2010 AIPLA Mid-Winter Institute Bulletin by AIPLA

BULLETIN

American Intellectual Property Law Association

2010 Mid-Winter Institute Issue La Quinta, CA

in this issue...

Presidentâ&#x20AC;&#x2122;s Page...............................................................................................................................................3 2010 Robert C. Watson Competition Information...............................................................................................6 Board of Directors Meeting Dates....................................................................................................................11 Association Activities ...................................................................................................................................12 Membership Applications.................................................................................................................................12 News of Members ...........................................................................................................................................19 C.L.E Update ...................................................................................................................................................20 Future Meetings Calendar................................................................................................................................22 2010 Annual Meeting Flyer...............................................................................................................................25 Copyright Office Affairs.....................................................................................................................................28 Thank You to Sponsors....................................................................................................................................30 Photo Pages.....................................................................................................................................................32

AIPLA

Published from the Association Office AIPLA 241 18th Street South, Suite 700 Arlington, VA 22202 (p) 703.415.0780 (f) 703.415.0786 Web: www.aipla.org Domestic Subscription Rate: $60.00 per year Foreign Subscription Rate: $70.00 ($20.00 per copy)

Committee Reports: Alternative Dispute Resolution.........................................................................................................................42 Amicus..............................................................................................................................................................42 Anti-Counterfeiting and Anti-Piracy..................................................................................................................45 Antitrust............................................................................................................................................................45 Biotechnology...................................................................................................................................................46 Chemical Practice............................................................................................................................................47 Copyright Law..................................................................................................................................................47 Corporate Practice...........................................................................................................................................47 Diversity in IP Law............................................................................................................................................48 Education.........................................................................................................................................................48 Electronic and Computer Law..........................................................................................................................50 Emerging Technologies....................................................................................................................................52 Fellows.............................................................................................................................................................53 Industrial Designs.............................................................................................................................................53 International and Foreign Law..........................................................................................................................54 International Education.....................................................................................................................................54 International Trade Commission (ITC).............................................................................................................55 Inventor Issues.................................................................................................................................................55 IP Law Associations..........................................................................................................................................56 IP Practice in Europe........................................................................................................................................59 IP Practice in Japan..........................................................................................................................................59 IP Practice in Latin America..............................................................................................................................61 IP Practice in the Far East................................................................................................................................61 Law Practice Management...............................................................................................................................62 Law Students....................................................................................................................................................62 Licensing and Management of IP Assets.........................................................................................................63 Membership......................................................................................................................................................65 Mentoring.........................................................................................................................................................65 Online Programs..............................................................................................................................................66 Patent Agents...................................................................................................................................................69 Patent Law.......................................................................................................................................................69 Patent Litigation................................................................................................................................................70 Patent Relations with the USPTO....................................................................................................................70 PCT Issues.......................................................................................................................................................71 Professional Programs.....................................................................................................................................74 Professionalism and Ethics..............................................................................................................................75 Public Appointments.........................................................................................................................................75 Public Education...............................................................................................................................................75 Special Committee on the FDA........................................................................................................................77 Special Committee on Genetic Resources, Traditional Knowledge, and Folklore...........................................78 Special Committee on Legislation....................................................................................................................78 Special Committee on Mergers and Acquisitions.............................................................................................79 Special Committee on National IP Practitioner Associations Worldwide..........................................................79 Special Committee on Standards and Open Source........................................................................................80 Trade Secret Law.............................................................................................................................................80 Trademark Internet...........................................................................................................................................81 Trademark Law.................................................................................................................................................81 Trademark Litigation.........................................................................................................................................83 Trademark Treaties and International Law.......................................................................................................83 Trademark-Relations with the USPTO.............................................................................................................83 USPTO Inter Partes Patent Proceedings.........................................................................................................84 Women in IP Law.............................................................................................................................................84 Young Lawyers.................................................................................................................................................85

BULLETIN OFFICERS 2009 – 2010 Alan J. Kasper. .......................................................................................................................................................... President 2100 Pennsylvania Avenue NW, Washington, DC 20037 David W. Hill....................................................................................................................................................President-Elect 11955 Freedom Dr., Two Freedom Square, Reston, VA 20190-5675 William G. Barber.................................................................................................................................... First Vice-President 600 Congress Avenue, Suite 2120, Austin, TX 78701 Jeffrey I.D. Lewis.................................................................................................................................. Second Vice-President 1133 Avenue of the America, New York, NY 10036 Teresa Stanek Rea............................................................................................................................Immediate Past President 1001 Pennsylvania Avenue, NW, Washington, DC 20004 Jonathan W. Richards................................................................................................................................................ Secretary 1000 Eagle Gate Tower, 60 East South Temple, Salt Lake City, UT 84111 Kenneth N. Nigon. ..................................................................................................................................................... Treasurer P.O. Box 980, Valley Forge, PA 19482 Q. Todd Dickinson.......................................................................................................................................Executive Director 241 18th Street, South, Suite 700, Arlington, VA 22202

Board of Directors (Terms Expire October 2010) Pamela A. Crocker . ................................................................................................... 343 State Street, Rochester, NY 14650 Denise DeFranco......................................................................... 55 Cambridge Parkway, Suite 700, Cambridge, MA 02142 Amy E. Hamilton............................................................... Lilly Corporate Center, Drop Code 1104, Indianapolis, IN 40205 Anthony M. Zupcic .....................................................................1290 Avenue of the Americas, New York, NY 10104-3800 (Terms Expire October 2011) Robert W. Clarida.......................................................................1133 Avenue of the Americas, New York, NY 10036-6799 Elizabeth Ann Morgan...........................................................................................Post Office Box 7848, Atlanta, GA 30309 Naomi Abe Voegtli....................................................................................................349 Wine Circle, Blountville, TN 37617 Mark L. Whitaker. ........................................................................ 1299 Pennsylvania Avenue, NW, Washington, DC 20004 (Terms Expire October 2012) Brian B. Darville. ............................................................................. 211 N. Union Street, Suite 100, Alexandria, VA 22314 Mercedes K. Meyer. ...............................................................1500 K Street, NW, Suite 1100, Washington, DC 20005-1209 Philip T. Petti. ......................................................................................................... 550 W. Adams Street, Chicago, IL 60661 Michael W. Piper....................................................................................5601 Granite Parkway, Suite 750, Plano, TX 75024

aipla bulletin

2010 mid-winter institute issue

president’s page by: Alan J. Kasper, AIPLA President

At the time that I took office in October, the potential could not have been better for the occurrence, during the following twelve months, of very significant events in the IP universe. In fact, a colleague remarked, paraphrasing an old Chinese proverb, that during my term as President, AIPLA will be “living in the most interesting of times.” The past five months have lived up to that prediction in both the domestic and international arenas, and for the foreseeable future, all expectations will be exceeded. IP is evolving, morphing and rapidly advancing across a broad spectrum of areas. For example, if you were asked to rank the most significant events that have taken place, or even that may take place in the next few months, none would come close to the USPTO Transformation, an amalgam of remarkable changes that have taken place at the USPTO under the leadership of Director Dave Kappos. Working from the perspective of an experienced patent and trademark practitioner and industry manager, Dave has motivated his entire team at all levels of the USPTO to begin pulling the Office in the direction of providing more efficient service, better quality work product and a reduced backlog. All of us surely have noticed a dramatic change for the better, as more pro-active examiners take the initiative to contact applicants with suggestions for advancing prosecution, and even entertain amendments after final rejection, avoiding the costs and delays associated with RCEs. Patent Commissioner Bob Stoll has also worked tirelessly to set the right up-beat tone among the examining corps, and Robert Budens, President of the POPA union, is to be congratulated for the courage and vision he demonstrated in working toward a revision of the 30 year old “count system.” These internal accomplishments have been accompanied by a head-spinning array of external initiatives, including requests for comment and public roundtables on the critical issues of quality, worksharing, PCT reform, and patent appeals practice. There also has been an increased emphasis on interviews, particularly pre-action interviews, the use of PPH (Patent Prosecution Highway) and the PCT, and the introduction of innovative pilot programs such as the “green technology” initiative and the small-entity focused “drop for spot” program. Second on my list of remarkable developments would be Patent Reform, which appears to be gathering momentum in the Senate and, with the apparent compromise among key stakeholders on several issues, may be moving forward in this Congress. Efforts have been made to tackle the difficult issues of damages, venue, post-grant review and willful infringement. Even the concerns about USPTO fee setting authority seem to have reached an accommodation. However, there still remains the overarching issue of “fee diversion” and the residual risk that the USPTO will not have the funding needed to advance itself into the 21st Century with the necessary IT infrastructure, personnel levels, and training. On the trademark front, AIPLA scored important points in supporting the Trademark Technical and Conforming Amendment Act of 2010 that passed Congress and was sent to the White House in March. 2010 mid-winter institute issue

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president’s page (continued)

Third would be the unique global meeting initiatives undertaken by AIPLA. Only a few weeks ago, AIPLA successfully hosted a Global Intellectual Property Practitioner Association Summit in Washington, DC, bringing together the leadership of 19 professional associations, including 13 national IP practitioner associations from Asia, Europe, North America, and South America. Participants engaged in an intense discussion of the need and means for global cooperation among the practitioners, who must often advise their clients on obtaining, maintaining and enforcing intellectual property rights in other countries, and agreed to participate in a cooperative network of national associations to communicate and coordinate educational programs, information exchange, and mutual support. In addition, AIPLA is sponsoring with FICPI a joint Colloquium on the Backlog Crisis in Edinburgh Scotland on June 17 and 18, 2010, to address the global crisis in patent application backlog. Representatives of Offices, large and small, as well as users, academics and practitioners are expected to attend this meeting. AIPLA’s voice is frequently raised at USPTO roundtables and in response to requests for public comment. My thanks are extended to the many Committee members who have worked so hard in developing and drafting the comments which provide the foundation for Board positions and AIPLA submissions. With regard to the courts, our advocacy in the copyright field was spot-on, as confirmed by the Supreme Court decision in Reed Elsevier v. Muchnick, and we have supported the request for the Federal Circuit en banc review in SEB v. Pantalpha to consider the proper state of mind that must be proved for patent inducement infringement under Section 271(b). At this writing, we still await the decision of the Supreme Court in the Bilski case. Finally, it is particularly gratifying that our recommendations of preferred judge qualifications for Federal Circuit vacancies, as delivered in a White Paper published late last year, proved consistent with the naming of respected Federal District Court Judge Kathleen O’Malley of Ohio to fill the vacancy created when Judge Alvin Schall took senior status on the Court. On the international front, AIPLA will continue to promote the importance of IP through a variety of public events, including its co-sponsorship of a World IP Day event on April 26 on Capitol Hill, with WIPO and the USPTO, its hosting of the Thirteenth Meeting of the Industry Trilateral, and the joint working meeting with the Trilateral Offices in Washington in early June. Finally, I would like to congratulate the leadership of the Women in IP Law Committee for again organizing a nation-wide dinner event that was a splendid success, and would like to remind you about two important activities and events that are coming up. First, AIPLA will conduct a Survey of the Members on critical issues that concern our practice, our organization and our future activities in delivering services to you. Please be sure to take the time to convey your 4

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2010 mid-winter institute issue

president’s (continued)

page

views through the survey. Second, our Spring Meeting in New York City from May 6-8 is shaping up to be an exceptional event. Please make it a priority to attend this AIPLA meeting. This is an excellent opportunity to network, to offer your suggestions for improvement of the IP systems, domestically and internationally, and to actively participate in your AIPLA, to the extent that time and resources permit. If you won’t be able to join us at our Spring Meeting, we have other opportunities available for you to participate. On April 6 we will again co-sponsor USPTO Design Day with the USPTO, the ABA-IPL Section and IPO. There is no fee to attend this program that will be held on the USPTO campus. In June we will sponsor two seminars, our 2nd Annual Trademark Bootcamp in Alexandria, VA, and an Electronics and Computer Law Patent Practice Summit in Denver, CO. Be sure to check the AIPLA website for a complete listing of our upcoming programming. Lastly, be ready to join in advocating for patent reform, for adequate funding for the USPTO, and an end to diversion of USPTO revenues through our Action Alert system. I look forward to meeting you at various fora, discussing current issues and working with you over the remainder of the year to the betterment of our profession.

2010 mid-winter institute issue

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AIPLA Presents:

2010 Robert C. Watson Competition Award:

$2,000

Submission Deadline:

June 30, 2010

Award will be presented Friday, October 22, 2010 during the AIPLA Luncheon in Washington, DC. Author of best article on a subject relating to the protection of intellectual property written or published between July 1, 2009 and June 30, 2010.

To be eligible for consideration, the article must have Judges will consider the merit of the article as a been written solely by a student or students either in contribution to the knowledge respecting intellectual full-time attendance at a law school (day or evening) property and the extent to which it displays original or prepared in connection with a law school course. and creative thought or information not previously The article must be submitted to the American written or published by the author prior to July 1, Intellectual Property Law Association on or before 2009. June 30, 2010. Papers should be approximately the equivalent of 10 law review pages, including Reasonable expenses will be reimbursed to the footnotes (30â&#x20AC;&#x201C;40 pages typed copy). Submission author of the winning paper to travel to Washington, of 20 copies is required. Submission must include DC to receive the Watson Award on October 22, the submitterâ&#x20AC;&#x2122;s name, current address, current 2010. Submit articles to: telephone number, and employment information, if applicable.

American Intellectual Property Law Association Watson Award Competition 241 18th Street, South, Suite 700 Arlington, Virginia 22202 Telephone: (703) 415-0780

For more information, visit www.aipla.org

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TTAB in 2010: Litigating Under Accelerated Case Resolution (ACR) and the Amended TTAB Rules Wednesday, May 12, 2010 12:30 - 2:00 PM Eastern Click Here to Register! Course Description: On November 1, 2007, a number of significant amendments to the Trademark Rules of Practice (“Trademark Rules”) governing practice and procedure before the TTAB became effective. Under the amended rules, the TTAB has adopted a modified form of the conference and disclosure model set forth in Fed. R. Civ. P. 26 and followed by federal district courts. Among the most significant amendments, plaintiffs must now serve complaints on defendants, parties are now required to participate in a mandatory discovery/settlement conference, and parties must serve modified initial, expert, and pretrial disclosures. Along with the amended Trademark Rules, the TTAB has adopted Accelerated Case Resolution (“ACR”), an alternative, expedited summary judgment style litigation track for TTAB cases. This webinar will offer invaluable insights from an Administrative Trademark Judge and experienced TTAB practitioner on recent decisions interpreting the amended Trademark Rules, and practical tips for litigating cases under the amended rules and ACR. Presented By: Linda McLeod, Finnegan Henderson Farabow Garrett & Dunner, LLP

CLE will be requested. * please note, topics are subject to change*

For more information, Check our website: www.aipla.org or call: 703.415.0780

2010 mid-winter institute issue

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Become a Member! Visit www.aipla.org/membership American Intellectual Property Law Association 241 18th Street South • Suite 700 • Arlington, VA 22202 Phone: (703) 415-0780 • Fax: (703) 415-0786 www.aipla.org • aipla@aipla.org ALMad_May2010.indd 1 10 aipla bulletin

if you wish to make a hotel reservation, please call 1-800-228-9290 or (202) 328-2000 room rate: $271 (single/double) the cut-off date to obtain this rate is September 23, 2010

sponsorship opportunities available! for information on sponsorship opportunities, please contact Lindsay Nalevanko at 703.412.4357 or lnalevanko@aipla.org

4/30/2010 5:47:15 PM 2010 mid-winter institute issue

2010 Meeting Dates 2010 Spring Meeting New York Marriott Marquis New York, New York Wednesday, May 5, 2010 Board/Committee Chairs Meeting 3:00 p.m. - 5:00 p.m. Thursday, May 6, 2010 8:00 a.m. - 12:00 Noon Saturday, May 8, 2010 12:00 Noon - 4:00 p.m. Headquarters Arlington, VA

board of directors Thursday, September 23, 2010 Evening Welcome Reception Friday/Saturday, September 24–25, 2010 Board Meeting 2010 Annual Meeting Marriott Wardman Park Washington, D.C. Wednesday, October 20, 2010 Board/Committee Chairs Meeting 1:00 p.m.–5:00 p.m. Thursday, October 21, 2010 2:00 p.m.–3:30 p.m.

Thursday, July 15, 2010 9:00 a.m. - 5:00 p.m. 2010 Strategic Planning Retreat Location/Time To Be Determined

2010 mid-winter institute issue

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association activities Membership The following applications for membership are being published in accordance with Article II of the By-Laws. We welcome all of our new members.

REGULAR Jeremy Aber Austin, TX Mani Adeli Los Angeles, CA Paul Alexander East Palo, CA Natasha Aljalian Chelmsford, MA Jeremiah Baunach Seattle, WA David Becker Chicago, IL Michael D. Bednarek Washington, DC Daniel Beitey Liberty Lake, WA William D. Blackman Novi, MI Jeffrey Blumenfeld Washington, DC Karen Borrelli Etheridge Atlanta, GA Sandra L. Boscia Mooresville, NC Joseph Boyers Port Chester, NY 12â&#x20AC;&#x192;

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Robert S. Brennen Baltimore, MD

Christene Ertl Daytona Beach, FL

John Hamilton Somerville, MA

Scott Brown Furlong, PA

Robert Foote Saint Charles, IL

Karen Hazzah Atlanta, GA

Paul Carango Chadds Ford, PA

Steven Fox Sharon, MA

Gabrielle E. Higgins East Palo Alto, CA

Patricia Carroll Plymouth Meeting, PA

Ed Garcia-Otero Alexandria, VA

Eric Ho San Diego, CA

Jason D. Cassady Dallas, TX

Anne Shea Gaza Wilmington, DE

Julia Hodge Los Angeles, CA

Michael Chan Dayton, OH

William Gerson Menlo Park, CA

Fred Holmes Van Nuys, CA

Terri Chen Mountain View, CA

Bob Gilbertson Minneapolis, MN

Anna Huang New York, NY

Cass Christenson Washington, DC

Jeffry J. Grainger Menlo Park, CA

David S. Hyams Tysons Corner, VA

Boyd Cloern Washington, DC

Patricia Granahan Boston, MA

Charles Jacobson Durham, NC

Andrea L. Colby New Brunswick, NJ

David Grillo Brunswick, OH

Jeffrey Johnson Houston, TX

Eric P. Damon White Plains, NY

Patrick Grimes Cherry Hill, NJ

David E. Jones Madison, WI

Scott Daniels Washington, DC

Thomas M. Haas Washington, DC

Timothy Jordan Detroit, MI

Kenneth L. Dorsney Wilmington, DE

Ingrid N. Hackett Mableton, GA

Iona Kaiser Houston, TX

Gary Engelson Cambridge, MA

Christopher Hall Chicago, IL

Lauren Katzenellenbogen Irvine, CA 2010 mid-winter institute issue

Gaither M. Keener, Jr. Mooresville, NC

Donald Moody Sherman Oaks, CA

Stephen Sand Billerica, MA

J. Gregory Whitehair Alexandria, VA

Daniel Kelly Minneapolis, MN

Kyle Mooney New York, NY

Cora Schmid Palo Alto, CA

Colin Wright Fort Lauderdale, FL

Tara Kennedy Arlington, VA

William Nakhleh Arlington, VA

Theodore Shiells Dallas, TX

Liangang Ye Houston, TX

Allan Kiang Sparks, MD

George K. Ng Irvine, CA

James Shore Seattle, WA

Ling Zhong Berwyn, PA

Roy A. Kim Los Angeles, CA

Van Nguy San Jose, CA

Bryan Sinclair Palo Alto, CA

ACADEMIC

Paul Kimball Walkersville, MD

Jeffrey D. Osterman New York, NY

Michael Smith Palo Alto, CA

Kelly Henrici Dayton, OH

Charles Krukiel Oklahoma City, OK

Nina Pearlmutter Westford, MA

Todd N. Snyder El Segundo, CA

Connie Powell Waco, TX

Timothy Le Duc Chicago, IL

Matthew Penarczyk Redmond, WA

Mary V. Sooter Boulder, CO

Kenneth J. Sanney Mount Pleasant, MI

Shoko I. Leek Seattle, WA

Garry A. Perry Lexington, KY

Suzanne Sprunger Poulsbo, WA

Tracy Lemke Bellevue, WA

Richard Pickreign Harvard, MA

Kaushik Sriram Houston, TX

David Loretto Madrid, Spain

Sarah Piepmeier San Francisco, CA

Chris Stewart Amarillo, TX

Michael Lorton Toledo, OH

Jack R. Pirozzolo Boston, MA

Paul M. Stull Bodega Bay, CA

John Love Montgomery, TX

Ivan Poullaos Chicago, IL

Jennifer Swan Palo Alto, CA

Ali Makoui Los Angeles, CA

David Price Washington, DC

Steven A. Swernofsky Los Altos, CA

Kelly M. Mclain Minneapolis, MN

Adrian Pruetz El Segundo, CA

James Terpanjian Northridge, CA

Rosemary Miano Martinsville, NJ

Mohammad Sharique Rahman Columbia, MD

Michael Tsai Keller, TX

Anthony L. Miele Marlborough , MA

Courtland Reichman San Francisco, CA

David C. Van Dyke Chicago, IL

Charles G. Minkoff New York, NY

Bert Reiser Washington, DC

Lisa H. Wang Newark, NJ

Nicholas Mitrokostas Boston, MA

Steven J. Rizzi New York, NY

Thomas Wettermann Chicago, IL

Joanne Romero Brooklyn, NY

Alexandra White Houston, TX

Nils Montan Curitiba, Brazil

2010 mid-winter institute issue

FOREIGN Rodrigo Albagli Santiago, Chile Juan Carlos Amaro Alvarado Mexico, D. F., Mexico Gunichiro Ariga Tokyo, Japan Michele Ballagh Hamilton, Canada Bruno Barrette Quebec, Canada Rosalía Bautista Piña Mexico, D. F., Mexico Marc Benoit Montreal, Canada Roseann Caldwell Calgary, Canada Francois Cartier Montreal, Canada Tony Tung-yang Chang Taipei, Taiwan

