in sight. Certainty and clarification may be coming. Finally, we may be getting some clear guidance on how to interpret a patent claim.
Claim construction is one of the most important, if not the most important issue, in patent law. However, the rules on how one properly interprets a claim have been difficult and confusing, if not sometimes inconsistent. On July 21, 2004, the Federal Circuit granted a petition to rehear en banc a case in order to resolve issues concerning the construction of patent claims. The case is Phillips v. AWH Corp., No. 03-1269, -1286.
The Court invited the parties as well as other interested persons or organizations to submit additional briefs on seven specific issues of claim construction. These issues included:
whether dictionaries or the specification should be the primary source for claim construction;
whether claim construction should be influenced for the sole purpose of avoiding invalidity;
what is the role of expert testimony and the prosecution history in interpreting the meaning of disputed claim terms; and
to what extent, if any, should the Federal Circuit defer to the trial court on claim construction.
Judge Rader concurred in the Order. However, Judge Rader wanted the Court to obtain additional commentary on the issue of whether “algorithmic” rules can be applied to claim construction, such as whether to use the specification first or dictionaries first in interpreting claims.
Chief Judge Mayer dissented from the Order. He stated that, “Nearly a decade of confusion has resulted from the fiction that claim construction is a matter of law.” It was his view that hearing this case en banc “continues a charade,” unless the Court reconsiders its precedent that claim construction is a matter of law.
The Court’s decision in this en banc case promises to be one of the most important decisions of the Court in the last 10 years.

Commissioner for Trademarks Announces Departure
Anne H. Chasser, Commissioner for Trademarks at the U.S. Patent and Trademark Office (USPTO), announced that she was leaving the USPTO on September 1.
“It has been a privilege to work with Under Secretary Jon W. Dudas and to serve the Administration, the trademark community, and the employees of the U.S. Patent and Trademark Office for the past five years,” said Chasser.
Dudas noted that “Anne Chasser is a dedicated public servant, and we appreciate her contributions to the USPTO.”
Ms. Chasser joined the USPTO as special advisor in September 1999 and was confirmed by the U.S. Senate as Assistant Commissioner for Trademarks in November 1999. Following the enactment of the American Inventors Protection Act of 1999, Ms. Chasser was appointed Commissioner for Trademarks in March 2000.
During her tenure, the USPTO’s trademark operation initiated many advances in electronic government. Today, anywhere in the world, trademark applicants can search, file, check application status, review all published and registered marks, respond to office actions and complete all routine trademark registration business activities through the Trademark Electronic Business Center at www.uspto.gov.

October Program Continues Practical Tips Series
The Section’s Young Lawyers Committee will host another one-day session of the successful “Practical Tips on Enforcing and Defending Patents” program on October 22 at Suffolk University Law School in Boston. The program is being held in cooperation with Suffolk, as well as local Boston IP organizations.
This program, now in its seventh year, has been well received in cities across the nation. It is designed to enhance intellectual property practice skills and enable IP practitioners to handle the many tasks that routinely arise in this increasingly important area of practice. The program features top professionals in the IP field that provide practical advice on dealing with the “nuts and bolts” of everyday IP practice.
This particular Practical Tips program focuses on the enforcement and defense of patents in court. As a special benefit to those attending the program, a number of “model” documents typically used in patent litigation will be made available for future reference and possible adaptation for later use. These documents have been prepared by some of the nation’s leading patent litigation attorneys and cover a wide variety of subjects, including: litigation checklists, sample discovery requests, protective orders, case management orders, jury instructions, and trial/appellate papers. CLE credit will be available for those attending this program.
For further details, and to register for this one-day program, visit the Section website at www.abanet.org/intelprop/calendar.html, or call 312-988-5598.
Section Profile:

Philip G. Hampton II

Back in the summer of 1976, it dawned on Phil Hampton that his job as an engineer for Exxon in Texas was, essentially, just like that of an “industrial strength plumber.” Ripe for a change, he decided to go to law school. But not to be a lawyer, to be a lawmaker and politician. However, observing urban politics firsthand in Chicago was enough to dissuade him from the vocation. The next logical stop on his career path was intellectual property law – something that would let him combine all those years of expensive education.
Phil has been working hard at it ever since. His most memorable recent case was when he convinced a district court judge to vacate his published decision of non-infringement in order to allow the parties to enter into a settlement agreement.
From 1994 until 1998, Phil was the Assistant Commissioner for Trademarks at the United States Patent and Trademark Office (USPTO). As the Assistant Commissioner, he had overall responsibility for trademark operations, and focused on restructuring the trademark registration process and improving the policies of the USPTO to align them more closely with the needs of its customers.
Phil says his greatest professional challenges are to keep abreast of legal developments while developing new business and providing “high-quality, cost-effective, creative solutions” to his clients.
Immediate Past Section Chair Bob Sacoff can be credited for getting Phil involved in the Section. Bob convinced Phil to serve as the Section’s liaison to the ABA Commission on Racial and Ethnic Diversity as well as to be a member of the 2003-2004 Long Range Planning Task Force. “These assignments have really energized me and have made me a strong believer in both the Section and the ABA at large,” Phil says. He says the most valuable part of his Section membership is his interaction with other Section members, and that sharing his views with some of the Section leaders has been a great learning experience.
Perhaps a rare attribute in lawyers, Phil is such an introvert that he usually scores a perfect “I” on the Myers-Briggs personality test. That hasn’t deterred him though. “I have always enjoyed being an IP attorney,” he says, “and since I’m a little nerdy anyway, I don’t need any real motivation to get me into work every day.”

Phil Hampton is a partner at Dickstein Shapiro Morin & Oshinsky LLP, in Washington, DC. Contact him at hamptonp@dsmo.com

AMERICAN BAR ASSOCIATION

Section of Intellectual Property Law

321 N. Clark Street, M/S 19.1

Chicago, IL  60610

Mark Your Calendar—

 

Practical Tips on Enforcing and Defending Patents
October 22, 2004
Suffolk University Law School
Boston, MA

20th Annual Intellectual Property Law Conference
April 14-16, 2005
Crystal Gateway Marriot Hotel
Arlington, VA

2005 Summer IPL Conference
June 22-26, 2005
Palace Hotel
San Francisco, CA