Following the Federal Circuit's lifting of the injunction Amazon.com secured against Barnes & Noble, you may have made a guess that this would put a moratorium on the hoopla in the media predicting that patent system is going to trash the Internet. Well guess again. It looks like we are in for another round of patent bashing.

It turns out, however, that these inflammatory remarks are not new. Most were leveled against patenting software for any type of application, whether or not it is a business method. As far back as 1966 the Presidential Commission on the Patent System reported a finding that patents were not needed for software technology. Twenty-six years later, the Advisory Commission on Patent Law Reform concluded that the "current framework of laws available to protect computer program-related inventions should be maintained." Nevertheless, at that time there were public comments that did not favor patent protection for computer program-related inventions, "the existence of patents in the field of software was stated as being the primary problem with the current framework of laws. These respondents stated that risk, difficulty, and costs are added to software development activity because techniques used in, and features provided by computer programs may be patented... Specific risks and problems identified by these responses included: - not being able to find the patents which apply to a program being developed; - not being able to determine if the patent applies to a particular program; - not being able to find prior art (e.g., evidence that a technique had been previously used although not published); and - being able to achieve any amount of certainty requires a lawsuit which is costly in both time and money."

A decade has passed and we don't hear the complaints about patenting software anymore. The patent system has learned how to handle this now established field of technology, and the media doesn't show any interest in the topic. However, the critics of the business method patents are singing the same tune that the critics of the software patents sang over a quarter of a century ago.

It would be interesting to know how many of the current critics have actually been taking the time to read the patent and study the claims that define the invention which they are poking fun at. The Amazon.com invention is labeled 'one click', as though that is all anyone needs to know in order to brand the patent as frivolous. Here is claim 1 of the 5,960,411 patent:

How many of the critics who deliver sound bites to the press have actually compared the limitations of this claim to an actual piece of prior art to determine whether or not the claim is anticipated or is obvious? The case hasn't been tried in a Federal District Court yet, only in the press.

The paper continues "... any resolution of relationship of antitrust and intellectual property must address some or all of the following questions:

A comment follows that is well worth noting: "... and I tend to agree with those who are skeptical about the bona fides of current patent policy". Despite this comment, if you read the paper, you will find a healthy respect for the value of patents in driving our economy, and a balanced approach to the relationship between antitrust and IP.

The United States Patent and Trademark Office is aggressively meeting the challenge of examining the growing number of business method patents classified in Class 705. Nicholas Godici, Acting Undersecretary of Commerce for Intellectual Property, welcomed about 55 members of the public to the Inaugural Business Method Patents Partnership Meeting on March 1, 2001. The details of the USPTO initiatives were described and the meeting was opened up to questions. Small breakout sessions were formed to obtain feedback from the attendees. Critics of the patent system would do well to attend the next Partnership Meeting.

On February 27, Congressman Howard Coble introduced H.R. 740, the "Patent and Trademark Office Reauthorization Act." H.R. 740 is identical to its predecessor in the 106th Congress, H.R. 4034, and would make changes in section 42 of title 35, United States Code, which are designed to stop the diversion of PTO user fees to fund unrelated government programs. H.R. 4034 was reported favorably by the Judiciary Committee, but the bill stalled and died after the Chairman of the Appropriations Committee objected to its consideration in the House.

Also on February 27 bills were introduced in the Senate (S. 407) and in the House of Representatives (H.R. 741) to provide changes in U.S. law that are necessary for implementing the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the "Madrid Protocol"). The bills are substantially identical to bills in the 106th Congress, S. 671 and H.R. 769. The House of Representatives passed H.R. 769 in April 1999. Attempts in the Senate in the closing days of the 106th Congress to pass H.R. 769 and to approve the Protocol failed as a result of controversy regarding trademarks associated with a company seized and nationalized by the Castro government in Cuba.

In February, a federal appeals court in Washington lifted an injunction against Barnes & Noble's Web site, freeing it to allow customers to purchase books on its site with one mouse click, at least until the court rules on whether such transactions infringe a patent held by Amazon.com. The patent was granted in September 1999 to the Internet bookseller for its "method and system for placing a purchase order via a communications network."