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Jacqueline Chernys Ottawa, Canada Jose (Pepe) De Santiago Mexico D.F., Mexico Catherine M. Dennis Toronto, Canada Aliasgar Dholkawala Mumbai, India Jan Dombrowski Stuttgart, Germany Teddy Ercegovic Copenhagen, Denmark David Gilat Tel-Aviv, Isreal Matthew Hall London, United Kingdom Robert Harrison Munich, Germany Seiko Hidaka London, United Kingdom Jennifer Jones London, United Kingdom Mala Joshi Toronto, Canada Ashwin Kumar Julka Haryana, India Craig Kahn Pretoria, South Africa Philip Kerr Sydney, Australia Roxann Knight Kingstown, St. Vincent and the Grenadines Il Nam Koh Fairfax, VA Erik Krahbichler Helsingborg, Sweden Kent Ledwell Ottawa, Canada

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Veronica Liapunova St. Petersburg, Russian Federation Jim Lim Singapore, Singapore Janett Lumbreras Juarez, Mexico Janine Macneil Vancouver, Canada Colm Murphy London, United Kingdom John Norman Ottawa, Canada Erin Pisko Vancouver, Canada Anna Reznichenko St. Petersburg, Russian Federation Chantal Saunders Ottawa, Canada Stuart Smith Sydney, Australia Maria Stenbäck Malmö, Sweden Kenji Sugimura Tokyo, Japan Jatin Trivedi Ahmedabad, India Rajiv Tuli Delhi, India Boris Ureye Munich, Germany Nicholas Wong Toronoto, Canada

GOVERNMENT Monique Cole Washington, DC Theodore Essex Washington, DC

Lavanya Ratnam Washington, DC

Nathan Davis Houston, TX

David Tepper Alexandria, VA

Brian Dawley Woodbury, MN

JUNIOR

Guillermo Dekat San Antonio, TX

Melissa Anyetei Chicago, IL

Mackenzie M. Dewerff Dallas, TX

Sam Badawi Tampa, FL

Amanda Dittmar Washington, DC

Mary Katherine Bates Atlanta, GA

Michael J. Diverdi Cambridge, MA

Jesse S. Bennett Spokane, WA

Eric Doggett Raleigh, NC

Dmitry Brant Rockville, MD

Uttam Dubal Washington, DC

Yu Cai Phoenix, AZ

Todd Epstein Cleveland Heights, OH

Thomas Campbell, Jr. Chicago, IL

Alison L. Erickson Kansas City, MO

Ying Cao Pittsburgh, PA

Ashraf A. Fawzy Washington, DC

William J. Cassin Chicago, IL

Rae Fischer Washington, DC

Keala Chan New York, NY

Stacey Fluhart Washington, DC

Biju Chandran Washington, DC

Sharon Forster New York, NY

Dell Chism McLean, VA

Eric S. Foster Cincinnati, OH

Daniel Choi Cincinnati, OH

Lauren J. Galgano Minneapolis, MN

Winston Chu Claremont, CA

Daniel Guidotti Saratoga, CA

Adam Conrad Charlotte, NC

Margaret A. Hallet New York, NY

Ryan Corbett Washington, DC

Jeffrey Lee Hallstrom Irvine, CA

Brenda Moser Creasey Brentwood, MD

Aaron Hand E. Palo Alto, CA 2010 mid-winter institute issue

Joseph Hanrahan Alexandria, VA

Daniel Knauss Palo Alto, CA

Ruby Jain Natnithithadha Washington, DC

Sheri Gish Mountain View, CA

Roberta J. Hanson Denver, CO

David M. Kohn San Diego, CA

Kimberly Nguyen Washington, DC

Lianchao Han Arlington, VA

Justin Hendrix Washington, DC

Chun Kuo Houston, TX

Angela C. Ni New York, NY

Eliyahu Horowitz Fresh Meadows, NY

Christine Hernandez New York , NY

Brent Labarge Washington, DC

William H. Noon San Diego, CA

Herve R. Jacquiau Chicago, IL

Matthew Hespos New York, NY

Hwa C. Lee San Diego, CA

Michel O’hara Ottawa, NY

Mary Johnson Paramus, NJ

Eric Hinkes Washington, DC

Jangho Lee Seoul, Republic of Korea

Kathleen Ott Denver, CO

Mark Narveson Nevada City, CA

Ernest Huang Mountain View, CA

Paul D. Lein Dallas, TX

Ajeet Pai Austin, TX

Kevin R. Prince San Juan Capistrano, CA

Helen M. Huffman Houston, TX

Jodee Leroux Portland, OR

Simeon Papacostas Long Island City, NY

Michael Wallans Huntington Beach, CA

Andrew Jaynes Washington, DC

Matthew Levinstein Chicago, IL

Alex Papaefthimiou Del Mar, CA

Xuezheng Wang New York, NY

Christina Jordan New York, NY

Anna Linne Somers, NY

Stephen Petroski Raleigh, NC

Qi Zhuo Randolph, NJ

Michael Jordan Philadelphia, PA

Salumeh Loesch Portland, OR

Tu Phan-Kerr Washington, DC

Roy P. Rabindranath Fairfax, VA

Ryan Kaiser Chicago, IL

Huyen T. Luong Houston, TX

Debora Plehn-Dujowich Colmar, PA

Huzefa Kapadia Washington, DC

Andrea Main Washington, DC

James J. Pohl Alexandria, VA

Dimitry Kapmar Chicago, IL

Ramzy Malouf McLean, VA

Sabrina Poulos San Diego, CA

Stephen Keefe Arlington, VA

Itai Maytal New York, NY

Venay Puri Arlington, VA

Jessica Keesee Atlanta, GA

Noah Mcpike Nashville, TN

Manu Bansal Mclean, VA

David S. Kerr Fort Collins, CO

Emily Melvin Chicago, IL

Howard Chung Irvine, CA

Kongsik Kim Boston, MA

Melinda Michalerya Carlsbad, CA

Brigitte L. Ewanicki San Diego, CA

Jonathan Kim Chicago, IL

Aaron Miller New York, NY

Jai-wei Fishman Washington, DC

Hui-shan King Arlington, VA

John T. Moore Apple Valley, MN

Adam J. Gianola Boulder, CO

2010 mid-winter institute issue

Assad Rajani East Palo Alto, CA Woo C. Rhim Dallas, TX Jeffrey F. Riddle Virginia Beach, VA Raouf Rizk Aliso Viejo, CA Matthew Rizzolo Washington, DC Jedidiah J. Rollins Houston, TX Heather Schafer Chicago, IL Amanda Schreyer Northampton, MA

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Marc D. Sharp San Diego, CA

Karen Didomenicis Richmond, CA

Lyman Smith Oak Ridge, NC

Karen B. Geahigan North Bend, WA

John P. Son New York, NY

Pierre T. Nguyen Montreal, Canada

Aya Suzuki Alexandria, VA

James E. Parris Palo Alto, CA

Heather Takahashi Los Angeles, CA

James Thein Arlington, VA

Viola Trebicka New York, NY

Robert Watson Tijeras, NM

Neil Trueman Chicago, IL

Robert Andersen San Francisco, CA

Robert M. Tuttle Denver, CO Jennifer Ulsh Greenville, SC Keeley Irene Vega Redwood City, CA Michael Volk, Jr. Phoenix, AZ Yuichi Watanabe Houston, TX Matthew R. Weaver New York, NY Marjorie A. Witter Los Angeles, CA Timothy R. Wyckoff Bellevue, WA Travis Young San Francisco, CA Eric Zaiser Atlanta, GA Matthew Zehrer New York, NY PATENT AGENT Robert Andrews Aguanga, CA 16

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STUDENTS Tabrez Ahmad Silver Spring, MD George Washington University National Law Center Sumedha Ahuja Ashburn, VA George Washington University National Law Center Curtis Altmann Fairfax, VA American University, Washington College of Law Paul Baillargeon Chicago, IL John Marshall Law School Rajappan Balagopal Pasadena, CA University of La Verne School of Law Reid A. Baldwin Howell, MI Michigan State University College of Law Joel Baldwin Seattle, WA Seattle University School of Law

Aaron Baynard Chicago, IL John Marshall Law School Scott Bergeson Novi, MI University of Richmond School of Law

Emem Coker Houston, TX University of Houston Law Center

Summer Blake Baltimore, MD University of Baltimore School of Law

Gregory Delassus St. Louis, MO Saint Louis University School of Law

Wasim Bleibel Barrington, IL John Marshall Law School

Elise Diamond Orange, CA Chapman University School of Law

Christopher Bond Novi, MI Wayne State University Law School Jared Brandyberry Cincinnati, OH University of Cincinnati College of Law Caitlin Carreiro Lexington, KY University of Dayton School of Law Anthony Chalifoux San Diego, CA University of San Diego School of Law Robert Chan Atlanta, GA Emory University School of Law Victor Cheung Alexandria, VA George Mason University School of Law Saru Chitsa Madison, NJ Yeshiva University Benjamin N. Cardozo School of Law Morgan Coates Urbana, IL University of Illinois College of Law

Scott Cromar Savoy, IL University of Illinois College of Law

Blaine Dirker Indianapolis, IN Indiana University School of Law, Indianapolis Dillon Durnford-Geszvain Alexandria, VA Sharla Edwards Edgewater, NJ Rutgers, S.I. Newhouse Center for Law & Justice Sparkle Ellison Lawrence, KS University of Kansas School of Law Farnoosh Faryabi San Diego, CA Thomas Jefferson School of Law Natalia Federico Andover, MA Franklin Pierce Law Center Sean Flaim Bethesda, MD The Catholic University of America School of Law Todd French Portland, OR Lewis and Clark Law School Margaret Gibson Dallas, TX St. Mary’s University School of Law 2010 mid-winter institute issue

Nicholas Giles Baton Rouge, LA Southern University Law Center

Amy Johnson Knightdale, NC North Carolina Central University School of Law

Kevin Lee Baltimore, MD University of Maryland School of Law

Eric Maughan Arlington, VA Georgetown University Law Center

Nicole Gratzer Olmsted Falls, OH Cleveland State University School of Law

Michelle Kearns Methuen, MA Suffolk University Law School

Justin Leisey Simsbury, CT University of Connecticut School of Law

John McBride Gulfport, FL Stetson University College of Law

Karen Leonardo Gulfport, FL Stetson University College of Law

James McClellan Alexandria, VA George Washington University National Law Center

Christopher Leonardo Gulfport, FL Stetson University College of Law

Darin McCollum Topeka, KS Washburn University School of Law

Matt Lincicum Cambridge, MA Harvard University Law School

James McParland Olathe, KS University of Kansas School of Law

William Lyle Gravatt Oxford, MS University of Mississippi School of Law Ryan Groves Dallas, TX St. Mary’s University School of Law Ashley Hart Latham, NY Albany Law School, Union University William Hector New York, NY Fordham University School of Law Patrick Hely Nashville, TN Vanderbilt University School of Law Jessica Hilliard Orland Park, IL John Marshall Law School Nancy L. Hoffman New York, NY George Washington University National Law Center Patrick Hogan San Francisco, CA University of California School of Law Leslie Huang Cupertino, CA Santa Clara University School of Law Xiao Huang Woodbury, MN William Mitchell College of Law

2010 mid-winter institute issue

Matthew Kendziorski Ann Arbor, MI University of Michigan School of Law Yudong Kim Cupertino, CA Santa Clara University School of Law Nicholas Klicos Baltimore, MD University of Baltimore School of Law Lisa Kohli Indianapolis, IN Indiana University School of Law, Indianapolis Maanasa Kona Washington, DC American University, Washington College of Law Parvathi Kota Cambridge, MA Suffolk University Law School Evin Kozak Churchville, PA Temple University School of Law Ismail Kukhmazov Tempe, AZ Arizona State University College of Law Michael Laplante Culver City, CA University of California School of Law Michael Latempa New York, NY Yeshiva University, Benjamin N. Cardozo School of Law

Lisamarie Logiudice New York, NY Brooklyn Law School Anahita Loloei Marsal Bethesda, MD University of Maryland School of Law Teddi Maranzano Wappingers Falls, NY Pace University School of Law Patricia Marquez Central Islip, NY Touro College, Jacob D. Fuchsberg Law Center Nathaniel Marschalk St. Louis, MO Saint Louis University School of Law Florent Martel Grand Forks, ND University of North Dakota School of Law Jennifer Marvin Everett, WA Albany Law School

Marla Mellino Danbury, CT Fordham University School of Law Jeffrey Mies Livonia, MI Marquette University Law School Keith Mosley, II Upper Marlboro, MD The Catholic University of America School of Law Noriko Motegi Los Angeles, CA University of Southern California, School of Law Elyssia J. Musolino Sacramento, CA McGeorge School of Law University of the Pacific Jason Newton Fowlerville, MI Wayne State University Law School Kate Nuehring Chicago, IL Northwestern University School of Law aipla bulletin

Glenn Orman Waco, TX Baylor University School of Law Eva Papadimas Richmond, VA University of Richmond, T. C. Williams School of Law Madeleine Patton Atlanta, GA Georgia State University College of Law Robert Paul Evanston, IL DePaul University College of Law Mark Pennington Strongsville, OH Cleveland State University School of Law Daniel Pierron Chicago, IL Chicago-Kent College of Law, Illinois Institute of Law Mani Potnuru Ann Arbor, MI The University of Michigan Law School Matthew Poulsen Omaha, NE University of Nebraska College of Law Francisco Quiroz Menasha, WI Marquette University Law School Dina Raafat Baltimore, MD University of Baltimore School of Law Haylee Ralston Louisville, KY Louis D. Brandeis School of Law Wallace Rejrat Harrisburg, PA Widener University School of Law 18â&#x20AC;&#x192;

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Adam Rizk Lowell, MA Suffolk University Law School Andrew Rogers Raleigh, NC Campbell University School of Law Tremaine Ross Atlanta, GA Mercer University Law School Edward Russell Towson, MD University of Baltimore School of Law Jayme Selinger Concord, NH Franklin Pierce Law Center Matthew Shin St. Louis, MO Washington University School of Law Hans Smith Philadelphia, PA Drexel University School of Law Shiveta Sooknanan Arlington, VA George Washington University National Law Center Daniel Stoddard Englewood, CO Creighton University School of Law

Renee Turner Bloomington, IN Indiana University School of Law Katherine Van Deusen Nashville, TN Vanderbilt University School of Law William Vietti Laramie, WY University of Wyoming College of Law Michael Vlachos Chicago, IL John Marshall Law School Eric Volz Indianapolis, IN Indiana University School of Law Bruce Wallace Wichita Falls, TX Texas Wesleyan University School of Law Liana Walters Mechanicsburg, PA Widener University School of Law Jinling Wang Davis, CA University of California School of Law

Karen Surabian Baltimore, MD University of Baltimore School of Law Scott Taylor Washington, DC Georgetown University Law Center Dorothea Thompson Knoxville, TN University of Tennessee College of Law Christopher Ting Berkeley, CA UC Davis School of Law 2010 mid-winter institute issue

news of members Richard A. Kaplan, an AIPLA member since 1985 and chair of the Trade Secret group at Brinks Hofer Gilson & Lione and a partner at the firm, was elected First Vice President of the America-Israel Chamber of Commerce Chicago (AICC), at the organization’s annual meeting in Chicago, on December 10, 2009. Kaplan has been active on many committees for the AICC and has served on its board and executive committee since 2007, most recently as a senior vice president. Notably, he has been a member of AICC trade missions to Israel since 2005. In October 2009, Brinks hosted a seminar co-presented by AICC and the America-Israel Economic Forum (AIEF), featuring an Israeli success story of building market share in the US and a workshop presentation on innovation. Mr. Daniel E. Yonan, an AIPLA member since 1998 joined Sterne Kessler Goldstein Fox as part of the firm’s new IP Litigation Team. Mr. Yonan joined the firm

as Of Counsel and focuses his practice on IP litigation before federal district courts, the US Court of Appeals for the Federal Circuit, and fast-track investigations before the US International Trade Commission. Earlier in his career, he was a pharmaceutical drug research scientist at Pfizer, Inc. Gerard M. O’Rourke, an AIPLA member since 2003, joined RatnerPrestia as shareholder. Mr. O’Rourke practices in the areas of intellectual property litigation, counseling, and patent prosecution. He also has significant commercial litigation and arbitration experience. A registered patent attorney, Jerry has served as lead trial counsel in patent litigation in jurisdictions throughout the United States. He has litigated patent cases in a wide variety of technical fields including consumer electronics, pharmaceuticals, biotechnology and specialty chemicals.

deceased members Albert P. Halluin, prominent biotechnology patent lawyer and senior counsel at Wilson Sonsini Goodrich & Rosati, died on February 19, 2010 when his singleengine aircraft crashed near Yosemite National Park. His fiancé, Judy Perchonock, also died in the crash. Mr. Halluin joined Wilson Sonsini Goodrich & Rosati in 2002. Prior to joining Wilson Sonsini he was a partner 2010 mid-winter institute issue

at Howrey Simon Arnold & White. He was the founding Chair of AIPLA’s Biotechnology Practice Committee. He was born in Washington, DC and grew up in Silver Spring, MD. He earned a bachelor’s degree in biochemistry and organic chemistry at Louisiana State University and received his law degree from the University of Baltimore.

aipla bulletin

C.L.E.

update

2010 Mid-Winter Institute • InterContinental Houston La Quinta, CA • January 27–30, 2010 ALABAMA.................................................. 19.0 (4.8) ALASKA..................................................... 18.8 (4.8) ARIZONA................................................... 18.5 (4.5) ARKANSAS........................................... 18.75 (4.75) CALIFORNIA......................................... 18.75 (4.75) COLORADO.............................................. 23.0 (5.8) CONNECTICUT....................................................... DELAWARE............................................... 18.8 (4.8) FLORIDA................................................... 23.0 (6.0) GEORGIA.................................................. 18.8 (4.8) IDAHO..................................................... 17.5 (1.25) ILLINOIS................................................ 18.75 (4.75) INDIANA.................................................... 18.8 (4.8) IOWA..................................................... 18.75 (4.75) KANSAS.................................................... 22.5 (5.5) KENTUCKY..............................................................

LOUISIANA............................................ 18.83 (4.83) MAINE....................................................... 18.8 (8.0) MINNESOTA.............................................. 18.5 (4.0) MISSISSIPPI............................................. 18.0 (4.8) MISSOURI................................................. 21.7 (5.8) MONTANA................................................. 17.3 (4.8) NEBRASKA.............................................................. NEVADA.................................................... 18.5 (4.5) NEW HAMPSHIRE.................................... 20.0 (4.0) NEW MEXICO....................................... 18.75 (4.75) NEW YORK............................................... 22.5 (5.5) N. CAROLINA........................................ 18.75 (4.75) N. DAKOTA............................................ 18.75 (4.75) OHIO........................................................................ OKLAHOMA.............................................. 20.5 (6.0) OREGON................................................. 19.5 (4.75)

PENNSYLVANIA........................................ 18.5 (4.5) RHODE ISLAND........................................ 22.5 (5.5) S. CAROLINA........................................ 17.25 (4.83) TENNESSEE........................................... 20.0 (5.08) TEXAS................................................... 18.75 (4.75) UTAH......................................................... 18.5 (4.5) VERMONT................................................. 18.8 (4.8) VIRGINIA................................................... 18.5 (4.5) WASHINGTON...................................... 18.75 (4.75) W. VIRGINIA.............................................. 22.6 (5.8) WISCONSIN.............................................. 22.5 (5.5) WYOMING................................................. 19.0 (5.0) Ethics credit is indicated in a parenthesis and is included in the total.

2009 Annual Meeting • Marriott Wardman Park Washington, DC • October 15–17, 2009

ALABAMA.................................................. 16.3 (4.2) ALASKA..................................................... 16.3 (4.1) ARIZONA................................................... 16.0 (4.0) ARKANSAS........................................... 16.25 (4.25) CALIFORNIA........................................... 16.25 (4.0) COLORADO.............................................. 20.0 (5.0) CONNECTICUT........................................ 16.0 (4.0) DELAWARE............................................... 19.5 (5.0) FLORIDA................................................... 19.5 (5.0) GEORGIA.................................................. 16.3 (4.1) IDAHO............................................................... 16.0 ILLINOIS.................................................... 14.0 (4.0) INDIANA.................................................... 16.3 (4.2) IOWA..................................................... 16.25 (4.25) KANSAS.................................................... 18.5 (3.0) KENTUCKY........................................... 16.25 (4.25)

LOUISIANA............................................ 16.25 (4.16) MAINE....................................................... 16.1 (3.3) MINNESOTA............................................ 20.25 (4.0) MISSISSIPPI............................................. 16.3 (4.2) MISSOURI................................................. 18.9 (5.0) MONTANA............................................... 16.25 (4.0) NEBRASKA.............................................................. NEVADA.................................................... 16.0 (4.0) NEW HAMPSHIRE.................................... 17.0 (4.0) NEW MEXICO......................................... 16.25 (4.0) NEW YORK............................................... 19.5 (5.0) N. CAROLINA.................................................... 12.0 N. DAKOTA.............................................. 16.25 (1.0) OHIO..................................................... 16.25 (4.25) OKLAHOMA.............................................. 19.0 (5.0) OREGON................................................... 17.0 (0.5)

PENNSYLVANIA........................................ 16.0 (4.0) RHODE ISLAND........................................ 19.5 (5.0) S. CAROLINA........................................ 16.25 (4.17) TENNESSEE........................................... 17.0 (4.17) TEXAS..................................................... 16.25 (4.0) UTAH......................................................... 16.0 (4.0) VERMONT................................................. 16.3 (4.1) VIRGINIA................................................... 16.0 (4.0) WASHINGTON........................................ 16.25 (4.0) W. VIRGINIA.............................................. 19.5 (5.0) WISCONSIN.............................................. 19.5 (4.5) WYOMING............................................. 16.25 (4.25) Ethics credit is indicated in a parenthesis and is included in the total.

2009 Partnering in Patents XVI Alexandria, VA • October 14, 2009 ALABAMA.................................................... 3.5 (0.5) ALASKA....................................................... 3.5 (0.5) ARIZONA..................................................... 3.5 (0.5) ARKANSAS......................................................... 3.5 CALIFORNIA............................................... 3.5 (0.5) COLORADO................................................ 4.0 (0.6) CONNECTICUT.................................................. 3.0 DELAWARE.........................................................N/A FLORIDA..................................................... 4.0 (0.5) GEORGIA.................................................... 3.5 (0.5) IDAHO......................................................... 3.5 (0.5) ILLINOIS...................................................... 3.5 (0.5) INDIANA...................................................... 3.5 (0.5) IOWA................................................................... 3.5 KANSAS...................................................... 4.5 (0.5) KENTUCKY................................................. 3.5 (0.5)

aipla bulletin

LOUISIANA.......................................................... 3.5 MAINE......................................................... 3.5 (0.5) MINNESOTA................................................ 3.5 (0.5) MISSISSIPPI............................................... 3.5 (0.5) MISSOURI................................................... 4.2 (0.6) MONTANA................................................... 3.5 (0.5) NEVADA...................................................... 3.5 (0.5) NEW HAMPSHIRE...................................... 3.5 (0.5) NEW MEXICO............................................. 3.5 (0.5) NEW YORK................................................. 4.0 (0.5) N. CAROLINA.............................................. 3.5 (0.5) N. DAKOTA.................................................. 3.5 (0.5) OHIO........................................................... 3.0 (0.5) OKLAHOMA................................................ 4.0 (0.5) OREGON............................................................. 3.5 PENNSYLVANIA.......................................... 3.5 (0.5)

RHODE ISLAND.......................................... 4.2 (0.6) S. CAROLINA.............................................. 3.5 (0.5) TENNESSEE............................................. 3.67 (0.5) TEXAS......................................................... 3.5 (0.5) UTAH................................................................... 3.5 VERMONT................................................... 3.5 (0.5) VIRGINIA..................................................... 3.5 (0.5) WASHINGTON............................................ 3.5 (0.5) W. VIRGINIA................................................ 4.2 (0.6) WISCONSIN........................................................ 4.0 WYOMING................................................... 3.5 (0.5)

Ethics credit is indicated in a parenthesis and is included in the total.

2010 mid-winter institute issue

2009 Boot Camp/Practical Patent Prosecution Training for New Lawyers Alexandria, VA • August 26-28, 2009

ALABAMA.................................................. 22.0 (1.0) ALASKA..................................................... 22.0 (1.0) ARIZONA................................................... 22.0 (1.0) ARKANSAS............................................... 22.0 (1.0) CALIFORNIA............................................. 22.0 (1.0) COLORADO.............................................. 26.0 (1.2) CONNECTICUT........................................ 22.0 (1.0) DELAWARE............................................... 26.4 (1.2) FLORIDA................................................... 26.5 (1.0) GEORGIA.................................................. 22.0 (1.0) IDAHO............................................................. 21.25 ILLINOIS.................................................... 21.0 (1.0) INDIANA.................................................... 22.0 (1.0) IOWA......................................................... 22.0 (1.0) KANSAS.................................................... 24.0 (1.0) KENTUCKY............................................... 22.0 (1.0)

LOUISIANA................................................ 22.0 (1.0) MAINE....................................................... 22.0 (1.0) MINNESOTA.............................................. 14.5 (1.0) MISSISSIPPI............................................................ MISSOURI................................................. 26.4 (1.2) MONTANA................................................. 22.0 (1.0) NEVADA.................................................... 22.0 (1.0) NEW HAMPSHIRE.................................. 22.25 (1.0) NEW MEXICO........................................... 22.0 (1.0) NEW YORK............................................... 26.0 (1.0) N. CAROLINA............................................ 22.0 (1.0) N. DAKOTA................................................ 22.0 (1.0) OHIO......................................................... 22.0 (1.0) OKLAHOMA.............................................. 26.5 (1.0) OREGON................................................... 23.5 (1.0) PENNSYLVANIA........................................ 22.0 (1.0)

RHODE ISLAND........................................ 26.4 (1.2) S. CAROLINA............................................ 22.0 (1.0) TENNESSEE..................................... 22.5 (1.0 dual) TEXAS....................................................... 22.0 (1.0) UTAH......................................................... 22.0 (1.0) VERMONT................................................. 22.0 (1.0) VIRGINIA................................................... 22.0 (1.0) WASHINGTON.......................................... 22.0 (1.0) W. VIRGINIA.............................................. 26.4 (1.2) WISCONSIN.............................................. 16.0 (1.0) WYOMING................................................. 22.0 (1.0)

Ethics credit is indicated in a parenthesis and is included in the total.

2009 Patent Cooperation Treaty Seminar Arlington, VA • July 16-17, 2009 ALABAMA.......................................................... 13.0 ALASKA............................................................. 13.0 ARIZONA........................................................... 13.0 ARKANSAS....................................................... 13.0 CALIFORNIA..................................................... 13.0 COLORADO...................................................... 16.0 CONNECTICUT................................................ 13.0 DELAWARE....................................................... 15.6 FLORIDA........................................................... 14.5 GEORGIA.......................................................... 13.0 IDAHO............................................................. 12.75 ILLINOIS.......................................................... 12.75 INDIANA............................................................ 13.0 IOWA............................................................... 12.75 KANSAS............................................................ 15.5 KENTUCKY....................................................... 13.0

ALABAMA.................................................. 16.0 (1.0) ALASKA..................................................... 16.0 (1.0) ARIZONA................................................... 16.0 (1.0) ARKANSAS............................................... 16.0 (1.0) CALIFORNIA............................................. 16.0 (1.0) COLORADO.............................................. 19.0 (1.2) CONNECTICUT........................................ 16.0 (1.0) DELAWARE............................................... 19.2 (1.2) FLORIDA................................................... 19.0 (1.0) GEORGIA.................................................. 16.0 (1.0) IDAHO............................................................. 14.75 ILLINOIS................................................ 15.75 (1.75) INDIANA.................................................... 16.0 (1.0) IOWA......................................................... 16.0 (1.0) KANSAS.................................................... 19.0 (1.0) KENTUCKY............................................... 16.0 (1.0)

LOUISIANA........................................................ 13.0 MAINE............................................................... 13.0 MINNESOTA...................................................... 13.0 MISSISSIPPI..................................................... 13.0 MISSOURI......................................................... 15.6 MONTANA......................................................... 13.0 NEVADA............................................................ 13.0 NEW HAMPSHIRE............................................ 13.0 NEW MEXICO................................................... 13.0 NEW YORK....................................................... 15.5 N. CAROLINA.................................................. 12.75 N. DAKOTA...................................................... 12.75 OHIO................................................................. 13.0 OKLAHOMA...................................................... 15.5 OREGON........................................................... 13.5 PENNSYLVANIA................................................ 13.0

2009 Spring Meeting San Diego, CA • May 13-15, 2009 LOUISIANA................................................ 16.0 (1.0) MAINE....................................................... 16.0 (1.0) MINNESOTA............................................ 15.75 (1.0) MISSISSIPPI............................................. 16.0 (1.0) MISSOURI................................................. 18.9 (1.2) MONTANA................................................. 16.0 (1.0) NEVADA.................................................... 16.0 (1.0) NEW HAMPSHIRE.................................... 23.5 (1.5) NEW MEXICO........................................... 16.0 (1.0) NEW YORK............................................... 19.0 (1.0) N. CAROLINA............................................ 16.0 (1.0) N. DAKOTA................................................ 16.0 (1.0) OHIO....................................................... 16.25 (1.0) OKLAHOMA.............................................. 19.0 (1.0) OREGON................................................... 17.0 (1.0) PENNSYLVANIA........................................ 16.0 (1.0)

RHODE ISLAND................................................ 15.6 S. CAROLINA.................................................... 13.0 TENNESSEE................................................... 12.75 TEXAS............................................................... 13.0 UTAH................................................................. 12.0 VERMONT......................................................... 13.0 VIRGINIA........................................................... 13.0 WASHINGTON................................................ 12.75 W. VIRGINIA...................................................... 15.6 WISCONSIN...................................................... 14.0 WYOMING......................................................... 13.0

RHODE ISLAND........................................ 19.0 (1.0) S. CAROLINA............................................ 16.0 (1.0) TENNESSEE......................................... 16.58 (1.58) TEXAS....................................................... 16.0 (1.0) UTAH......................................................... 16.0 (1.0) VERMONT................................................. 16.0 (1.0) VIRGINIA................................................... 16.0 (1.0) WASHINGTON.......................................... 16.0 (1.0) W. VIRGINIA.............................................. 19.2 (2.5) WISCONSIN.............................................. 22.5 (1.0) WYOMING................................................. 16.0 (1.0)

Ethics credit is indicated in a parenthesis and is

Please check our website at www.aipla.org for current information. 2010 mid-winter institute issue

aipla bulletin

future meetings calendar 2010

2011

May 14–16 AIPLA Spring Seminar 2010, Red Rock Resort & Spa, Las Vegas, NV (http://www.laipla.net/)

February 1-5 AIPLA Mid–Winter Institute, The Peabody Hotel, Orlando, FL (703-415-0780)

May 22-26 INTA Annual Meeting, Boston, MA (www.inta.org)

April, Date TBD Design Day, cosponsored by AIPLA, ABA-IPL and IPO, at the USPTO, Alexandria, VA

June 10 AIPLA Trademark Boot Camp, Alexandria, VA June 15-19 ECTA Annual Conference, Barcelona, Spain (www.ecta.org) June 24 AIPLA Electronics & Computer Patent Law Summit, Presented by AIPLA and the AIPLA Electronic and Computer Law Committee, The Grand Hyatt, Denver, CO July 26-27 AIPLA Patent Cooperation Treaty Seminar, Alexandria, VA August 25-27 AIPLA Practical Patent Prosecution Training for New Lawyers, Alexandria, VA September, date TBD FICPI 12th OPEN FORUM - Munich, Germany, www.ficpi.org September 12-14 IPO Annual Meeting, The Hyatt Regency, Atlanta, GA (202/466-2396) www.ipo.org October 1-6 AIPPI, 42nd World IP Congress, Paris, France (www.aippi.org) October 21-23 AIPLA Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

aipla bulletin

April, dates TBD ABA-IPL Section Annual IP Conference (www.abanet.org/intelprop) May 12-14 AIPLA Spring Meeting, The Palace Hotel, San Francisco, CA (703-415-0780) May 14-18 INTA Annual Meeting, San Francisco, CA (www.inta.org) September 11-13 IPO Annual Meeting, Los Angeles, CA (202/466-2396) www.ipo.org October TBD AIPLA Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

2012 January 23-26 AIPLA Mid–Winter Institute, Ceasar’s Palace, Las Vegas, NV (703-415-0780) April, Date TBD Design Day, cosponsored by AIPLA, ABA-IPL and IPO, at the USPTO, Alexandria, VA April, dates TBD ABA-IPL Section Annual IP Conference (www.abanet.org/intelprop) 2010 mid-winter institute issue

May 5-9 INTA Annual Meeting, Washigton, DC (www.inta.org) May 10-12 AIPLA Spring Meeting, Hilton Austin, Austin, TX (703-415-0780) July, dates TBD AIPLA Patent Cooperation Treaty Seminar (703-415-0780) August, dates TBD AIPLA Patent Prosecution Boot Camp. Practical Patent Prosecution Training for New Lawyers. (703-415-0780) September 9-11 IPO Annual Meeting, San Antonio, TX (202/466-2396) www.ipo.org

2010 mid-winter institute issue

October 25-27 AIPLA Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

2013 January 30-February 2 AIPLA Mid–Winter Institute, Tampa, FL (703-415-0780) May 6–8 AIPLA Spring Meeting, Seattle, WA (703-415-0780) October TBD AIPLA Annual Meeting, Hotel TBD, Washington, DC (703415-0780)

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a n nu a l m e e t i n g

Copyrights • Annual Review: Copyright • The Ins and Outs of IP Indemnification Corporate • Advising the Corporate Client in an Era of Highly Mobile Employees • Commercial Risks: Avoiding Claims from Competitors, Business Partners, Vendors, and Inventors • e-Commerce 2.0 and IP Practice Management: Real Solutions to Workflow for Patent and Trademark Practitioners • Effective IP Case Management and Cost Control Both Before and During Litigation • Identifying Accused Products for Litigation Hold Memos • Management of IP Document Productions and Electronic Discovery • Negotiating Joint Defense Agreements with Similarly Situated Defendants in Related Cases Ethics • Annual Review: Ethics • Best Practices for Avoiding Unintentional Client Relationships • Issues with Multiple Suits, Districts, and Parties • New Tricks: Ethical and Practical Use of Technology to Enhance Communication with Patent/Trademark Offices And Clients • What’s the Matter?—Paperless Workflow Processing of New Matter and Conflict Checking International • “Hot” IP Topics in South Korea, Japan and China • Comparison of Opposition Procedures in Canada, Mexico and Europe: What the US Practitioner Needs to Know • Countries that Are Considered as “A” List Countries Where Inventors/ Assignees Should File Their Foreign Counterpart Applications • IP Enforcement Litigation in China, Korea and Taiwan • Purchasing and Selling IP in the Far East, Who is Buying and Selling Patents that Originate from Asian Sources • Where Should I File My Patent Applications in the Far East?

Litigation • How the Plaintiff Deals with MultiDefendants, Multi-Suits, and Sometimes Multi-District Litigations • How to Prepare and Request Amicus Support for Your Client • How to Work with Large Defendant Groups with Different Accused Products • Injunctions Are Alive and Well After eBay • KSR and the Ripple Effect: Examining the Broad and Increasing Impact of KSR on Patent Litigation and Practice • Management of IP Document Productions and Electronic Discovery • Patent Remedies at the Fringes • Negotiating Agreements with Similarly Situated Defendants in Other Related Cases • The Five Rules of Engagement with Third Parties • The Hypothetical Bargain Between Patentee and Infringer in Patent Litigation • Using a Court-Appointed Neutral Expert to Analyze Damage Issues • Various Issues with Multiple Suits, Districts, and Parties – A Judge’s Perspective Litigation/Corporate • Anatomy of an Indemnity Provision • Clawback of Indemnity • Indemnity War Stories and Lessons to be Learned • Scope of Indemnity • The Ins and Outs of IP Indemnification • Why and How Amicus Participation is Important for the Association to Effectively Represent Its Members Patents • Annual Review: Patent • Chemically Complicated: Effective Arguments to Combat “Obvious to Try” Rejections with Respect to Takeda and the Chemical Arts • Designing IP Strategies for Early-Stage R&D Programs Post-KSR • From In-Box to Out-Box to In-Box, Virtually: Paperless Workflow Handling of the Patent and Trademark Docketing Process • Happily Ever After? Tips on When and How to Appeal Final Rejections Based on KSR • Patent Mapping as a Strategic Tool in Patent Representation and Portfolio Analysis • Two Stones, One Bird: Should Patentee

Plaintiffs Use Reexamination to Validate Patents Granted Prior to KSR? Technology • A Stumbling Blog Before the Blind? The Troll Tracker and IP Watchdog Cases • Blog On! Thoughts on Patent Blogging from Inside and Outside the Blogosphere • Information Lag? Information Blag! Patent and Other Law Blogs as Sources of Information and Research Tools • Legal Issues Involved in Blogging Trade Secrets • Annual Review: Trade Secrets • Best Practices to Mitigate Trade Secret Litigation Risks Arising from Employee Mobility and Commercial Dealings • Combating Economic Espionage • Commercial Risks: Avoiding Claims from Competitors, Business Partners, Vendors, and Inventors • Employee Mobility Risks: Avoid Hiring Trade Secret Thieves, and Prevent Theft by Departing Employees • Lessons Learned from Secret-Keepers in the Government Contracting Context • Respect for the Trade Secret Rights of Others When Gathering Competitive Intelligence: Challenges and Ethical Considerations Trademarks • Annual Review: Trademark • Comparison of Trademark Opposition Procedures in Canada, Mexico and Europe • Oral Arguments in TTAB Proceedings: A Live Demonstration and Best Practices • Presenting a Trademark Case at Trial • Three Ways to Win a Trademark Case • Trademark Litigation - Tips and Tricks • The TTAB - Live Oral Arguments Before the TTAB and Best Practices • Winning at the Outset

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for articles AIPLA Quarterly Journal The premiere intellectual property journal for intellectual property practitioners, the AIPLA QJ, is seeking articles for publication. The AIPLA QJ is a scholarly journal designed to promote an exchange of intellectual insight and debate on issues of intellectual property law. We welcome submissions on a wide variety of intellectual property topics from all individuals studying and practicing in the area of intellectual property law. Articles should be approximately 7000 words in length (excluding footnotes), double-spaced, with full citation in Bluebook format. All submissions should be e-mailed to submissions@aipla.org. Articles are selected for publication year-round and thus there is no submission deadline. As articles are selected they are slated in the next available Journal issue.

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New Provision of Section 411 Invoked for First Time The Prioritizing Resources and Organization for Intellectual Property (Pro IP) Act, signed into law on October 13, 2008, amended section 411 of the copyright law to require that courts seek the advice of the Register of Copyrights in cases that might involve fraud on the Copyright Office. The Pro IP Act changed the law to deal with judicial proceedings in which the issue of inaccurate information in a registration certificate is raised. Specifically, section 411(b) now provides that, subject to two exceptions, the registration certificate satisfies the registration requirement regardless of whether it contains any inaccurate information. These exceptions are: (1) when the registrant knew at the time the claim was filed that the information was inaccurate, and (2) when, if the Copyright Office had known that the information was inaccurate, it would have refused registration. In cases where inaccurate information is alleged, the court is required to seek the advice of the Register on whether the Office would have refused registration if it had known of the inaccuracy. On June 1, 2009, the Register received her first request under section 411(b) when the United States District Court for the District of Puerto Rico issued an order to the Register in the case of Velazquez-Gonzalez v. Pina. In an application for registration of a song, Velazquez’s agent named Velazquez as the employer in a work made for hire, thereby asserting that Velazquez was the author and the owner. Later, the agent submitted a supplementary application changing the authorship. Instead, two individuals, Nieves and Vaszquez, were named. Velazquez continued to

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be named as the claimant, but the source of his ownership was changed to “signed transfer agreement.” The authors disputed the validity of that signed transfer agreement and also claimed that the certificate was invalid. In her response to the court, the Register stated that two questions were presented to her: “whether the Copyright Office would have refused registration if it had known that [the claimant] was not the author” of the song, and “whether the Copyright Office would have refused the supplementary registration if it had known that [the claimant] was involved in litigation disputing the validity of the signed transfer agreement giving him rights” in the song. The Office concluded that it had no reason to question the assertion of ownership, including the claim that the song was a work made for hire, in the first registration and that it would have issued the certificate. Likewise, the supplementary registration would have been accepted even if the Office had known that the facts were disputed. The Register’s reply summarized, “Ultimately, a certificate of copyright registration is simply a registration of a person’s claim of copyright ownership; resolution of disputes over ownership or authorship must be resolved in the courts rather than by the Copyright Office, which is not equipped to engage in the fact-finding and procedures involved in resolving inter partes disputes.” However, if the Office had actually known that the facts asserted in either application were false, it would have refused to issue certificates of registration.