Amazon.com's patent covers its 1-Click online checkout method, through which customers can place an order with a single mouse click. Shortly after being granted the patent by the U.S. Patent and Trademark Office, Amazon filed a patent infringement suit in U.S. District Court against the Barnes & Noble Web site, alleging that 1-Click was infringed by Barnesandnoble.com's single-click Express Lane.

According to the Journal article, the granting of patents such as Amazon.com's and a patent granted to Priceline.com for its 'reverse auction' pricing system, in which consumers name their price for airline tickets, hotel reservations, and other items, sparked immediate condemnation. Critics contend that the PTO is at fault for approving 'inventions' that are merely Internet versions of well-known business practices. They fear that the once litigation-free world of the Internet will be overrun with patent infringement lawsuits.

Internet entrepreneur Tim O'Reilly, who has a cult reputation as a crusader against the commercialism of the Web, wrote an open letter to Amazon.coms CEO Jeff Bezos that is quoted in the Journal article. In the letter, O'Reilly calls the Amazon patent "one more example of an 'intellectual property' milieu gone mad," and "a classic example of the kind of software patent that would never be granted if the patent office had even the slightest clue about software."

According to the Journal article, other critics of the Amazon patent included consumer groups, who organized boycotts and Web protests, and members of Congress, who considered amending the patent statute to limit business-method patents on computer-related applications. No such legislation was passed.

The Journal cites Greg Aharonian, publisher of an online patent newsletter, as another vocal critic. Aharonian denounces the entire U.S. patent system as being "intellectually corrupt," and decries the "publicly sanctioned but privately ridiculed fiction that the average patent is novel [and] unobvious."

Not everyone agrees that the U.S. patent system is in need of reform. According to the Journal article, many observers dismiss claims that Web patents are a threat to e-commerce.

"As every new technology has developed, there have been complaints that innovation is stifled by patents," Q. Todd Dickinson, immediate-past director of the U.S. Patent and Trademark Office, told the Journal. "Well, show me how - not with anecdotes, but with broad examples." Dickinson claims that patents actually foster innovation by "increasing the prior art [the legal term for previously published descriptions of a patented invention] that is available to inventors," and ensuring that a "little guy with a great idea can compete effectively."

Gregory J. Maier, Immediate Past Chair of the ABA Section of Intellectual Property Law, told the Journal that "a few inane patents" are being held up as examples by critics trying to paint the entire system "as a dysfunctional national disaster." The claim that patents have moved beyond the tangible, physical world is nonsense, he says.

"Patents have always existed in the realm of abstraction," he told the Journal. "There is no fundamental difference between a current patent that discloses and claims useful e-commerce software and Samuel F.B. Morse's patent on the telegraph or Alexander Graham Bell's patent on the telephone, both issued in the 19th century and both surrounded by storms of controversy, now forgotten."

Jeffrey R. Kuester, chair of the IPL Section's Special Committee on Patents and the Internet, thinks that the patent system will eventually work out whatever kinks may exist.

"Essentially, we should simply let the patent system adjust to this new economy without trying to fix it," Kuester told the Journal. "The whole world has had to adjust to this new communication medium, so why would we expect the patent system to handle it overnight without a few bumps in the road?"

Robert A. Stein, Executive Director of the ABA, featured the IPL Section in his Executive Director's Report in the March 2001 issue of the ABA Journal.

Stein reported that the IPL Section has become an important resource for not only it's own members, but for other ABA entities whose members' practices are impacted by intellectual property law issues. He noted that one of the priorities of the Section was its outreach to other ABA entities.

The IPL Section is one of the ABA's fastest growing sections, whose membership has grown to over 20,000 members, with an international membership of 677 from 73 nations. Membership has grown more than 28 percent in the past five years, with an increase of 8 percent in the last year alone.

Colombia Accedes to the PCT ¾ Colombia became the 109th Contracting State of the Patent Cooperation Treaty (PCT), and the second South American nation to join the Treaty, when it deposited its instrument of accession at WIPO on November 29, 2000. The Treaty (Chapters I and II) entered into force for Colombia on February 28, 2001.

Oman and Croatia Join the WTO ¾ On 9 November 2000, Oman (country code OM) became a member of the World Trade Organization (WTO). On 30 November 2000, Croatia (country code HR) became a member of the WTO. Both Oman and Croatia are members of the Paris Convention, but only Croatia is also a member of the PCT.