2010 mid-winter institute issue

Upgrade of Electronic Copyright Office Under Way Last September, the Office launched a project to upgrade the electronic Copyright Office (eCO) with the newest version of Siebel, the software program on which eCO is built. The project will improve the way eCO functions for staff and public users. Office administrators reported in January that the project team assembled to implement the upgrade had completed the discovery and planning phases of the effort and had decided to start with a basic upgrade and then add enhancements. Under this approach, based on best practices in the information technology industry, the upgrade will begin with installation of new Siebel software, which will be configured to appear to users to operate the same way the current system does. However, many internal “behind the scenes” systems will be improved concurrently. To improve the system’s stability and performance, new hardware will also be installed. Afterward, added functionality will be introduced gradually through subsequent releases. “Upgrading in this way provides continuity and presents the fewest risks,” Doug Ament, chief of the Copyright Technology Office (CTO), said. Evaluation, testing, and training will occur as new functionality is added. Staff liaisons knowledgeable about particular work processes have been selected from divisions across the Office to communicate system requirements and test upgrades. “Taking the time for testing is critical,” Liz Scheffler, the Office’s chief operating officer, said. “It helps to ensure that once the system goes up, it will work.” In the fall, hardware was replaced to resolve recurring network problems in eCO performance and facilitate the introduction of the new system. Working closely with the Library’s Information Technology Services (ITS) staff, CTO moved some 20 million eCO files from a shared Library server to a Windows server dedicated solely to Copyright Office use. The migration involved Siebel system files, scanned copyright applications, uploaded deposits, templates for letters, and other digital files. It alleviated several problems: it stabilized the system, increased storage space for data, and improved access to electronic files, among other enhancements. The project team continues to collaborate with ITS to maintain and operate the new server. Copyright Office administrators said the projected date for implementation of the new version of Siebel is June 2010. “This will be the basic upgrade,” Ament said, adding that subsequent releases, including enhancements on a staff “wish list,” will follow. He anticipates that the upgrade will be mostly completed by winter 2010.

2010 mid-winter institute issue

Circular 92 Updated on Website An updated PDF version of Circular 92, Copyright Law of the United States and Related Laws Contained in Title 17 of the United States Code, was posted to the Office website in early November 2009. The new version incorporates amendments to the law made by three enactments approved in October 2008 and a fourth approved in June 2009. New Topic Added to NewsNet Subscription Service The Copyright Office has added a new topic of interest to which readers who receive NewsNet can subscribe. In addition to “What’s New at the Copyright Office,” “Licensing,” and “Legislative Developments,” readers can now customize NewsNet subscriptions to receive the latest information on the Office’s online registration system by adding “Copyright eService Updates” to their preferences. To receive “Copyright eService Updates,” click on “Email Updates” near the bottom of the Copyright Office homepage at www. copyright.gov. Enter your email address. You will then see a list of subject areas related to the Library of Congress. Scroll down to find “Copyright eService Updates” under “Copyright: All Notices from the US Copyright Office.” Interim Regulation Adopted on Mandatory Deposit of Certain Works Published Only Online The Copyright Office has adopted an interim regulation governing mandatory deposit of electronic works published in the United States and available only online. The regulation establishes that online-only works (those without a physical version) are exempt from mandatory deposit until the Copyright Office issues a demand for deposit of copies or phonorecords of such works. The regulation also states that categories of online-only works subject to demand will be identified by regulation, and it names electronic serials as the first category for which demands will issue. In addition, the regulation sets forth the process for issuing and responding to a demand for deposit, amends the definition of a “complete copy” of a work for purposes of mandatory deposit of online-only works, and establishes best-edition criteria for electronic serials available only online. The regulation took effect on February 24, 2010. Further comment on its implementation will be sought later in 2010. For further information, go to the Copyright Office website at www. copyright.gov.

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thank you AIPLA 2010 mid-winter institute sponsors! platinum Sughrue Mion, PLLC Sponsor: Thursday Dinner Theme & Entertainment

silver Bereskin & Parr Sponsor: Closing Reception & Awards for Golf & Tennis

bronze Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Sponsor: Friday Lunch Reception Fitzpatrick Cella Harper & Scinto Sponsor: AIPLA Cyber CafĂŠ Howrey, LLP Sponsor: Women in IP Law Breakfast Meeting Patterson Belknap Webb & Tyler, LLP Partial Sponsor: Opening Night Reception Schwegman Lundberg & Woessner, PA Sponsor: Wednesday New Member/First-Time Attendee Reception

30â&#x20AC;&#x192;

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2010 mid-winter institute issue

AIPLA 2010 mid-winter institute sponsors (cont’d) crystal sponsor Jamison IP Services Sponsor: Meeting Signage

pearl sponsors Conley Rose, PC Partial Sponsor: Young Lawyer Committee Networking Reception Greenberg Traurig, LLP Partial Sponsor: Young Lawyer Committee Networking Reception Los Angeles Intellectual Property Law Association (LAIPLA) Partial Sponsor: Young Lawyer Committee Networking Reception McAndrews Held & Malloy, LTD Sponsor: Tournament Golf Balls Orange County Patent Law Association Partial Sponsor: Young Lawyer Committee Networking Reception Park IP Partial Sponsor: Young Lawyer Committee Networking Reception Seyfarth Shaw, LLP Sponsor: Corporate Practice/Professionalism & Ethics Joint Committee Educational Session WEBINAR Squire, Sanders & Dempsey, LLP Partial Sponsor: Young Lawyer Committee Networking Reception Vinson & Elkins LLP Partial Sponsor: Young Lawyer Committee Networking Reception

2010 mid-winter institute issue

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AIPLA 2010

mid-winter institute leadership Alan J. Kasper, President, AIPLA

William G. Barber, First Vice President

David Hill, President-Elect

2010 Mid-Winter Institute Program Chairs: Nanette Thomas, Michael W. Piper and Allison Strickland

2010 mid-winter institute photographs by: Richard Burgess

Q. Todd Dickinson, AIPLA Executive Director

a few speakers

Imogen Fowler

Honorable Lourdes G. Baird

J.T. Westermeier

Charles A. Thomasian

Jeremey Morton Carol Beckham

David P. Ruschke Christopher Slavinsky

Comissioner Robert Stoll

Alan J. Kasper Dale Carson

a few more speakers

Elizabeth Ann Morgan

Harrie Samaras

H. Michael Hartmann

Griffith B. Price Douglas Richmond

Georgann Grunebach David Wallace

Song K. Jung

Hon. Elizabeth Laporte

a few more speakers Sohrab Kianian

Susan Neuberger Weller

Yansheng Yu

Samson Helfgott

Timothy D. Casey Scott Adler

Mercedes Meyer

Mark Lemley Michael K. Mutter

new member/first-time attendee reception

AIPLA would like to thank the sponsor of the New Member/First-Time Attendee Reception:

Schwegman, Lundberg & Woessner, PA

opening night reception red hot!

AIPLA would like to thank

Patterson Belknap Webb & Tyler, LLP

for their partial sponsorship of the opening night reception.

thursday dinner roaring 20â&#x20AC;&#x2122;s

AIPLA would like to thank

Sughrue Mion, PLLC

for sponsoring the Thursday Dinner Theme & Entertainment

friday networking reception par ty by the pool

AIPLA would like to thank the sponsors of Party by the Pool:

Conley Rose, PC Greenberg Traurig, LLP LAIPLA OCPLA Park IP Squire, Sanders & Dempsey, LLP Vinson & Elkins LLP

PAC reception

golf & tennis reception

Awards Reception for Golf & Tennis sponsored by:

Bereskin & Parr

Golf Balls for Tournament sponsored by:

McAndrews Held & Malloy, Ltd.

committee

reports

mid-winter institute january 27-30, 2010

Alternative Dispute Resolution

Chair: Rex B. Stratton (left photo) Vice Chair: Harrie R. Samaras (right photo) ___________________________________________ The committee did not meet at the Mid-Winter Institute and has no new business to report.

Amicus

Patrick J. Coyne, Chair (left photo) Edward Robert Reines, Vice-Chair (right photo) ___________________________________________ The Amicus Committee has filed two additional amicus briefs since our Annual Meeting in the Fall. We have reformed the Liaison Committee based on changes in Committee membership and look forward to another productive year. Amicus Liaison Group This group includes liaison members appointed by the various AIPLA substantive law committees. During monthly telephone conferences, we report on activity by the Amicus Committee, discuss substantive issues we are monitoring, and solicit input from liaison members regarding cases to watch. This process has now been operating effectively since Fall 2008 and the liaison group continues to discuss the Amicus Committeeâ&#x20AC;&#x2122;s progress on various substantive issues and to solicit

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from the various substantive law committees their views on cases that are being considered as well as on new cases in which the AIPLA may wish to consider participating. The following members have agreed to serve as liaison between the Amicus Committee and the various substantive law committees. Substantive Law Committee

Amicus Committee Members

Substantive Law Committee Members

AntiCounterfeiting & Anti-Piracy

Bob Payne Griff Price

Amy Sullivan Cahill

Antitrust Law

Kenneth Burchfiel Patrick Coyne Stephen Stack

Stephen Stack

2010 mid-winter institute issue

Biotechnology

Chemical Practice

Kenneth Burchfiel Barbara Fiacco Ann Mueting Warren Woessner

Warren Woessner David Cupar

Chris Chalsen Ann Mueting Freddie Park David Ruschke Warren Woessner

Larry Kass

Graeme Dinwoodie Deborah (Bea) Patrick Coyne Swedlow Rex Stratton

Electronic and Computer Law

Chris Chalsen Wayne Sobon Andrew Stein Marian Underweiser

Lance Reich; Joel Miller

Emerging Technologies

Robert Lindefjeld Ed Reines

Lawrence T. Kass

Industrial Designs Graeme Dinwoodie Chris Carani Robert Lindefjeld Perry Saidman Rex Stratton International Trade Commission

Chris Chalsen Bob Payne Kevin Rhodes Andrew Stein

Ian Taronji Andrew Stein

Licensing and Management of Intellectual Property Assets

Chris Chalsen Mark Halligan Freddie Park David Ruschke Wayne Sobon Marian Underweiser

Philip E. Roux Christopher W. Day

Patent Law

Gordon Arnold Barbara Fiacco Kevin Rhodes David Ruschke Wayne Sobon Marian Underweiser

Patent Litigation

Gordon Arnold Barbara Fiacco Kevin Rhodes David Ruschke

Dianne Elderkin

Standards & Open Patrick Coyne Source Edward Reines Marian Underweiser Doug Luftman

Michele Herman

Trade Secret Law

Sid Leach Jerry Cohen

2010 mid-winter institute issue

Mark Halligan Griff Price Rex Stratton

Graeme Dinwoodie Rex Donnelly; Mark Partridge Kelu Sullivan Griff Price

Trademark Law

Graeme Dinwoodie Allison Strickland Mark Partridge Griff Price Allison Strickland

Trademark Litigation

Graeme Dinwoodie Allison Strickland Mark Partridge Griff Price Allison Strickland

Trademark InternetCyberspace

Focus In order to make our efforts more productive, the Amicus Committee is aligning its focus with the Board’s other public policy outreach programs. The AIPLA is currently involved in a number of public policy outreach initiatives with respect to patent reform and the administration of the courts. The Committee has identified a number of substantive issues that it has been monitoring this year. The Committee is following through on these initiatives but is also mindful of looking for opportunities where amicus filings can strengthen and support the Board’s public policy outreach initiatives with respect to pending legislation. We are particularly mindful of amicus opportunities with respect to issues of fraud and inequitable conduct and damages. Amicus Network AIPLA has joined with a number of other associations in an amicus notification network. This program will help AIPLA share resources and coordinate our positions in appropriate cases, hopefully increasing our impact while lessening the burden on the Court of receiving multiple briefs espousing the same position. The network continues to grow and we anticipate increased coordination among various bar groups as this year progresses and well into the future. Amicus Filings (2009-2010 Program Year) Princo Corp. v. US International Trade Commission, en banc Fed. Cir., No. 2007-1386, filed December 4, 2009. Decision on Petition for Rehearing and suggestion for rehearing en banc─pending. AIPLA, in a December 4, 2009 amicus brief, argues to the en banc Federal Circuit that patent misuse allegations arising from license restrictions on pooled patents must be analyzed under a “rule of reason” approach. The brief addresses the question of whether a finding that there was no illegal tying resulting from aipla bulletin

the pooled patent agreements precludes antitrust liability for an agreement not to license outside the patent pool a particular patent on allegedly competing technology. According to the brief, this question must be decided under a “rule of reason” analysis and not on a per se basis. It also urges that the Court clearly place the burden of proving anticompetitive effect under the rule of reason on the party invoking the patent misuse defense or asserting antitrust claims (in this case, Princo). The petition for rehearing and suggestion for rehearing en banc is pending. ________________________________________ Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., en banc Fed. Cir., No. 2008-1248, filed November 19, 2009. The appeal was argued to the en banc Court on December 7, 2009─submitted. AIPLA, in a November 19, 2009 amicus brief, argues that Section 112, ¶1 of the Patent Act contains a written description requirement that is distinct from, but related to, an enablement requirement. It further argues that the purpose and scope of the written description requirement is to act in concert with the other requirements of Section 112 to advance the disclosure objectives of the patent system. In the patent validity context, the requirement should be applied not as an independent measure of compliance with the disclosure requirement of Section 112, but together with the other specification requirements of enablement under Section 112, ¶1, and identification of the invention in the claims under Section 112, ¶2. Compliance with Section 112 should therefore be judged by the sufficiency of the disclosures as a whole, not by the sufficiency of the disclosure under any one requirement. The appeal has been argued and is submitted and awaiting decision. ________________________________________ Bayer Schering Pharma AG v. Barr Laboratories, Fed. Cir., No. 2008-1282, filed September 28, 2009. Petition for rehearing and suggestion for rehearing en banc─denied. AIPLA, in a September 28, 2009 amicus brief, supports a petition for en banc review of a Federal Circuit panel ruling that a “viable alternative” in a prior art rendered a patented method “obvious to try” and thus invalid under Section 103 of the Patent Act. The AIPLA brief seeks a clarification of the obvious-to-try analysis in light of KSR. It argues that the introduction of “a viable alternative” test confuses the analysis and undermines the requirement of KSR that the prior art alternative be a 44

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“predictable” solution. The panel majority’s conclusion that the option in this case was “viable” appears to have been based on hindsight reasoning that was based upon the very work that produced the invention. The Court has denied the petition for rehearing. ________________________________________ Agilent Technologies, Inc. v. Affymetrix, Inc., Federal Circuit, filed August 18, 2009. Petition for Rehearing and suggestion for rehearing en banc denied in September 2009. AIPLA, in an August 18, 2009 amicus brief, supported a petition for en banc review of a Federal Circuit panel ruling on claim construction in interferences. According to the brief, the panel incorrectly required consideration of the specification of the copied patent to decide written description issues, and consideration of the specification of the copying application to decide patentability over the prior art. The brief argues that the panel applied an obsolete rule that dates back to a period before issues of validity and priority were merged into a single proceeding. ________________________________________ Bilski v. Kappos, Supreme Court, filed Aug. 6, 2009. The appeal was argued to the Court on November 11, 2009─submitted. AIPLA, in an August 6, 2009 merits amicus brief, argued to the Supreme Court that the Federal Circuit’s “machine or transformation” test for the subject matter eligibility for process patent protection ignores the clear Congressional intent that any process be patenteligible and misinterprets Supreme Court precedent. According to the brief, this test is derived from dictum in Supreme Court case law and is tied to the vocabulary of technologies developed in earlier ages. As such, it is backward-looking and ill-fitted to future discoveries and technologies as yet unimagined. The case was argued on November 9, 2009 and has been submitted. ________________________________________ Reed Elsevier, Inc. v. Muchnick, Supreme Court, filed June 8, 2009. The appeal was argued to the Court on October 7, 2009─submitted. AIPLA, in a June 8, 2009 amicus brief argued to the Supreme Court that the Second Circuit in this case misinterpreted 17 U.S.C. § 411(a) by treating the requirement of copyright registration as a condition precedent to subject matter jurisdiction over an action for copyright infringement. On this basis, it incorrectly barred an action for infringement where some of the 2010 mid-winter institute issue

works in suit had been registered at the Copyright Office and some had not. The case has been argued and is awaiting decision by the Court. ________________________________________ Prometheus Laboratories, Inc. v. Mayo Collaborative Services, Federal Circuit, filed January 22, 2009. Petition for writ of certiorari filed October 22, 2009─pending. AIPLA, in a January 22, 2009 amicus brief argued to the Federal Circuit that the district court improperly applied 35 U.S.C. 101 to find no patent-eligible subject matter in claims to a method used in treating Crohn’s disease. The brief argues (1) that the claimed methods meet the machine-or-transformation test in Bilski, (2) that the district court overreacted to the dissenting opinion in the Supreme Court’s Lab. Corp decision, and (3) that this case is distinguishable from other decisions finding no patent-eligible subject matter. The Federal Circuit held, on September 16, 2009, that the invention satisfies the “transformation” test under the Federal Circuit’s en banc decision in Bilski. A petition for writ of certiorari was filed on October 22, 2009, and remains pending

________________________________________ Cardiac Pacemakers Inc. v. St. Jude Medical Inc., Federal Circuit, filed January 30, 2009. Cert denied: January 11, 2010. AIPLA, in a January 30, 2009 amicus brief filed jointly with the Federal Circuit Bar Association, argued to the Federal Circuit that that 35 U.S.C. §271(f), barring the supply of components abroad for combination into a device that infringes a patented invention, does not apply to process claims. The brief argues that the panel ruling to the contrary in Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005), must be overturned as inconsistent with precedent, as based on an incorrect statutory construction, as inconsistent with the legislative history of the statute, and as substantially undermined by Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007). The Federal Circuit held on August 19, 2009 that that Section 271(f) does not apply to process claims. A petition for a writ of certiorari was filed and the petition was denied on January 11, 2010.

Anti-Counterfeiting and Anti-Piracy Chair: Kieran Doyle (left photo) Vice Chair: Sherri L. Schornstein (right photo) ___________________________________________

The committee did not meet at the Mid-Winter Institute and has no new business to report.

Antitrust Law

Chair: Kenneth M. Frankel (photo) Vice Chair: Richard S. Taffet (not pictured) ___________________________________________ The committee did not meet at the Mid-Winter Institute and has no new business to report. 2010 mid-winter institute issue

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Biotechnology

Chair: Karen S. Canady (left photo) Vice Chair: James J. Kelley (right photo) ___________________________________________ The Biotechnology and Corporate Practice Committees held a joint meeting during the AIPLA Mid-Winter Meeting in La Quinta, CA. After a brief introduction of subcommittee chairs and new initiatives for the Biotechnology Committee, we began our program: “From the Bench to Market: Bridging the Gaps for Early Stage Development in a Difficult Economy”. A panel of distinguished speakers, moderated by Carol Nielsen of Nielsen IP Law LLC, addressed the challenges and rewards of advancing life science technology in the current economic environment. The panelist included Gino Di Sciullo, PhD a partner at Charter Life Science in Palo Alto, California, Earl Weinstein, PhD, Associated Director of the Office of Intellectual Property & Industry Sponsored Research at UCLA, Renee M. Kosslak, PhD, General Patent Counsel at Facet Biotech, and Chris Slavinsky, Assistant General Counsel and Lead Counsel, Business Transactions at Pfizer, Inc. Dr. Di Sciullo’s presentation was generally directed to a review of trends in life sciences financing. He pointed out the growing supply of technology with global demand for health care and the greater access to seed capital at the early stage of development, VC funds being generally available a later stage. He discussed the technology boom as reflected in modernization and industrialization efforts at the universities, off-the-shelf research tools, outsourcing of R&D by many businesses, and the overall entrepreneurism of the last decade. Dr. Di Sciullo commented on favorable investment conditions such as the maturing business-friendly infrastructure. He noted the growth in recent years in the number of angel groups, the promotion of biotechnology at the state level, and venture philanthropy. Dr. Weinstein described how the current economic environment has been influencing technology transfer at US universities. He noted that many of the universities are only applying for patent protection on inventions that are likely to be commercialized, and that it is helpful to establish contacts with persons in the industry who will also go forward with sponsoring further research and/or licensing of the universities’ technology. He discussed 46

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briefly the technology transfer process of licensing technology and noted that it is important to respond to the more disciplined, capital-efficient and milestone-driven financing environment. For example, it is important to have university initiatives to bridge the “venture gap” that has resulted from the current economic crisis. These university initiatives include on-campus incubation programs, forming companies around a technology platform, shifting the focus of deal terms, changing the choice of licensees and modifying the overall IP strategy of the university. Dr. Kosslak spoke as a patent attorney who joined a company as it transitioned from being a leading provider of antibody humanization technology to a product-driven enterprise. Dr. Kosslak shared also her experiences in navigating the economic downturn and responding to shareholder pressure. She noted how difficult it can be to regularly evaluate platform technologies to create new business opportunities. She discussed importance of partnering to create sustainability and how license agreements with academic institutions have bridged the gap for reduced R&D efforts in-house. Finally, Chris Slavinsky’s presentation was directed to Pfizer’s partnering initiatives in seeking innovation, sharing experience and creating value. He briefly discussed Pfizer’s worldwide business development strategies and how Pfizer has many of the best assets, pipeline and capabilities in the industry. He gave an overview of this mega company and outlined its operating model. Mr. Slavinsky set out some examples of Pfizer’s innovative therapies in the key areas of unmet medical need. He also gave some highlights of Pfizer’s biopharmaceutical business. Mr. Slavinsky noted that Pfizer has a long history of successful collaborations and is now pursuing certain areas of interest such as vaccines and emerging markets. Pfizer is committed to partnering through responsive and flexible transaction structures. As such, Mr. Slavinsky highlighted in general terms Pfizer’s venture investments in areas of its current and future strategic interests, and noted the power of collaboration.

2010 mid-winter institute issue

Chemical Practice

Chair: Michael R. Dzwonczyk (left photo) Vice Chair: William B. Kezer (right photo) ___________________________________________ The committee did not meet at the Mid-Winter Institute and has no new business to report.

Chair: Kevin Tottis (left photo) Vice Chair: Amy Cahill (not pictured) ___________________________________________ Members of the Copyright Law Committee engaged in a lively discussion about fair use and infringement at the Mid-Winter Institute meeting. Board Members (and former Copyright Committee Chairs) Elizabeth Ann (“Betty”) Morgan and Robert W. Clarida led an open talk about current hot copyright topics including the Google Books settlement and the Shepard Fairey

case. The Committee continues to build its Amicus and Legislative subcommittees. In addition, the Committee has formed a case summary group (currently headed by new Vice-Chair Amy Sullivan Cahill) to provide the membership with updates on developments in the law.

Corporate Practice

Chair: Georgann S. Grunebach (photo) Vice Chair: Kenneth Seddon (not pictured) ___________________________________________ See Biotechnology Committee Report.

2010 mid-winter institute issue

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Diversity in IP Law

Chair: Diallo Crenshaw (left photo) Vice Chair: Neema Desai (right photo) ___________________________________________ As usual, the Mid-Winter Diversity Committee business meeting opened with the chair, Diallo Crenshaw, pointing out that the diversity committee is essentially a committee filled with Chairs. In other words, the committee is open to ideas from its membership about the direction it wants to go in. The committee is going to continue to focus on the pipeline issue of informing future potential diverse attorneys about our career path. Additionally, a number of committee members have stepped up and are helping plan programs/events that relate to other areas of diversity and the IP bar. - The Diversity Committee is planning a networking event in NY and a number of attorneys at the mid-winter conference indicated a willingness to assist in the planning. Please let Diallo Crenshaw (dcrenshaw@ sughrue.com) know of any firms or other entities that are interested in promoting diversity in the IP bar and may be interested in serving as a sponsor.

- By the spring conference, we plan to have a presence established on Facebook. It can be yet another forum to promote the committee and foster communication amongst the membership. Todd Baker is spearheading this effort. - If you are a liaison between our committee and another committee, please keep the membership up to date with developments in your other committees. - Wayne Sobon facilitated the first meeting of a subcommittee directed to LGBT issues. AIPLA has not had such a committee in the past and Wayne is spearheading the efforts of this subcommittee. - The diversity committee is planning a diversity related event that will be on the MAIN program of the Fall 2010 AIPLA conference. Will follow up with further information in the near future.

Education

Chair: Troy Grabow (left photo) Vice Chair: Hathaway Russell (right photo) ___________________________________________ The Education Committee is off to a great start for 2010. Our plans and goals for the rest of 2010 include: 1. Online “Webinar” Programs The Education Committee partnered with the Online Programs Committee to conduct a webinar on January 22, 2010 entitled “Maintaining and Gaining Career Momentum in Spite of the Economic Downturn.” The panelists listed below were kind enough to share their 48

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expertise, provide strategic advice, and answered a wide range of questions submitted by the audience during the webinar. Janet Gongola of the US Patent & Trademark Office; Dan Binstock of BCG Search; DeAnn Smith of Foley Hoag; and Dean Nakamura of MDIP LLC Moderator: Hathaway P. Russell of Foley Hoag The webinar was a huge success with over 80 2010 mid-winter institute issue

participants. We are therefore planning on having other online programs throughout 2010. For example, we are discussing putting together a teaser and followup programs related to the Trademark and Patent Bootcamps, discussed below. 2. Annual Practical Patent Prosecution Training for New Lawyers Program (“Patent Boot Camp”) The Education Committee has already begun planning for this year’s AIPLA Practical Patent Prosecution Training for New Lawyers Program (“Patent Boot Camp”), which is tentatively scheduled for the end of August 2010, at the Westin Alexandria, Virginia. This popular three-day program has been offered annually for several years, and includes instructional sessions and hands-on claim drafting workshops taught by skilled and experienced private and corporate practitioners. Last year we had three talks that were webcast live from the Boot Camp, and we hope to do this again for the 2010 program. The 2009 webcast sections included “Interviewing Examiners and Knowing the USPTO” by Leon Radomsky, “Prosecution Tips from a Patent Litigator’s Perspective” by Paul Tripoli, and “Ethics, IDSs and Duty of Candor” by Jeffrey Townes. The Education Committee also worked with Online Programs for a post-Patent Prosecution Boot Camp online program in October 2009 directed to one of the sections from the Boot Camp - Continuation and RCE Practice: Present and Future Tips. We have also started a subcommittee for planning of the 2010 Patent Boot Camp. Another way for committee members to get involved would be to attend or serve as an instructor at the Boot Camp; please let us know if you would like to volunteer. Please be sure to look for our upcoming announcements and encourage your friends and colleagues to attend the 2010 program. 3. Annual Trademark Boot Camp To increase awareness of AIPLA as a preeminent organization and resource for US trademark attorneys and to further the AIPLA strategic mission of enhancing knowledge for a diverse IP community, the Education Committee assisted the Trademark Committee in organizing the first Trademark Boot Camp program, held at the Westin Alexandria on June 17, 2009. This oneday event was very well attended and we received many positive comments from attendees. Generally following the format of the Patent Boot Camp, the Trademark Boot Camp covered basic trademark prosecution techniques and was primarily directed to young attorneys or 2010 mid-winter institute issue

attorneys new to the area of trademark prosecution. We are in the process of organizing the 2010 Trademark Boot Camp, which will be held in mid-June 2010. Please contact one of us or Kim Van Voorhis (kvanvoorhis@ mofo.com) or Amie Peele Carter (amie.peelecarter@ bakerd.com) of the Trademark Committee if you are interested in getting involved. Bryant Young of Connelly, Bove, Lodge, & Hutz will be serving as the subcommittee chair for this year’s Trademark Bootcamp. Further details will be provided in the near future. 4. New Law Professor Subcommittee We are in the process of organizing a law professor subcommittee, aimed at providing a forum for both full-time and adjunct professors to discuss issues with teaching IP, as well as providing resources to facilitate their practice. We also hope that our activities with the subcommittee will inspire others to teach IP in law schools. Our inaugural event will be an exciting program at the May 2010 Spring Meeting in New York City where we will have a diverse group of full-time and adjunct professors and law school deans discuss such issues. . There will also be an opportunity for law professors to network amongst themselves as well as with the young lawyers and law professors attending the Spring Meeting. Jack Hicks of Womble Sandridge & Rice will be heading up the subcommittee. Please let us or Jack (JHicks@ wcsr.com) know if you are interested in participating and pass on the word that this subcommittee is looking for full-time and adjunct professors to participate in our activities. We would also love to hear any ideas you have on issues we should address or activities you would like to see. 5. The Coordination Role of the Education Committee The Education Committee will continue to serve as a communication, networking and teaching resource. The committee plans to continue its liaison activities with the substantive committees and hold joint meetings with other committees on topics of interest to a cross-section of attorneys. We are also planning various activities with other committees such as the Young Lawyers and Law Students Committees. Finally, please let us know if you have any ideas for activities or new subcommittees for the Education Committee, or if you would like to volunteer. aipla bulletin

Electronic and Computer Law

Chair: Manny Schecter (left photo) Vice Chair: Jacques L. Etkowicz (right photo) ___________________________________________ The Electronic and Computer Law Committee and the IP Practice in Japan Committee jointly presented a committee session entitled International Exercises in Patent Subject Matter Eligibility. The session was a follow-on from a similar session held at the same meeting a year ago, except that this year’s session focus was on analyzing actual inventions and how to claim them so as to satisfy current requirements for subject matter eligibility in the US, Europe, Canada, and Japan. The joint session was moderated by Jim Hallenbeck (Schwegman, Lundberg, & Woessner). A panel led the discussion with the audience and included representatives from each of the geographies discussed: Ann McCrackin, US (Schwegman, Lundberg, & Woessner), John Collins, Europe (Marks & Clerk), Robert Wilkes, Canada (Ridout & Maybee), and Kazunori Kurusu, Japan (Kurusu Patent Law Office). Mr. Hallenbeck introduced the format, after which each member of the panel briefly reviewed the state of the law in the current geography. The majority of the session was spent considering inventions presented by Mr. Hallenbeck in a robust interactive discussion with the audience. Most of the discussion centered on how to satisfy the “machine-or-transformation” requirement for subject matter eligibility of methods in the US, and the equivalent requirements in the other geographies. The inventions discussed included: Invention A The idea of this invention is to determine whether or not testing of a modeled object that does not physically exist is patent eligible subject matter. Under the machine-or-transformation test, a method is patentable if it transforms a particular article into a different state or thing. A system claim could easily be drafted in the US to include machine elements, but what about a pure method that is not tied to a particular machine? Also to test signal claiming in the various jurisdictions. A modeling and simulation program that allows 50

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for modeling of airplane wings and simulation of respective airplane wings under various conditions. The simulation allows for testing of airplane wing designs under conditions under which the airplane wing designs must be able to operate in. The modeling and simulation program allows for modeling and simulation of wing performance prior to manufacturing of the wings. Thus, the simulation is of airplane wings that do not physically exist. The program is encoded on a computer readable medium and is executable by one or more computer processors. The computer readable medium may include a hard disk, a volatile or non-volatile memory device, a carrier wave, and the like. The airplane wing designs are modeled graphically on a display device and the designs are stored in a database stored on a data storage device. The simulation is performed by applying a plurality of modeled environmental condition simulations that are also stored in the database. The modeled wing and modeled environmental conditions are retrieved from the database in some embodiments and then executed. During execution, various stress values on the airplane wing model are determined and stored in the database. The stress values may subsequently be retrieved from the database as a function of an identifier of an airplane wing model identifier. Invention B The invention here clearly includes system elements that could be incorporated into a claim to satisfy the machine arm of the machine-or-transformation test. However, if a pure method claim were to be drafted, could the method claim be written in a way to be patent eligible without specific system elements? A system monitoring method that includes at least one rule and a notification address to send a notice to when the rule is violated. A rule includes one or more parameters that are defined, such as when an amount of available storage space available within a database goes below ten percent, a violation is declared. When the violation is declared, a message is sent to an associated address. That address may be an email address, a mobile phone number to which 2010 mid-winter institute issue

a text message may be sent, or other address to which an electronic message may be sent. In some embodiments, the address may be to a program on a server connected to a sound system within a facility. When the program receives the message, the program causes the sound system to generate an audible alarm. The system does not store any data about the messages sent. The rules may be applied on a recurring periodic basis, such as hourly or daily, and if the violation exists, a message is sent regardless of whether or not previous messages have been sent. The method is implemented by storing defined rules and processing those rules by retrieving the rules with a rules engine that executes on a computer processor. The rules may be stored in a rules database. Invention C This invention is based on the Prometheus v. Mayo decision of the Federal Circuit from which Mayo has requested Cert. to the Supreme Court. A method of maximizing the effect of a drug in a human or animal. The drug is x-penta-chlorophyll and is toxic to both human and animals, but is effective treating various forms of cancer. X-penta-chlorophyll is a naturally occurring substance in leaves of a tree that grows in Honduras. However, pharmaceutical form is synthetic. The toxicity of the drug causes flu-like symptoms in low doses, but quickly becomes dangerous at minimally higher doses as the capacity of the liver to process x-penta-chlorophyll has a threshold level that varies between subjects. Thus, to ensure the efficacy of x-penta-chlorophyll while ensuring the drug is not administered at lethal levels, a subject’s metabolite levels are measured. In particular, a metabolite 5-chloroguanine is the metabolite that results in the subject’s blood from metabolized x-penta-chlorophyll. The 5-chloroguanine can be measured through highpressure liquid chromatography which transforms a blood sample from blood into particular metabolites. When the measured 5-chloroguanine levels are less than 230 pmol per 8x108 red blood cells, the dosage of x-penta-chlorophyll must be increased in a subsequent dose. However, when the measured 5-chloroguanine levels are greater than about 400 pmol per 8x108 red blood cells, the dosage of x-penta-chlorophyll must be decreased to ensure the toxicity does not become lethal to the subject. Invention D This invention adds a bio-informatics type embodiment where a computer can be used to make a determination based on measured medical data. 2010 mid-winter institute issue

Same as invention C, plus… It has also been observed that when a dose of x-pentachlorophyll is administered and the subjects white blood cell count increases by a factor of 1.25 within one day and between 2.00 and 2.15 in two days, the subject’s prognosis is survivability for at least five years. Further, if the white blood cell count increases by a factor of 2.00 or more within one day and between 2.50 and 2.65 in the two days, the prognosis is survivability for at least 10 years. This formula for prognosis is embodied in a computer system that executes method of receiving white blood cell count data for each of two measurements and determining a prognosis based on the above factors. Invention E The purpose of this invention is to place a Prometheus type invention in the context of computer implemented invention to optimize performance efficacy for treatment of a network latency disorder, if you will. A method of optimizing performance efficiency of a computer network and minimizing computer network latency. Some embodiments include a network manager program pinging a networked device, such as a router, switch, client computer, and the like, and measuring a response time to the ping. The network manager then determines a network timeout period for the network device. When the response time to the ping is greater than 15 milliseconds, the response time indicates a need to increase the network timeout period. When the response time is less than 5 milliseconds, the response time indicates a need to decrease the network timeout period. The response times are set within the network manager program and propagated to other network devices via signals including commands for respective network devices to make that appropriate adjustments to timeout periods. Invention F This invention provides an example of technical subject matter and business method issues currently being dealt with in foreign jurisdictions, for example, in Canada. A method and a system allow a purchaser to place an order for an item over the Internet. A feature of the system allows the purchaser to purchase an item with a single-action. A server uses a client identifier sent from a client’s computer to associate the client’s computer with the purchaser’s payment and shipment information (purchaser-specific account information). The client identifier is stored in the client’s computer by the server aipla bulletin

when the client enters his or her identification, billing and shipping information (purchaser-specific account information), usually at the time of the client’s first visit to a Web site. On a subsequent visit to the Web site by the client’s computer, the server recognizes the client identifier as belonging to that client. The client may then browse items, and decide to buy an item by clicking on only one button which sends the request to order the item along with the client identifier. The effect of this single-action is to instantly order the item. The server system will receive the purchase request, automatically retrieve the client’s account information using the client identifier, and combine the retrieved account information to generate the order. Only one click of the client’s mouse is required. Invention G This example is similar to the above ordering system of Invention F. Does the involvement of a physical mail piece provide a basis for finding patent eligible subject matter? A method provides confirmation relating to the distribution of a mail piece within a mailing system. Information concerning evidence of proper postage payment and information concerning “value-added services”, such as addressing information for a return receipt to be sent to the originating party, are combined and made part of what is commonly known as a digital postage mark (DPM), which is to be printed on a physical mail piece. A DPM is usually comprised of computerized information printed or otherwise attached to a mail item by a sender to provide evidence of payment to a verification authority (e.g. United

States Postal Service). A 2-dimensional barcode may be used as the format of a DPM, which can be read by a scanner. Upon receipt of a mail piece the DPM can be read and the information regarding the valueadded services captured, whereby the information can be used to send a return receipt to the mailer. Invention H This invention provides an example of technical subject matter and business method issues currently being dealt with in foreign jurisdictions, for example, in Europe and the United Kingdom. Known auction systems operated over a network by client computers accessing a server suffer from data transmissions delays which result in valid bids being discounted as received too late. A new auction system is designed to overcome this problem and comprises an auction server connected over a network to client computers. The server operates to collect bids from participants using the client computers. Each bid comprises two prices: a desired price and a maximum price in a competitive state. Hence a participant selects their desired bid price and maximum bid price at the start of the auction. The auction then runs automatically at the server to process the bid data by setting an initial auction price and then lowering it until it reaches the highest desired bid or bids. If there are several identical highest bids, the price is raised until only the bidder with the highest maximum bid price is left. Thus the price paid by the successful bidder is higher than any other maximum bid price for bidders with the same desired bid price. Hence the auction system avoids the problems of bid transmission timing delays.

Emerging Technologies

Chair: Brian H. Batzli (left photo) Vice Chair: Kirk A. Damman (right photo) ___________________________________________ At the 2010 Mid-Winter Meeting, the Emerging Technologies Committee held a joint educational meeting with the Special Committee on Genetic Resources, Traditional Knowledge and Folklore 52

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(“Special Committee”) and the IP in Latin America Committee. The topic of the educational meeting was directed toward the IP laws and practices in connection with genetic resources (GR) in Brazil, India and 2010 mid-winter institute issue

China. Ms. DeAnn Smith (the Vice chair of the Special Committee) moderated the session. The speakers were: •

Dr. Rajesh Acharya from H K Acharya & Company -- presenting on GR in India; and

•

Mr. Joaquim Goulart from Dannemann Siemsen -- presenting on GR in Brazil.

Unfortunately, Mr. Thomas Moga (the Chair of the Special Committee) was unable to present on GR in China due to technical difficulties with equipment in the conference room. Following the presentations, there was a lively discussion on GR. Those in attendance found the presentations interesting, informative and thought-

provoking. Portions of the presentations will be posted on the Emerging Technologies Committee home page shortly. The Emerging Technologies Committee wishes to thank each of the speakers and Ms. Smith for their contributions. Prior to the joint educational meeting, Mr. Brian Batzli (Chair of the Emerging Technologies Committee) held a brief business meeting for the Committee. The two main agenda items were upcoming educational meetings and that the Committee has been asked to monitor green technology issues. More specifically with respect to upcoming educational meetings, topics include informatics, green technologies, the US position on including intellectual property issues in international climate change agreements, and interoperability standards.

Fellows

Chair: John T. Wiedemann (left photo) Vice Chair: Sheldon H. Klein (right photo) ___________________________________________ The committee met at the Mid-Winter Institute and discussed the draft Fellows Program for the 2010 Annual Meeting.

Industrial Designs

Chair: Christopher V. Carani (photo) Vice Chair: Anthony E. Dowell (not pictured) ___________________________________________ The committee did not meet at the Mid-Winter Institute and has no new business to report. 2010 mid-winter institute issue

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International and Foreign Law

Chair: Maria Eliseeva (left photo) Vice Chair: William S. Boshnick (right photo) ___________________________________________ The committee is working on establishing a subcommittee on IP practice in India. The committee meeting in May will present the agenda and immediate work projects for that subcommittee. The committee is also working on organizing a trip to Russia, which is tentatively planned for the first half of September of 2010. Specifically, the committee’s effort will be to establish better working relationships with patent attorney organizations in Russia and the former Soviet Republics, as well as with the Moscow

chamber of advocates, and improving the knowledge of the AIPLA membership on IP laws and enforcement activities in that region. The committee is in touch (and will be working) with the Intellectual Property Attaché at the US Embassy in Moscow and US-Russia Chamber of Commerce for planning and coordinating the visit of the AIPLA delegation to Moscow. A report on the main features of the new Patent Act in New Zealand will be presented at the Spring Meeting committee meeting.

International Education

Chair: Marc A. Hubbard (left photo) Vice Chair: James E. Ruland (right photo) ___________________________________________ Mission: The Committee will, in response to requests, meet with visiting delegations and arrange for speakers and delegates for lectures, seminars, and other meetings outside the United States. The Committee will also develop and produce on-line programs specifically targeting practitioners and others outside the United States. The Committee will coordinate its activities with those of the International and Foreign Law, the IP Practice in Europe, the IP Practice in Japan, the IP Practice in Latin America, the IP Practice in the Far East Committees, and the Special Committee of International Practitioner Associations. Executive Summary: The focus in the past calendar year has been meeting 54

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with foreign delegates to discuss US intellectual property policies and regulations. Moving forward, we will continue these activities. We will also coordinate with other committees to identify programs of interest that can be presented using an online platform, and produce several on-line programs for 2010 geared toward practitioners outside the United States. Specific tasks update and going forward: Committee Vice Chair Jim Ruland and member Kevin Kunzendorf joined others from AIPLA in a meeting with a Chinese delegation from the State Administration for Industry and Commerce at the AIPLA headquarters on December 4, 2009. We will continue, upon request, to arrange meetings with foreign delegations in the US as well as facilitate lectures and seminars in foreign countries. 2010 mid-winter institute issue

We are planning to meet or speak with the Chairs and Vice-Chairs of related committees in order to identify subject matter, speakers, sponsors and ways of promoting for online programs of interest to non-US practitioners. We are in the process of organizing a trial online program for the first half of 2010 and developing a

short-list of candidate programs for 2010. We have identified a target program for German speaking practitioners planned for April 28, 2010. We plan to produce several more programs by the end of the calendar year. We are also having committee members undergo CITRIX training. Finally, we have begun the process reinvigorating the Committee’s microsite.