The World Intellectual Property Organization (WIPO) has launched an international competition to find a new logo that will better represent the dynamics of the Organization. SGD Swiss Graphic Designers Association is providing technical assistance to WIPO in organizing the competition.

The winning designs will be selected by a jury composed of representatives of WIPO member states and WIPO staff members. The jury's decision is final.

At their annual meeting last September, member states decided that the new logo should be a powerful symbol of the recent transformation and revitalization of the Organization. It must embody and project an organization which is dynamic, innovative and future-oriented. The new emblem should be simple, memorable and distinctive, as well as suitable for use in print and in other media.

The existing WIPO logo is over 30 years old.

When is the last time you took - or defended - a deposition in another state? Have you ever traveled to another state to consult with and advise someone who works for a subsidiary of your client (e.g. inventors, marketing professionals, artists, etc.)? How often have you called out of state to negotiate on behalf of a client? If you work for a corporation, do you travel to states in which you are not licensed in order to do your work?

When you did any of these things, were you thinking about the unauthorized practice of law? Traditionally, lawyers in the United States may practice law only in the states in which they are licensed, a restriction typically backed up by unauthorized practice of law provisions which, although sporadically invoked, may be enforced by fee forfeiture, disqualification, professional discipline, and even, in some jurisdictions, criminal conviction.

The ABA Commission on Multijurisdictional Practice is currently studying the prevalence and impact of multijurisdictional practice, and has posed these questions to all ABA entities for input and information. The Section of Intellectual Property Law needs your help in order to provide the Commission with useful data. We would greatly appreciate your taking five minutes to complete the following 6-question survey and return it by Friday, June 1 to Betsi Roach at the fax number listed below. Again, thank you for your time and cooperation:

 A law firm or solo practice with offices in only one state

 A law firm or solo practice with offices in more than one state but not in countries other than the U.S.

 A law firm or solo practice with offices in more than one state and in countries other than the U.S.

 A corporation with operations in only one state

 A corporation with operations in more than one state but not in countries other than the U.S.

 A corporation with offices in more than one state and in countries other than the U.S.

 A state government agency

 A federal government agency

 A state court system

 The federal court system

 A non governmental organization with offices in only one state

 A non-governmental organization with offices in more than one state but not in countries other than the U.S.

 A non governmental organization with offices in more than one state and in countries other than the U.S.

 One state only

 More than one state but not in countries other than the U.S.

 More than one state and in countries other than the U.S.

 Never

 Rarely

 Occasionally

 Regularly

 Constantly

 Federal courts in my state of admission _____________________

 Federal courts in states other than where I am admitted _____________________________

 State courts in my state (s) of admission _____________________________

 State courts in states other than where I am admitted _____________________________

 Courts of other countries _____________________________

 Not applicable as I don't litigate

 I restrict my practice to clients located within the state(s) where I am admitted (please name)

 I restrict my practice to clients located both within the state(s) where I am admitted

 My practice includes clients located in the state(s) where I am admitted,

 Not applicable as I do not do transactional work (e.g. IP prosecution, licensing, etc.)

 Has never hired a foreign legal consultant (a lawyer or patent agent from a country

 Has rarely hired a foreign legal consultant (a lawyer or patent agent from a country

 Has occasionally hired a foreign legal consultant (a lawyer or patent agent from a country

 Has often hired a foreign legal consultant (a lawyer or patent agent from a country

 Not applicable as I do not work for a law firm or a corporation

Your Name _________________________ (Optional)

Address ____________________________ (Optional)

___________________________________

___________________________________

Please fax your response to the Section of Intellectual Property Law at 312/988-5628.

Thank you!

_________________________________________________

On June 7, The DePaul College of Law Center for Intellectual Property Law is hosting a seminar on Alternative Dispute Resolution & Intellectual Property co-sponsored by Judicial Dispute Resolution, Inc.

Crowe & Dunlevy is pleased to announce that Joseph J. Ferretti has received an LL.M. in Intellectual Property. He received his Master's degree, graduating first in his class, from Franklin Pierce Law Center in Concord, N.H. Franklin Pierce is highly regarded, with both a national and international reputation, as one of the premier intellectual property law schools. Mr. Ferretti is a director and shareholder of the Firm and has returned to continue his intellectual property practice in Crowe & Dunlevy's Oklahoma City office.