International Trade Commission (ITC) Chair: Tom M. Schaumberg (left photo) Vice Chair: L. Scott Oliver (right photo) ___________________________________________ See Patent Litigation Committee Report.

Inventor Issues

Chair: Mark E. Ungerman (left photo) Vice Chair: Darren Franklin (right photo) ___________________________________________ Committee Meeting Discussion Items: •

Definition of Committee Mission Statement;

•

Definition of Committee Imperatives and formation of Sub-Committees (see below);

•

Identification of Constituency;

•

Partnering;

•

Efforts toward establishing charges and goals;

•

Redefinition of focus and direction.

•

Specific Initiatives

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1. Patent Purchase Agreements: Discussed ad hoc sub-committee on Patent Purchase Agreements. We are still in search of someone to serve as subcommittee chair, Mark Ungerman committee liaison. Sub-committee will create resource library, sample agreements, law review articles etc. We will solicit interest and participation/sub-committee members at next Committee conference call. 2. Patent Markets/Valuations: Established ad hoc sub-committee on Patent Markets/Valuations. We are in search of someone to serve as sub-committee aipla bulletin

chair. Sub-committee will: A. Establish program ideas and continue dialog with others to see if they have any interest or other ideas that mesh with our mission; and B. Create resource guide or program for giving information regarding product development, promotion and licensing. Tips on how to market and warnings about invention submissions. Consider production of handout that members can provide to clients. We will solicit interest and participation/sub-committee members. 3. Counsel Engagements: Established ad hoc subcommittee on Counsel Engagements. Chair of subcommittee Tara Williams, Mark Ungerman, committee liaison. Sub-committee will: A. Enforcement/Licensing: Investigate potential for program or joint committee meeting with another committee, possibly Committee on Professionalism and Ethics, Law Practice Management Committee or Litigation Committee. Identify and report on

counsel engagement parameters. Also consider scenarios with patent prosecution, example taking equity in company, success fees. B. Portfolio Development/Preparation Prosecution: See A. above.

and

4. Committee Resource Library. Over the course of the coming year we will create and compile Committee Resource Library. 5. Blog: Discuss implementation of a blog or discussion group to facilitate collection of resources and to provide information. 6. Update “How to Protect and Benefit From Your Ideas”. The Committee will update the pamphlet “How to Protect and Benefit From Your Ideas” and depending on timing coordinate with rules update/patent reform. Mark Ungerman will coordinate this effort. 7. Forming Task Force to consider certain pro bono issues in response to specific request. Soliciting volunteers for Task Force.

IP Law Associations

Chair: Fraser Roy (left photo) Vice Chair: Laura J. Zeman (right photo) ___________________________________________ Our committee meeting at the January 2010 Mid-Winter was used as a planning and organizational meeting resulting in the updating of membership with the three sub-committees (E-Mailer Sub-Committee, MicroSite Sub-Committee, and Regional Roundtable SubCommittee) and updating of AIPLA Committee Liaison appointments and Regional Association assignments. To briefly summarize our meeting: I. Welcome and Introductions – We welcomed the members of the committee and discussed the charge of the committee to enhance the relationships and 56

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communications between the local and regional associations and the AIPLA. Identified the need for additional members, with current openings for committee members. II. Sub-Committee Updates – Identified specific subcommittees, sub-committee members, and associated responsibilities, focuses, and purposes. These subcommittees included: E-Mailer Sub-Committee – Charged with crafting e-mailers to the regional and local associations, 2010 mid-winter institute issue

including obtaining content for the emailer. Micro-Site Sub-Committee – Charged with maintaining accuracy of committee’s microsite, including developing and updating content with committee information, reports, and minutes and increase accessibility to regional and local associations. Regional Roundtable Sub-Committee – Charged with developing discussion topics and organizing and hosting regional roundtable discussions with leaders of regional and local associations using GoToMeetings, Webinairs, etc. III. AIPLA Committee Liaison Appointments – Appointment of new liaisons for the AIPLA Committees and charged members to contact Committee leadership prior to Spring Meeting and discuss conduct that would enhance relationship of Committees with the regional and local associations. IV. Roundtable Topic Development – We briefly summarized our committee’s goal with the roundtables to enhance communication between geographically positioned regional and local associations and AIPLA. Committee members will host roundtables for their local and regional associations and develop roundtable topics beneficial to those associations. IP Law Association Sub-Committee Assignments 2009-2010 Committee Member

Sub-Committee

Salvatore Anastasi (Berwyn, PA)

Regional Roundtables

Amie Peele Carter (Indianapolis, IN)

Regional Roundtables

J. Timothy Meigs (Raleigh-Durham, NC)

E-mailers

Sharon Israel (Houston, TX)

Micro Site

Tim Maier (Alexandria, VA)

Regional Roundtables

Fraser Roy (Salt Lake City, UT)

Micro Site

Kate Spelman (Berkely, CA)

Regional Roundtables

Laura Zeman (Phoenix, AZ)

E-mailers

Ken Nigon (Berwyn, PA)

None (Board Liaison)

2. 3. 4. 5.

Draft E-Mailers a. Regular E-Mailers b. “Quick Response” E-Mailers c. Invitation To Stated Meetings Distribute to Committee Follow Up Update Contact Database

B. Micro-Site 1. Update Micro Site a. Committee Members List b. Committee Reports c. Committee Minutes d. CLE Pages From Stated Meeting Programs 2. Update Contact Information On Regional/ Local Association Map 3. Expand Use Of Micro Site C. Regional Roundtables 1. Set Up Technical Requirements 2. Develop Agenda/List Of Topics For Roundtable 3. Set Date For Roundtable 4. Contact Regional/Local Association Attendees 5. Initiate Roundtable And Moderate 6. Provide Follow Up Minutes/Notes From Meeting IP Law Association Regional Assignments 2009-2010 Liaison

States

Amie Peele Carter (Indianapolis, IN)

Wisconsin Illinois Michigan Indiana

Tim Maier (Alexandria, VA)

Florida Georgia Alabama Tennessee

Laura Zeman (Phoenix, AZ)

Colorado Wyoming Arizona New Mexico Nebraska Kansas

Sharon Israel (Houston, TX)

Texas Oklahoma Louisiana Arkansas Mississippi Missouri

OUTLINE OF RESPONSIBILITIES A. E-Mailers 1. Assemble Information From Our Committee, Other Committees Programs

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Ken Nigon (Berwyn, PA)

Maine Vermont New Hampshire Massachusetts Connecticut Rhode Island

Fraser Roy (Salt Lake City, UT)

New York Oregon Washington Montana Idaho Alaska Minnesota Iowa North and South Dakota

Kate Spelman (Berkeley, CA)

California Nevada Hawaii Utah

Salvatore Anastasi (Berwyn, PA)

Kentucky Ohio Delaware Pennsylvania New Jersey

J. Timothy Meigs (Raleigh-Durham, NC)

District of Columbia North Carolina South Carolina Virginia West Virginia Maryland

IP Law Associations Committee 2009-2010 AIPLA Committee Assignments Committee Member

AIPLA Committee

Amie Peele Carter

Trademark Internet Trademark Litigation Trademark Treaties and International Law Trademark-Relations with USPTO Young Lawyers Membership Amicus Professionalism and Ethics

Tim Maier

58â&#x20AC;&#x192;

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Diversity in IP Law Law Student Mentoring Women In IP Law IP Practice in Japan IP Practice in the Far East

Timothy Meigs

Biotechnology Patent-Relations with the USPTO Patent Agents USPTO Inter Partes Patent Proceedings IP Practice in Latin America

Laura Zeman

Copyright Law Special Committee on FDA Special Committee on Mergers & Acquisitions Trade Secret Law Alternative Dispute Resolution Chemical Practice Professional Programs

Sharon Israel

Antitrust Law Patent Law Patent Litigation Special Committee on Legislation Inventor Issues

Kate Spelman

Corporate Practice Education International Education IP Practice in Europe International Trade Commission

Ken Nigon

International and Foreign Law Electronic and Computer Law Public Education Emerging Technologies

Salvatore Anastasi

Fellows Licensing and Management of IP Assets Law Practice Management Special Committee on National IP Practitioner Associations Worldwide PCT Issues

Fraser Roy

Industrial Designs Anti-Counterfeiting and AntiPiracy Online Programs Special Committee on Standards and Open Source Special Committee on Genetic Resources, Traditional Knowledge, and Folklore

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IP Practice in Europe

Co-Chair: John H. Hornickel (not pictured) Co-Chair: Jonathan M. Madsen (photo) ___________________________________________ The committee did not meet at the Mid-Winter Institute and has no new business to report.

IP Practice in Japan

Co-Chair: Mark Guetlich (photo) Co-Chair: George W. Lewis (not pictured) ___________________________________________ The IP Practice in Japan Committee held its regular preconference just prior to the La Quinta Meeting. As is the committee’s practice, the pre-conference was held all day Tuesday and the Wednesday morning before the start of the regular meeting. Representatives from the JPAA, AIPPI-Japan and JFBA were in attendance joining with the AIPLA committee members. There were 20 participants from the various Japanese Associations and about 30 committee members in attendance. For the several weeks before the meeting, we exchanged ideas and thoughts on topics of mutual interest with our colleagues from Japan. The time slots are evenly divided and both sides present on a variety of topics. Typically we take a single topic and present form the Japan side and the US side. This year we had very interesting presentations on Patent Trolls from both sides. Although it has been a problem for many years in the US, Patent Trolling is a relatively new phenomenon in Japan. On Tuesday morning, the meeting was called to Order by Committee Co-Chair. George Lewis. Alan Kasper gave opening remarks on behalf of the AIPLA. Takaki 2010 mid-winter institute issue

Nishijima spoke on behalf of the JPAA. The AIPPIJP was represented for opening remarks by Shoichi Okuyama. Hideo Ozaki represented the JFBA for Opening remarks. Our first day presentations included the following topics: 1. US Duty of Disclosure 2. Should an Infringement Court Interpret Claims Equally for Infringement and Validity? 3. Successful Actions Against Generics: Injunctions 4. Damages, Prior User Rights 5. JPO Study Group Update 6. Amendments & Div. Apps in view of Restricted Unity 7. Patentability of an Invention in Japan – IP High Court Decisions & Statistics 8. Cincom Fed Cir Summary 9. NPE/Troll Update & Practical Considerations 10. JPO Work Sharing & PPH Update 11. Patent Misuse Update in the US 12. Product-by-Process Claims after Abbott Labs v. Sandoz The first day concluded with an interesting round table entitled - Beyond the Meishi (Business Card) – aipla bulletin

Experiences Living and Working in JP/US. Members from the US side discussed what it is like to live in Japan for a US attorney. Members of the Japan side discussed what it is like for a Japanese Patent attorney to live in the US Each side was surprised by some of the things that were found to be most puzzling to the visiting attorney.

This year’s presenters (and their organization) included:

Jack Penny Hideo Ozaki – JFBA Hirokazu Honda – AIPPI-JP Naomi Voegtli Tom Engellenner Wednesday morning, we were honored to have Kei Iida – AIPPI-JP Commissioner Stoll join us. Alan Kasper, the sitting Steve Meyer AIPLA President, and long time member of our Neil Henderson Committee hosted “A CONVERSATION WITH THE Shogo Ohnishi – JPAA COMMISSIONER.” Commissioner Stoll answered Shoichi Okuyama – AIPPI-JP questions from Alan, as well as other committee Ms. Sumiko Kobayashi – AIPPI-JP participants. Chris Chalson Steve Meyer The rest of the morning program included the following Yuzuru Okabe – JPAA topics: Hung Bui Naoki Yoshida – AIPPI-JP 1. After Final Practice in USPTO – Strategies to Yoshiyuki Inaba – JPAA Minimize RCE Filings Jack Penny 2. Non-prior Art Rejections & Office Action Problems Anne Dollard Based on Art. 36 (disclosure) and Art. 37 (unity) Joerg-Uwe Szipl 3. After Final Practice in JPO – Options & Michael Dunnam Considerations Ms. Kay Konishi – JPAA 4. USPTO Restriction Practice Masashi Yanagida – JPAA 5. Patent Assignment & License Grants – Recent Joerg-Uwe Szipl Federal Circuit Decisions Jack O’Brien At the pre-conference conclusion, 20 committee members and Japanese visitors participated in our annual committee golf event. The Pre-Conference was organized by Committee CoChairs Mark Guetlich and George Lewis.

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IP Practice in Latin America

Chair: Roberto Capriotti (left photo) Vice Chair: James E. Larson (right photo) ___________________________________________ The IP Practice in Latin America Committee held a joint meeting with the Special Committee on Genetic Resources, Traditional Knowledge and Folklore and the Emerging Technologies Committee. The IP laws and practices related to genetic resources (GR) in Brazil, India and China were discussed. Dr. Rajesh Acharya from H K Acharya & Company presented on GR in India. Joaquim Goulart from Dannemann Siemsen presented on GR in Brazil. Tom Moga was ready to present on GR in China but due to technical difficulties, was unfortunately unable to present.

presentations interesting, informative and thoughtprovoking.

Following the presentations, there was a lively question and answer period. Those in attendance found the

We hope to see you all at the Spring Meeting!

Looking ahead to the Spring Meeting in New York City in May, the IP Practice in Latin America will hold a joint session with PCT Issues Committee and present a PCT perspective from Chile, one of the newest members, Costa Rica, a member of eleven years now and Argentina, a country not yet a member. Also, a representative from WIPO is also expected to speak on membership and related issues.

IP Practice in the Far East Chair: William D. Fisher (left photo) Vice Chair: Ying Tuo (right photo)

___________________________________________ The committee did not meet at the Mid-Winter Institute and has no new business to report.

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Law Practice Management

Chair: Ashok Mannava (photo) Vice Chair: Steven Auvil (not pictured) ___________________________________________ One of the primary goals of the Law Practice Management Committee is to prepare the Economic Survey. The Survey is generated every two years and this is an off year. However, we have established a subcommittee for the Economic Survey, and the subcommittee is putting together a team of diverse individuals to review the questions for the next Survey. The team will evaluate the questions from the last Survey and propose revisions and new questions for the next Survey. We have also established a corporate practice subcommittee that will liaise with the corporate practice committee on all matters concerning law practice management for corporate practitioners.

We are currently working with the corporate practice committee on a program for one of their upcoming monthly meetings. We would also like to establish a subcommittee for solo and small firm practitioners, and we are looking for volunteers to participate. For the Spring Meeting, we are anticipating putting on a program directed to business development and in particular “Closing the Deal”. The program will provide tips for generating business from existing contacts.

Law Students

Chair: Christopher McKeon (left photo) Co-Chair: Jesse Ormsby (right photo) ___________________________________________ The committee did not meet at the Mid-Winter Institute and has no new business to report.

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2010 mid-winter institute issue

Licensing and Management of IP Assets Chair: Paul S. Hunter (left photo) Vice Chair: Kevin A. Wolff (right photo) ___________________________________________

The Licensing and MIPA committee, including Chair Paul Hunter and Vice-Chair Kevin Wolff, met at the 2010 AIPLA Mid-Winter meeting in La Quinta California for a working meeting. During the working meeting it was agreed that the committee would continue the same format of meeting activities for the next year as we have for the last year. As such, our committee will host a CLE qualifying program at the 2010 Spring meeting and the 2010 Annual meeting. Further, our committee will hold a working meeting at the 2011 Mid-Winter meeting. In addition, our committee will continue to support of general session and will be open to working jointly with other AIPLA committees to bring high quality, interesting CLE sessions about licensing and the management of IP assets. In addition, our committee agreed to continue work on a number of other active committee matters. The active committee matters include redefining our subcommittees and having a representative from each on make reports at the mid-winter meeting, defining and actively participate and evaluating involvement with other IP organizations such as Licensing Executive Society (LES), Intellectual Property Owners Association (IPO) – Licensing Committee, and the International Trademark Association (INTA). Further, our committee will continue involvement with legislative and law developments related to licensing and the management of IP assets. Below is a copy of the Agenda for our committee’s 2010 AIPLA Mid-Winter Institute working session that includes a list of our present and past subcommittees.

a. 2 CLE Programs per year. One at Spring Meeting and one at Annual Meeting i. Including support of general session or both independent or jointly with another committee? b. Mid-winter meetings for committee yearly planning and leadership discussions. i. Subcommittees to make reports at this meeting. ii. Teleconference set up so all subcommittee chairs and vice chairs can actively participate in planning session. c. Define and actively participate and evaluate involvement with other IP Organizations. E.g., Licensing Executive Society (LES), Intellectual Property Owners Association (IPO) – Licensing Committee, International Trademark Association (INTA) i. Developing sample materials or best practices materials? d. Continued Involvement with legislative and law developments. i. Track, participate, and evaluate development of US IP Law as it relates to licensing and resulting value of IP Assets ii. Track and educate members on the developments in foreign country laws related to licensing IP and value of IP assets.

2. SUBCOMMITTEES: WHICH ONES TO KEEP OR ANY TO ADD (See list below). a. What should subcommittees be used for? AIPLA LICENSING AND MANAGEMENT OF IP i. COORDINATING ACTIVITIES WITH ASSETS COMMITTEE MID-WINTER MEETING OTHER AIPLA COMMITTEES? AGENDA ii. COORDINATING ACTIVITIES WITH OTHER IP RELATE BAR Paul Hunter – Chair ORGANIZATIONS? If so, which Kevin Wolff – Vice Chair ones? (e.g., IPO, LES, INTA, local bars, etc.) 1/29/10 iii.CREATING AND PROVIDING BEST 1. Focus and objectives for the next 2 years PRACTICES TO AIPLA MEMBERS? – 2010 - 2011 2010 mid-winter institute issue

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b. Available Manpower and Realistic Goals and Objectives i. Prioritize and assign leadership roles for the most needed subcommittees and committee objectives i i. Set-Out achievable objectives for 2010 and 2011 SUBCOMMITTEE CHAIRS & SPECIFIC FUTURE ACTIVITIES IP Costs Domenic Leo DataCert Inc. Houston, TX

The subcommittee has been commissioned to monitor and report to the Committee on issues and developments affecting creation, maintenance, licensing, and enforcement of trademarks and copyrights. Formalities Marc Hubbard Gardere, Wynne Sewell LLP Dallas, TX Kevin O’Brien Alston & Bird, LLP Charlotte, NC

Robert Silverman Millennium Pharmaceuticals Cambridge, MA

The subcommittee has been commissioned to take meeting minutes, collect necessary formal materials, and work with the Internet subcommittee to post updated materials.

The subcommittee has been commissioned to coordinate a future educational session on tracking, managing, and analyzing costs related to identifying, creating, maintaining, and leveraging IP.

Internet Salvatore Anastasi Barley Snyder LLC Berwyn, PA

Diversity Bill “Skip” Fisher Schwabe, Williamson & Wyatt Seattle, WA

The subcommittee has been commissioned to maintain the committee’s micro site (http://www.aipla.org/ MSTemplate.cfm?Site=Management_of_IP_Assets1).

The subcommittee has been commissioned represent the Committee as liaison to the Diversity Committee (DC), to report to the Committee on issues and developments of the DC, and to coordinate activities of the Committee in support the DC. Young Lawyers Sheena Connors The subcommittee has been commissioned represent the Committee as liaison to the Young Lawyers Committee (YLC), to report to the Committee on issues and developments of the YLC, and to coordinate activities of the Committee in support the YLC. Trademark & Copyright Gretchen Prochaska Testerman Qwest Communications Denver, CO Lesley Craig George Washington University Law School Denver, CO 64

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International Robert Bauer Lackenback Siegel, LLP Scarsdale, NY Jackie Klosek Goodwin Proctor LLP New York, NY The subcommittee has been commissioned to monitor and report on international issues and developments that significantly affect creation, maintenance, licensing, and enforcement of IP assets. Corporate Practice Richard Ludwin IBM Armonk, NJ Mike Noonan Freescale Semiconductor Austin, TX The subcommittee has been commissioned to facilitate 2010 mid-winter institute issue

sharing of best practices and networking among inhouse members of the committee

Competitive Assessments Previous Chairs: Robin Coster and Craig Larson

PRIOR MIPA Committees

Leveraging IP/Strategy (Formerly IP Value Extraction) Previous Chairs: Gerald Welch and Lena Vinitskaya

Capturing IP Value Previous Chairs: Tom Isaacson, Greg Novak, and Gina Durham IP Protection & Maintenance Previous Chairs: Kevin Wolff

Membership

Chair: Jerry R. Selinger (left photo) Vice Chair: Bryan W. Bockhop (right photo) ___________________________________________ The Membership Committee met briefly at the MidWinter Institute. Going forward AIPLA headquarters will reach out to Membership Committee members to volunteer to attend IP association meetings in their region at which a member of AIPLAâ&#x20AC;&#x2122;s leadership has been requested to speak and be on hand to answer any questions about membership (Headquarters will have already worked with the meeting coordinator to

have AIPLA membership materials available on an information table). Members of the Membership Committee willing to help out should email Sara Barker at sbarker@aipla.org with the region they can cover.

Mentoring

Chair: Elizabeth Burke (left photo) Vice Chair: Daphne C. Lainson (right photo) ___________________________________________ The Mentoring Committee presented a program at the Mid-Winter Institute to assist AIPLA members in making the most of the AIPLA Mentoring Program. The Committee presented the Mentor of the Year for 2009, Allison Strickland, and her mentee, Amie Peele Carter, who shared their experiences of the Mentoring 2010 mid-winter institute issue

Program, and their thoughts on how to make the most of the Program. Members not able to make the program in person participated by conference call. The Committee announced its progress with the Pairings Subcommittee, chaired by Hetal Kushwaha. aipla bulletin

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New pairings will be made following the Mid-Winter Institute. However, the Committee continues to have fewer mentors than mentee applicants. To address this, and in addition to seeking further mentor volunteers, mentors and mentees whose pairings have expired and those with only one mentee will be contacted about matching them with a new or additional mentee (each mentor may have up to two mentees).

more involved in AIPLA committees. Orin Paliwoda has volunteered to coordinate with AIPLA committee chairs and vice-chairs to identify liaisons to their substantive committees.

Kevin Kuzendorf will be assisting in revising and preparing new printed materials for the Committee, including information sheets for mentors and mentees. It is an objective of the Committee to have these information sheets available for the Annual meeting. These information sheets will provide guidance on the parameters of the Program (including describing reasonable expectations) in response to feedback from Program participants.

At the Spring meeting, we will be hosting a joint meeting with the Corporate Practice Committee, focusing on mentoring corporate counsel. We will also be meeting with our evaluations subcommittee, chaired by Lisa Jorgenson, as we commence the nomination process for the Mentor of the Year Award for 2010.

The Committee continues to develop means to assist mentors in the Program. One project is the identification of liaisons from substantive committees to aid mentors in advising mentees on how to become

The Committee further reported that its microsite is now up to date. Efforts continue to be made to enhance online tools for Program and Committee participation.

The Committee is actively recruiting volunteers for participation in its Subcommittees and the Mentoring Program. All volunteers are welcome to contact the Chair, Liz Burke (elizabeth.burke@finnegan.com) or the Vice-Chair, Daphne Lainson (dclainson@smartbiggar.ca). We look forward to seeing you at the Spring Meeting!

Online Programs

Chair: Shannon Beech (left photo) Vice Chair: Brad Chin (right photo) ___________________________________________ MISSION: Our Mission is to provide high quality, affordable education by means of online media. Our vision is to develop and prepare technological options and vendors to be able to work with other groups within the organization to identify, develop, and provide, efficiently and effectively, online program content to the AIPLA as a whole and to their constituents and to facilitate others in the AIPLA to utilize online media for program delivery. EXECUTIVE SUMMARY: The focus in the past calendar year was the preparation 66â&#x20AC;&#x192;

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and presentation of live online CLE programs based on two primary platforms, KRM and Citrix GoToWebinar. Online Programs successfully organized and hosted 13 KRM programs (with additional quick turnaround programs on hot topics), and 8 Citrix GoToWebinar programs. In 2010, we are currently on track to provide 18 revenue-generating programs (with the objective of providing this same number of programs in the coming years) with the possibility of quick turnaround programs, as appropriate. Moreover, the Committee is developing expertise in the delivery of live online programs through other low cost vehicles in cooperation with other AIPLA Committees. For example, a third live webinar was hosted during the Corporate Practice 2010 mid-winter institute issue

and Professionalism and Ethics Joint Committee meeting at the 2010 Mid-Winter Meeting. The first installment of the complimentary Career and Practice Management webinar series for 2010 was presented on January 22, 2010. As the number of programs has grown, Online Programs has increased the number and the practice diversity of our coordinators through the TSC Liaison program and help from the Young Lawyers Committee. To train these liaisons, we have initiated a mentorship program to facilitate the sharing of institutional knowledge between all coordinators. In an effort to keep aware of the many activities of the various AIPLA committees, we have initiated an internal liaison program to reach out to the AIPLA committees on a regular ongoing basis. Additionally, Online Programs continues to work to build and maintain an active and growing catalog of enhanced recorded content from the Stated Meetings, previous online programs and other AIPLA educational events, including providing support for the new live streaming of the Stated Meetings. Further, in cooperation with the Membership Committee, Online Programs created a video for new and potential members to be placed on AIPLA’s website with capture for this video having taken place at the 2009 Spring Meeting. SPECIFIC TASKS UPDATE AND GOING FORWARD: The Online Programs Committee has taken on the following specific tasks to advance the overall goal of the Committee to put on high quality, diverse and financially responsible live, interactive programs. In 2010, Online Programs strives to provide 18 programs per calendar year at a pace of 3 programs every 2 months with the flexibility to offer additional rapid response programs. We have assigned and tasked committee liaisons to substantive committees to facilitate the development of online content. We have focused on developing expertise on the GoToWebinar platform and accompanying procedures through our subcommittee by identifying and training coordinators to host, train, and facilitate webinars for the substantive committees in AIPLA. For example, this subcommittee regularly assists the Corporate Practice and Electronic and Computer Law Committees in performing online programs with Citrix GoToWebinar and are assisting the International Education Committee in commencing webinars to educate foreign attorneys on matters of US law. An appendix is currently being developed to these procedures in cooperation with other AIPLA Committees, as needed, and has already been completed for the Corporate Practice Committee. Three live webinars have been 2010 mid-winter institute issue

successfully completed. They include the Corporate Practice and ADR Joint Committee meeting at the 2009 Spring Meeting, the Corporate Practice and Copyright Joint Committee Meeting at the 2009 Annual Meeting, and the Corporate Practice and Professionalism and Ethics Joint Committee meeting at the 2010 Mid-Winter Meeting. The next live GoToWebinar will be hosted by the Electronic and Computer Law Committee on March 16, 2010. The goal is to have subcommittee members available to assist other AIPLA committees to use the Citrix platform and reduce the workload on AIPLA headquarters staff. In response to the changing economic environment, AIPLA began sponsoring a Career and Practice Management series of webinars that is complimentary to all AIPLA members. The first Career and Practice Management live GoToWebinar was hosted on January 23, 2009. This series has been performed on the GoToWebinar program with one program offered every 1-3 months. The three programs on January 23, 2009, March 19, 2009 and July 22, 2009 were very successful. On January 22, 2010, AIPLA continued its commitment to its members’ career and practice management by hosting another webinar in cooperation with the Education, Young Lawyers, and Law Students Committees, entitled, “Maintaining and Gaining Career Momentum in Spite of the Economic Downturn.” The work on maintaining the microsite is ongoing with a subcommittee ensuring that procedures, quality data and attendance parameters for completed programs are updated on an ongoing basis. OVERALL APPROACH: The Committee continues to pursue three major avenues of approach to providing online programs. Recorded Live Presentations. AIPLA continues to explore various platforms for recording live meeting content, including recording from live streaming video of the stated meetings. The Online Programs Committee with be working AIPLA staff to assist in this endeavor. Live Moderated Online Programs. The Committee continues to work with KRM to produce and deliver high-end, live, interactive online CLE programs. We increased the frequency of the online programs to three programs every two months beginning in October 2009 with the flexibility to do 1-3 additional rapid response programs. We anticipate maintaining this frequency of programs in 2010.

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Internally Administered Web-based Programs. We are using Citrix GoToWebinar as our platform for low cost programs. We have appointed Committee members under the guidance of the Chair and ViceChair to help with coordinating this class of online programs, and as committee numbers increase, it is likely that several members will rotate through this role for respective programs. Our goal is to assist the Corporate Practice Committee to conduct their committee programs to achieve their goals using the Citrix GoToWebinar platform. At this time the Corporate Practice Committee and the Electronic and Computer Law Committee have conducted programs using this platform. The International Education Committee will be conducting webinars for foreign attorneys on matters of US law with the first webinar scheduled for April 28, 2010, targeting German patent attorneys. We are also using this platform to present the Career and Practice Management series of webinars sponsored by AIPLA as a value-added service to all AIPLA members. We are currently examining the possibility of using the Citrix platform to perform non-CLE, attendee-paid programs. PROGRESS REPORT ON LIVE, INTERACTIVE ONLINE PROGRAMS: Quality (Absolute): The reviews from the attendees through the evaluations have been very good, with a high percentage filling out the online evaluation (compared with the percentage who evaluate the stated meetings). The quality has been about the same or better than the stated meetings. The Programs: A history of the live interactive seminars that Online Programs has completed since December 2004 is available on the committee microsite. Future: The following is our schedule of upcoming programs for 2010:

ONLINE PROGRAMS SCHEDULE Date Apr 7/10

Program Substance User Generated Content Integrated IP

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Program Coordinators Darren Franklin Tracey Harrach John Haran

Apr 21/10

May 19/10

Jun 2/10

Amicus Briefs: How Amicus Can Help You Help the Court First Action Interview Pilot Program

Brad Chin Orin Paliwoda Sheetal Patel Hetal Kushwaha

Design Litigation Strategies

Shannon Beech Ceyda Maisami

We are also anticipating a quick turnaround program on the patent reform bill when it comes out. We continue to have dialog with various committees about content they would like to see and/or help develop. We have been assisting the Corporate Practice, Electronic and Computer Law Committees and International Education in performing online programs using GoToWebinar on topics of significant interest for these committee members. The cost of these programs is offset by seeking sponsors to pay a sponsorship fee to cover overhead costs. We are examining the potential to use the GoToWebinar platform to perform pay-per-use nonCLE programs, including the potential to do a series of programs adapting the secretaries and paralegal AIPLA conference to the online format. To increase coordinators and to better the content of programs to the varied AIPLA membership, Online Programs has initiated the TSC Liaison Program with the collective trademark committees to expand the online offerings to members in the trademark practice groups. We have also received a large number of volunteers from the Young Lawyers Committee, all of whom have been matched up with experienced coordinators for training and mentoring purposes. We have instituted an internal liaison program within our committee in which we have matched our coordinators with AIPLA’s substantive committee. Our coordinators will be reaching out to the chairs and vice-chairs of AIPLA’s substantive committee on a regular and ongoing basis to ensure that we are able to provide program that are current, of interest and are on the hottest topics in intellectual property law.

2010 mid-winter institute issue

Patent Agents

Chair: John Orange (left photo) Vice Chair: Esther M. Kepplinger (right photo) ___________________________________________ See Patent-Relations with the USPTO Committee Report.

Patent Law

Chair: Nicholas P. Godici (left photo) Vice Chair: Barbara A. Fiacco (right photo) ___________________________________________ At the Mid-Winter Institute, the Patent Law Committee held a joint meeting with the Patent Litigation Committee and the International Trade Commission Committee to explore the application of 35 U.S.C. § 103 in various contexts. During the first part of the meeting, Ronald E. Cahill of Nutter, McClennen & Fish LLP and Jonathon Spadt of RatnerPrestia examined how the Federal Circuit and district courts are interpreting section 103, with Ron providing the mechanical/electrical perspective and Jonathon offering the bio/chemical/ pharma perspective. After this overview, there was a roundtable discussion with a panel of in-house counsel and outside counsel including Mimi Addy, of Brinks Hofer; Robert D. Titus, Assistant General Patent Counsel at Eli Lilly and Company; Paul Coletti, Associate Patent Counsel, Johnson & Johnson, and L. Scott Oliver, Partner, Morrison & Foerster, LLP. The panel addressed several related topics including: how the Board of Patent Appeals and Interferences interprets section 103; how the International Trade Commission handles section 103 issues; what’s happening in district courts involving section 103 claims, including summary judgment trends; what changes practitioners are seeing in the USPTO examination process; and how re-examination proceedings are being impacted by case law developments. There was a lively discussion as well as insightful questions and discussion from the 2010 mid-winter institute issue

audience. The Patent Law Committee would like to thank its § 103 subcommittee chairs, Ron Cahill and Pam Politis of Endo Pharmaceuticals, for their efforts in planning this meeting. The Patent Law Committee is continuing its efforts to inform its members of the latest developments in patent law, through its committee meetings and its subcommittee work. The committee will be examining the subcommittee structure in light of changes in the administration and recent case law developments to ensure that all areas of patent law are covered. Our current subcommittees include: (1) a Patent Office Rules subcommittee that is focused on proposed rule changes and on tracking important cases related to rule changes; (2) a § 103 subcommittee that is tracking developments in the law of obviousness and identifying concrete examples applying the KSR decision; (3) a § 101 committee that is tracking developments in the law of subject matter eligibility and identifying concrete examples applying In re Bilski; (4) a § 112 committee that is focusing on issues related to enablement and written description and, in particular, the disclosure requirements associated with a means-plus-function claim; (5) an inequitable conduct committee that is tracking developments in inequitable conduct law and how it is being applied, particularly in district court aipla bulletin

cases; and (6) a “product-by-process” subcommittee. Please contact Nick Godici, Chair, at ngodici@bskb. com or Barbara Fiacco, Vice Chair, at bfiacco@

foleyhoag.com, for more information on how to get involved with the committee’s work.

Patent Litigation

Chair: Robert W. Payne (left photo) Vice Chair: Dianne B. Elderkin (right photo) ___________________________________________ The Patent Litigation Committee held a joint meeting with the Patent Law Committee and International Trade Commission Committee on post-KSR developments in the courts and in prosecution. Jonathan Spadt and Ronald Cahill led the discussion with two PowerPoint presentations. Copies of their slides are posted on the Patent Litigation Committee micro-website. Additionally, a panel of four practitioners addressed

issues that KSR has posed in the courts, the ITC, the USPTO and in house. The Patent Litigation Committee has ongoing study groups and plans to put on a program to be held at the Spring Meeting in New York.

Patent-Relations with the USPTO

Chair: Charles E. Van Horn (photo) Vice Chair: Gregory D. Allen (not pictured) ___________________________________________ Robert Stoll, Commissioner for Patents, spoke at our 2010 Mid-Winter Institute committee meeting that was held jointly with the Patent Agents Committee. Mr. Stoll commented on a number of USPTO topics, as well as took questions and comments from the audience. He noted that there has been a significant decline in the attrition rate at the Office, and that there are constraints put on the Office by “Title 5” regarding the amount Examiners can be paid. The Office would like to see Applicants and the Examiner reach resolution on patent examination 70

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issues without the need to file an RCE. If resolution is not reached, and the Applicant still wishes to pursue prosecution, it is preferable from the Office’s standpoint that the Applicant pursue an appeal, rather than file an RCE. The Office recognizes that only certain amendments are currently entered after a final action has been issued, and is considering changes in the “After Final” practice to facilitate a broader scope of amendment to be entered After Final. There was some discussion with the audience about various situations where even entry of a broader scope of amendment would not allow Applicant to proceed without filing an 2010 mid-winter institute issue

RCE. One suggestion to address the latter was to have a more compact RCE practice where only one action would be issued per RCE. Several comments were made regarding the Office’s IT infrastructure, and in particular how outages with PAIR impact practitioners. It was noted that the Office recognizes the reliance practitioners have on the system, and that when an outage occurs, it is a high priority within the Office to address the outage.

Finally, the Office is working on additional Federal Register Notices. Three examples were mentioned. One regards post-KSR guidelines on when to allow a claim. Another relates to significantly revising restriction requirement practice. And the third regards the Office’s position on additional patent term adjustments scenarios beyond those addressed in the interim guidelines addressing the recent Federal Circuit decision in Wyeth v. Kappos.

PCT Issues

Chair: Carl Oppedahl (left photo) Vice Chair: Jay A. Erstling (right photo) ___________________________________________ The PCT Issues Committee met during the AIPLA MidWinter meeting and heard a presentation on updates in the PCT from Matthew Bryan, the Director of the PCT Legal Division at WIPO. Mr. Bryan indicated that 2009 was the first year in the PCT’s history that the number of international applications decreased from the preceding year. While there was a drop of 4.5% in the number of applications overall, the number of US-originating international applications fell by 11.4%. In contrast, the number of Chinese-originating international applications increased by almost 30%, making China the fifth most prolific PCT filing nation. Among the substantive PCT developments that Mr. Bryan discussed were the expansion of PCT supplemental search and the launch of a pilot project linking the Patent Prosecution Highway (PPH) with the PCT. Finland joined the Nordic Patent Authority, Russia and Sweden as a Supplementary International Searching Authority on January 1, 2010, and the EPO announced its intention to become a Supplementary Authority on a limited basis beginning July 1, 2010. Until now, however, few applicants were choosing to avail themselves of the supplementary international search option. With respect to the PPH, on January 29, 2010, the USPTO, EPO and JPO (the Trilateral Offices) announced the start of a pilot project in which positive PCT written opinions and International Preliminary Reports on Patentability will constitute 2010 mid-winter institute issue

the basis for PPH requests in the three offices. In addition, Mr. Bryan announced that a PCT document upload system was now available for communications with the International Bureau and that the ability to receive PCT notifications exclusively via email was also now available. During the meeting, the AIPLA Board approved a draft resolution and the text of responses to a WIPOgenerated PCT questionnaire both submitted by the PCT Issues Committee. The resolution calls upon the USPTO to explore certifying additional International Searching and Preliminary Examining Authorities for US filers of PCT applications. The text of the resolution, which was adopted unanimously by the Board, is as follows: RESOLVED, that the American Intellectual Property Law Association supports, in principle, the use of the Patent Cooperation Treaty, and supports USPTO’s bringing the quality of PCT processing to world-class level, and Specifically, AIPLA further supports USPTO’s certification of additional International Searching Authorities and International Preliminary Examining Authorities for US filers of PCT applications, so long as such certification does not increase the workload on RO/US. aipla bulletin

In mid-November 2009, WIPO invited the patent offices of PCT member countries as well as selected non-governmental organizations, including AIPLA, to respond to a questionnaire on future development of the PCT. The PCT Issues Committee prepared draft responses to relevant questions in the WIPO questionnaire, which were approved by the AIPLA Board and submitted to WIPO in the hope of providing useful information and feedback regarding possible improvements in application processing and PCT search and examination. The relevant questions to which AIPLA responded and the AIPLA responses follow: A. USE OF PCT REPORTS TO ASSIST DECISION MAKING IN THE NATIONAL PHASE 1. To what extent does your Office, during national phase processing, find the international search report to be useful as the basis for finding the most relevant prior art? Answer: AIPLA fully supports the principle of avoiding duplication of work in the same office, and supports utilization of the work completed in the international phase during the national phase. In particular, AIPLA notes the following statement in the draft WIPO PCT Roadmap (Document PCT/ WG/2/3 Annex I, paragraph 2): “In order for work done in the international phase to be useful to designated Offices, and by extension to applicants and third parties, it is essential that the work is done in accordance with the requirements of the Treaty and that there is confidence that it has been done in accordance with the requirements of the Treaty. The largest possible step towards building this confidence is an assurance by International Authorities that work performed by them during the international phase will not be repeated by the same Office acting as a designated Office in the national phase. In other words, each ISA should, to the greatest extent possible, do the work only once, during the international phase, and fully integrate that work into its national granting procedure when the same application later enters the national phase before the same Office acting as a designated Office.” [italics in original; bolding added] AIPLA Members report that in the case where the ISR was established by ISA/US, USPTO only rarely treats the prior art found in the ISR as presumptively the most relevant prior art. Include details such as: 72

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– whether this depends on which particular International Authority(ies) conducted the work in the international phase; Answer: AIPLA Members report that in the case where the ISR was established by ISA/EP, USPTO does sometimes treat the prior art found in the ISR as presumptively the most relevant prior art, carrying out only a “top-up” search relating to prior art qualifying under 35 USC section 102(e). – the type of any additional searching which your Office performs (complete new searches; specific languages; “top-ups” for documents which had not been present in search databases at the time that the international search was conducted); Answer: See answer immediately above. – whether additional searching is conducted routinely in all cases or to different degrees following consideration of the indicated scope of the specific international search report and other indicators of likely quality. Answer: AIPLA Members report that in nationalphase processing, USPTO routinely conducts additional searching beyond what is represented in the International Search Report. 2. To what extent does your Office find international preliminary reports on patentability to be useful as the basis for beginning national phase processing in your Office and in particular in helping to identify whether the substantive requirements of your national law have been met? Answer: As stated above, AIPLA fully supports the principle of avoiding duplication of work in the same office, and supports utilization of the work completed in the international phase during the national phase. AIPLA Members report that only rarely will an IPRP Chapter I from ISA/US be given much weight in determining patentability in national-phase processing in the USPTO. Include details such as: – whether this depends on which particular International Authority(ies) conducted the work in the international phase; Answer: AIPLA Members report that in many cases, an IPRP Chapter I or Chapter II prepared by IPEA/ EP will be treated as useful in beginning nationalphase processing in USPTO, and its findings will sometimes be given some weight in determining patentability in national-phase processing in the USPTO. Members report that in national-stage processing at USPTO, the usefulness of IPRPs (whether Chapter I or Chapter II) from ISAs and 2010 mid-winter institute issue