In addition to his full-time law practice, Mr. Ferretti is also an adjunct professor of intellectual property law at the University of Oklahoma College of Law and Franklin Pierce Law Center.

The Sedona Conference announces its May 17-18, 2001 conference, "The Internet: Privacy, Property & Regulation", to be held at La Posada de Santa Fe in Santa Fe, New Mexico. This conference will bring together leading players in the rapidly developing areas of law resulting from the expansion of the Internet. The conference will provide a studied analysis of some of the more urgent issues surrounding the protection of intellectual property, privacy, and other rights in the so-called "Digital Millenium."

The Sedona Conference^SM is a nonprofit research and educational institute, dedicated to the advanced study of law and policy in the areas of antitrust law, intellectual property rights, and complex litigation.

________________________________________

June 26 - Seattle, WA

July 20 - San Francisco, CA

October 5 - New York, NY

Designed to enhance IP practice skills, this series features top professionals from the IP field who provide practical advice on the 'nuts and bolts' of every day IP practice. CLE credit will be available for these Practical Tips sessions.

___________________________________________-

As with past Summer IPL Conferences, this year's Conference offers a comprehensive selection of continuing legal education sessions covering a wide array of intellectual property law issues. Included this year is a special session offering Ethics education and CLE credit. Check out the CLE program schedule below:

Focus on Business - Practical Analysis of Real-Life Licensing Problems - Panel Discussion; Opinions of Counsel: Do's and Don'ts; Managing Litigation Costs; Role of IP Counsel In Emerging Businesses: .Coms, et al

Section Business Session - The annual Business Session features debate on resolutions presented by the Section Committees, and discussion of important topics of interest to the IP law field.

Internet Update - Internet Privacy; Advertising, Copyright and Promotion Issues on the Internet; Copyright Crisis on the Internet; The Digital Millennium Act: Where We Are and Where We're Going

Current Developments - Patents - Software/Business Method Patent Onslaught; Section 112 - Point/CounterPoint; Festo - Point/CounterPoint

IP Litigation - Session I - The Session will present a computer patent/copyright mock jury trial

Trademarks and the Internet - An International Perspective; Trademarks and the Internet - A Corporate Perspective; Current State of Product Configuration/Trade Dress; Current Developments in Copyright Law

IP Litigation - Session II - Mostly Patents - Pitfalls and Strategies for Developing and Presenting a Trade Secret Case; Techniques for Resolving Patent Cases with ADR; Patent Damage Mock Trial: Direct/Cross of Damage Expert

Current Ethics Issues - Conflicts of Interest and Civility Ethical Guidelines In Deposition Practice with Preparation and Other Conduct During Deposition; Law Firms Taking an Equity Interest in the Client; Candor Toward the Tribunal and the USPTO; Multidisciplinary Practice, Pro or Con; Litigating A Patent That You Prosecuted

Hot Topics in Intellectual Property Law: a Potpourri -

Growing Tension Between Antitrust and IP Law; Safeguarding of Trade Secret Rights: Dealing with Employee Mobility; Sovereign Immunity; Update on Copyright Issues; Grappling with Markman

 ____________________

And there's more - In addition to our comprehensive lineup of CLE programming, the Summer IPL Conference also offers a variety of social events- luncheons, receptions, and the Annual Dinner-Dance. A slate of tours will provide a broad cross-section of Seattle and Pacific Northwest destinations, planned to highlight the wonders of the city and its surroundings. Destinations include a tour of Seattle itself, a glassblowing demonstration in Pioneer Square, a tour to the Seattle's Best coffee roasting plant on Vashon Island, a tour of the Boeing 747 manufacturing plant in Everett, and excursions to Snoqualmie Falls and to Mount Rainier. The thrill of participatory competition also returns with the annual Golf and Tennis Tournaments.

The Sheraton Seattle Hotel- For hotel reservations, call the Sheraton directly at 206/447-5555. Mention the ABA-IPL Summer Conference to receive the conference rate of $190 single/$215 double occupancy. The room reservation cutoff date is May 27.