IPEAs other than EP and US tends to fall between the two extremes. – whether it depends on whether the report was issued under Chapter I (with the search report) or Chapter II (following international preliminary examination, including the possibility of the applicant having made amendments); Answer: AIPLA Members report that in some cases, an IPRP Chapter II prepared by IPEA/US will be treated as useful in beginning nationalphase processing in USPTO, and in rare instances (particularly if the Examiner who prepared the IPRP Chapter II is the same Examiner as is now assigned to the US national-phase application) the findings of the IPRP Chapter II will be presumptively taken as the findings in the national-phase processing in USPTO. 3. If your Office routinely conducts additional national search or examination on all international applications which have entered the national phase before your Office, why is this considered necessary as a matter of policy? Answer: As mentioned above, members report that in the particular case of ISRs and IPRPs from EP, in some cases the findings in the ISR or IPRP are given at least modest weight in USPTO nationalphase processing. As for ISRs and IPRPs from other Offices, often rather less weight is given in US national-stage processing. For example: – Are national standards for patentability significantly different from those required to be tested in the international phase of the PCT? For some fields of technology only, or more generally? Answer: One factor that may contribute to this difference as between weight given to work carried out by EP or by other offices is that EP’s objectively observable policy is that the WO or IPRP prepared by ISA/EP or IPEA/EP is, in EPO regional-stage processing, largely presumed to be the first Office Action in national-stage processing. Indeed if a WO or IPRP treats claims favorably, the routine practice in EPO is that in the regional stage, such claims are presumptively allowable. Such objectively observable policy on EPO’s part may well lead to a perception that the work done by EPO in the WO or IPRP is likely to be of a quality comparable to the quality of EPO’s work in other (non-PCT-related) patent applications. Such a perception in turn may lead to a willingness on the part of USPTO’s Examining Corps to give at least 2010 mid-winter institute issue

modest weight to the findings in the WO or IPRP when taking up the US national-phase case for examination. It is suggested that actions speak louder than words. It is suggested that if an Office treats its own ISR or IPRP presumptively as the first office action in its own national-stage processing, and indeed if claims treated favorably in an ISR or IPRP are presumptively allowable in the national stage, this is likely to do more to make an ISR or IPRP useful to other national-stage offices than any changes to written definitions of requirements. From time to time it has been proposed to require that ISAs provide the actual search strategies and results in the ISRs. While there are doubtless a variety of reasons why this might or might not be a good or workable notion, it may be observed that the provision of such search strategies might in some cases make an ISR more useful to an Office in national-phase processing. – Is there a perception that the international search and preliminary examination are not consistently conducted to a sufficiently high standard against the standards which are required to be tested? In what ways (languages of documentation searched; basis for opinions on novelty and inventive step; completeness and clarity of written opinions)? Answer: AIPLA believes that quality studies and surveys can and should be done to determine the relative quality of international search and preliminary examination, in relation to national and regional stage search and examination. 5. If your Office finds that an international application does not meet the requirements of your national law when it first enters the national phase and requires the applicant to file amendments, are the international search report and international preliminary report on patentability useful in assisting your Office to determine whether the defects have been overcome by the amendment? Please indicate any ways in which you think that the reports or PCT process might be improved to make international reports more useful beyond the first action in the national phase. Answer: See discussion above about factors that might help to make an ISR or IPRP more useful in the national phase.

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6. Are there any other specific ways in which you believe that the PCT could better meet the needs of your Office in assisting the processing, according to the national law of your country, of international applications which have entered the national phase before your Office? This might include changes to the reports or other aspects of the international process, or alternatively to matters of technical assistance and cooperation between Offices in the national phase, to the extent that you consider this to be appropriate within the umbrella of the PCT. Answer: See discussion above about factors that might help to make an ISR or IPRP more useful in the national phase. In addition, AIPLA fully supports the principle that one way to avoid duplication of work in the same office is to have the same examiner handle the same application in both the international and national phases. In particular, AIPLA notes the following statement in the draft WIPO PCT Roadmap (Document PCT/WG/2/3 Annex I, paragraph 25):

“[T]he same Office may conduct search and examination on effectively the same application four (or even more) times…. These duplications can be addressed quickly and effectively by ensuring that national processes are effective at reusing work that has already been done within that Office, (preferably by using the same examiner to process all the files, wherever possible at the same time), no matter in what capacity that work has been done and eliminating procedures which encourage applicants to file duplicate national and international applications.” [bolding added] At the Spring AIPLA meeting, the PCT Issues Committee will hold a joint educational session with the Latin America Committee on the PCT in Latin America. Three panelists from Latin American countries will discuss recent developments and provide helpful practice tips. Plans for that session are currently underway.

Professional Programs

Chair: J. Michael Martinez de Andino (left photo) Vice Chair: Steve Malin (right photo) ___________________________________________ The Professional Programs Committee conducted its meeting on January 28, 2010. Thirty five Committee members attended the meeting in person, and seven members attended by telephone. Among the topics discussed, the Committee worked on the proposed Spring Meeting Program and started the planning for the Annual Meeting. The Committee completed the selection of coordinators and initial topics for the 2010 Annual Meeting in Washington, DC. Committee

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Chair J. Michael Martinez thanked the Committee for its hard work in planning the 2010 Spring Meeting and also answered a number of questions from Committee Members relating to the CLE required papers and PowerPoint presentations by the Speakers. Steve Malin, Committee Vice-Chair, also reiterated a number of rules governing selection of speakers and topics, quality control, and CLE requirements.

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Professionalism and Ethics

Chair: Guy Donatiello (left photo) Vice Chair: Raymond Van Dyke (right photo) ___________________________________________ The committee has no new business to report.

Public Appointments

Chair: Rick D. Nydegger (left photo) Vice Chair: Michael K. Kirk (right photo) ___________________________________________ The committee did not meet at the Mid-Winter Institute and has no new business to report.

Public Education

Chair: Evelyn H. McConathy (left photo) Vice Chair: Salvatore Anastasi (right photo) ___________________________________________ Vision: Educate the public and its representatives on the benefits and value of intellectual property through greater understanding of its meaning, and to promote cooperation on this effort with the rest of the IP community, while pursuing similar goals and objectives with other AIPLA Committees. Strategic Goals to Achieve Vision: • Develop a simple consensus message on the value and history of Intellectual Property & Patents 2010 mid-winter institute issue

• • •

Find creative ways to distribute the message across multiple channels of communication to a spectrum of audiences Work to cooperate with other members of the IP community to learn from their experience and align messages and efforts towards common goals Both implicitly and explicitly, depending on the audience, enhance the profile of AIPLA and its roles and provide understanding of what the organization is able to provide to its members, the IP community, the government, and the public. aipla bulletin

Follow Up from Mid-Winter 2010 Meeting: To take the overall vision and place it in a manageable and scalable form, the current plan is to work in parallel on several levels of development. This Committee is actively working with AIPLA and the various committees, groups, and resources within AIPLA to develop, refine, and select themes and stories and other material supporting those themes. At the same time the Committee is working to develop a better understanding of the means to effectively communicate the message and distribute materials to the identified target audiences, primarily initially to build an understanding of the needs of key distribution channels to better guide theme and message development. A working group has completed its focus on the theme and sub-committees have been and are being established to develop the channels of distribution. Finally, the Committee leadership with the help of the Board and AIPLA Headquarters will reach out and leverage relationships in the IP Community to further their specific goals and missions. Hill Day: This Committee is joining with the USPTO and WIPO to celebrate World IP Day on April 26th, 2010 with a Joint Program and reception for invited members of Congress, entitled “Protecting Tomorrow: IP and Green Technology.” This event will be held on Capitol Hill in the Rayburn House Office Building. Speakers, including Director David Kappos of the USPTO, as well as speakers from the WIPO office, our own Q. Todd Dickinson, former Director of the USPTO and others, with a focus on advocacy and the importance of intellectual property to protect and advance new technologies, particularly Green Technologies. Our goal is, of course, to increase awareness and educate others about intellectual property, and we are delighted to have this opportunity, with the full support of the AIPLA Board and Headquarters, to share this program with members of Congress, which we hope will translate into a positive message back, at some point, to their constituents. Such an event would, of course, not be possible without the support of Patent Commissioner Robert Stoll. This program is unrelated to specific AIPLA lobbying efforts and instead maintains a much more general, consensus, theme level approach to the interactions with members of Congress, as well as with organizations such as WIPO and the USPTO. Our goal is to set up an event of this type on a recurring, possibly annual basis, at a time when the Members of Congress are likely to be reasonably available. Much of the Mid-Winter Committee meeting focused on the approval and planning for this important event. 76

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Website: The Creativity in Bloom website was launched in September 2009, and we continue to focus on populating that site with articles and reports relating to information that is expressly positive or negative regarding intellectual property rights, as well as reports from the Committee. Michael Stewart will be coordinating this effort with Vice Chair Sal Anastasi, and Staff members, Randy Sagara and Zehra Fazal. As a key feature on the Website, we continue to report links to relevant articles on blogs found by our many volunteer Blog Monitors, under the direction of Brian Stanton to review the many blogs that discuss IP, with the goal being to report only pro-IP or con-IP articles and comments – not general IP. The volunteers make weekly reports to Brian, or more often as needed, and then Brian assembles a weekly summary report and links to be posted on the website. This is entirely a monitoring project, initially to determine trends and to provide information to our membership, but there are still issues that need to be resolved to permit better posting of this information. We have also been in contact with key Committees on Patent, Trademark and Copyright at AIPLA to ask for volunteer blog monitors, and also to determine if identified information in the weekly reports would be useful to them for their membership. The Young Lawyers and Corporate Committees have also indicated an interest. Distribution Channel/Youth Education: Initially, the Committee is focusing on three distribution channels: Youth Education, Corporate Committee, and Internet Committee with others to follow as help and experience is gained and/or as specific needs and volunteers arise. The sub-committees will each start by identifying what they will need to best succeed in distribution and in what form to help in development and tailoring of the message to suit the appropriate distribution channel. The next step for the Youth Education SubCommittee under Vice Chair Sal Anastasi and Scott Daniels will be to post a program for use by our membership on the website, along with a survey to permit the program to be refined and enhanced. The sub-committee is also specifically working to interact with the InventNow group within the National Inventor’s Hall of Fame for their insight into successfully getting out into the schools and effectively reaching the students as well as reaching out to the Copyright Society for insight into their anti-piracy outreach to students. While initially focused on younger children, the sub-committee has also started efforts to build resources for university students as well through John Calvert at the USPTO.

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Cooperation/Contact with the IP and Innovation Community: The Committee is working with AIPLA Headquarters and its Board liaisons to coordinate contacting other organizations, such as the National Inventors Hall of Fame, the Federal and District Courts, the USPTO and Copyright Offices, IPO, ABAIPL, INTA, and the Copyright Society to reach out for shared insight and to establish a foundation for

potential cooperation. Once contacts are established, the Committee will identify a liaison for each group it has or builds a relationship with (possibly one with a pre-existing relationship which can be leveraged) to have a single point of contact to reduce potential confusion and avoid overloading or interfering with mutual efforts.

Special Committee on the FDA

Chair: Freddie K. Park (left photo) Vice Chair: Denise M. Kettelberger (right photo) ___________________________________________ Our mission is to provide AIPLA members a forum for discussion, education, networking, and understanding of federal regulatory law and practice, particularly as this practice interacts with US intellectual property law. The committee has had a very busy inaugural year. Presentation At the 2010 Mid Winter Institute, Kurt Karst, Hyman Phelps & McNamara, Chair of the Hatch Waxman Subcommittee presented on Patent Term Extension. Kurt provided a detailed explanation of the background and legislative history of the Hatch-Waxman Act. In addition, Kurt discussed all the recent cases in this area, highlighting the issues of each case and how the expected forthcoming decision, either by a district court or by the Federal Circuit, will potentially impact pharmaceutical manufacturers. Kurtâ&#x20AC;&#x2122;s power point presentation is posted on our committee webpage under 2010 Mid Winter Institute Documents. Business Meeting The committee conducted business meeting to discuss plans for the upcoming Joint Committee Educational Session with the Biotechnology and Chemical Practice Committees at the Spring and Annual Meetings. Upcoming Meeting Plans

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Spring Meeting 2010 At the upcoming Spring Meeting, we are jointly planning with the Biotechnology and Chemical Practice Committees the first part of a 2 part presentation. The first part is a 2-hour CLE program providing a historical perspective on Hatch-Waxman and how we arrived in our current situation. A 3-member panel will discuss their perspectives on this topic in a point-counterpoint format. Our speakers will present their views as representatives of the industry: Brand Pharma

B r a n d / G e n e r i c s Generic Pharma Pharma

Bob Armitage Eli Lilly (confirmed)

Guy Donatiello Endo Pharmaceuticals

TBD

(confirmed)

An additional speaker will be invited to discuss the current status of biosimilars legislation and comment on the potential impact of such proposed legislation. Annual Meeting 2010 At the upcoming Annual Meeting, we are planning with the Biotechnology and Chemical Practice Committees the second part of the 2 part presentation. The second part is a 2-hour CLE Program providing a detailed discussion of proposed and enacted legislation (if any) aipla bulletin

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affecting Hatch-Waxman and biosimilars. Additional speakers will address economic and antitrust impact of the Hatch Waxman legislation and patent litigation.

Hatch-Waxman Subcommittee: Chair, Kurt Karst, Hyman Phelps & McNamara and Vice Chair, Lauren Stevens, Finnegan Henderson.

Our Subcommittees and their Leadership:

FDA Clearance of Trade/Brand Names Subcommittee: Chair, Michael Lang, Snell & Wilmer, and Vice Chair, Allison Strickland, Fross Zelnick Lehrman & Zizzu.

Biosimilars Subcommittee: Chair, Pam Politis, Endo Pharmaceuticals, and Vice Chair, Chad Landmon, Axinn Veltrop & Harkrider.

Special Committee on Genetic Resources, Traditional Knowledge, and Folklore Chair: Thomas T. Moga (left photo) Vice Chair: DeAnn F. Smith (right photo) ___________________________________________

The Special Committee held a joint meeting with the Emerging Technologies Committee and the IP in Latin America Committee. The IP laws and practices related to genetic resources (GR) in Brazil, India and China were discussed. Dr. Rajesh Acharya from H K Acharya & Company presented on GR in India. Joaquim Goulart from Dannemann Siemsen presented on GR in Brazil. Tom Moga was ready to present on GR in China but due to technical difficulties, was unfortunately unable to present.

Following the presentations, there was a lively question and answer period. Those in attendance found the presentations interesting, informative and thoughtprovoking. Looking ahead to the Spring Meeting, the Special Committee will hold a session directed to traditional knowledge. We hope to see you all at the Spring Meeting!

Special Committee on Legislation Chair: Sharon A. Israel (left photo) Vice Chair: Rick D. Nydegger (right photo) ___________________________________________

The Special Committee on Legislation is a special committee established to assist the AIPLA with its advocacy efforts. The Committeeâ&#x20AC;&#x2122;s goals are twofold: (1) As requested, this Committee works with the 78â&#x20AC;&#x192;

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appropriate substantive committees to help prioritize and analyze issues and proposed positions, both pro and con, relative to legislative proposals which come before the Board for its consideration; and (2) The 2010 mid-winter institute issue

Committee also serves as a resource to assist the Board, as instructed or requested from time to time, in developing a proposed agenda of legislative matters for the Boardâ&#x20AC;&#x2122;s consideration and possible adoption. The Committee structure includes a Core Group and Working Groups for specific substantive areas, with Core Group liaisons to each Working Group. The

Committee currently has 5 Working Groups: Patents/ Litigation, USPTO Agency/Practice, Copyrights, Trademarks, and Industrial Designs. The members of the Legislation Committee come from the leadership of substantive committees, the AIPLA Fellows, and others with specialized knowledge.

Special Committee on Mergers and Acquisitions

Chair: Nanette S. Thomas (left photo) Vice Chair: Ira J. Levy (right photo) ___________________________________________ The committee did not meet at the Mid-Winter Institute and has no new business to report.

Special Committee on National IP Practitioner Associations Worldwide Chair: Mark Guetlich (photo)

___________________________________________ The committee has no new business to report.

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Special Committee on Standards and Open Source

Co-Chair: Michele Herman (left photo) Co-Chair: Douglas Luftman (right photo) ___________________________________________ Co-Chairs, Michele Herman and Doug Luftman, presented to the AIPLA Board on behalf of the Special Committee on Standards and Open Source at the AIPLA Mid-Winter Institute in La Quinta, California on intellectual property issues relating to industry standards. Such topics included issues relating to reasonable and non-discriminatory (RAND) licensing as well as more consistent public disclosure by standards setting organizations of information that could impact companies involved in drafting and/or implementing such standards. The committee is currently exploring a Board-requested AIPLA resolution relating to industry standards. The committee also held a Committee Educational Session at the Mid-Winter Institute, entitled “The Nuts and Bolts of the International Standardization Ecosystem. Committee member Monica Barone, Qualcomm, Inc., served as moderator. Committee member Michele Herman, Woodcock Washburn LLP, discussed international developments in the standards setting arena and their implications on a company’s global patent portfolio. Committee member Gary Ritchey, Townsend & Townsend & Crew LLP, discussed licensing and litigation issues arising from the standard setting process. The committee also moderated a Table Talk, a new luncheon program at the Mid-Winter Institute. The committee was honored to have AIPLA President, Alan Kasper, as a participant at the table. The Table Talk included two distinct topics for discussion. The group first discussed open source software related issues including the methods of determining inclusion of open source software in a company’s deliverable and issues with open source software in a commercial environment. The

group then moved to a discussion of standards-related issues including transparency, such as the need for readily available intellectual property policies and publicly available patent licensing statements. The committee’s efforts in 2010 will focus on several dynamic topics. The committee plans to organize practical CLE programs relating to standards and open source, such as a program on open source software (OSS) that will be held at the AIPLA Spring Meeting. On an ongoing basis, the committee will collect information such as forms, checklists, guides, and procedures, as well as practical tips, as a resource for AIPLA members. The committee is currently collating an OSS license comparison chart, which categorizes attributes of twenty of the most widely used licenses. Upon completion, this chart may be used by AIPLA members as a quick reference for license compliance. Another central activity of the committee is to report on relevant lawsuits, enforcement actions, government policies, regulations, and legislation that may be of interest to AIPLA members in the areas of standards and open source. The committee has, on an annual basis, established a Partnering on Standards dialogue with Federal agencies, such as the Federal Trade Commission (FTC) and the Department of Justice (DOJ). The Special Committee on Standards and Open Source is always striving to increase and broaden its committee membership with both law firm and in-house attorneys who are interested in standards setting and open source issues. The committee welcomes any interested AIPLA members to join.

Trade Secret Law

Chair: Nathan A. Schleifer (not pictured) Vice Chair: Daniel P. Westman (not pictured) ___________________________________________ The committee has no new business to report. 80

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Trademark Internet

Co-Chair: Matthew Nelles (left photo) Co-Chair: Mark Partridge (not pictured) Vice Chair: Joe Keeley (right photo) ___________________________________________ See Trademark Law Committee Report

Trademark Law

Chair: Kimberly N. Van Voorhis (left photo) Vice Chair: Amie Peele Carter (right photo) ___________________________________________ The Trademark Committee continues in its role as both a substantive committee responsible for monitoring the laws and treaties of the United States concerning trademarks, trade names and unfair competition, as well the administrative committee that coordinates the efforts of the specialized AIPLA trademark committees, focusing on international aspects of trademark law, trademarks on the Internet and in cyberspace, trademark litigation and trademark relations with the Patent & Trademark Office. These Committees have focused their efforts on the following activities: Trademark Law Committee Trademark Committee Educational Session The Trademark Committee partnered with the Education, Trademark Internet, Trademark Law, Trademark Litigation, Trademark Treaties and International Law, Trademark Relations with the USPTO and Young Lawyers Committees to sponsor a Committee Educational Session at the 2010 Mid-Winter meeting on the subject of trademark valuation and litigation in a down economy. Jonathan Faber of the Luminary Group and Lynda Zadra-Symes of Knobbe Martens spoke to the group assembled and engaged in a lively Q&A session. Amie Peele Carter served as moderator. The 2010 mid-winter institute issue

session was approved for 85 minutes of CLE. The meeting continued with each individual committee giving a report on the work it had been doing since the Annual Meeting in October, 2009. Trademark Strategic Plan At the Mid-Winter meeting in January 2010, leaders of the various trademark committees, the anticounterfeiting committee, young lawyers and the copyright committee discussed progress on the 2008 strategic plan. Topics of continued emphasis were identified, including working with the Young Lawyers and Education committees. Certain goals in the plan have been reached and those also were listed. The underlying mission remains to be reinforcing AIPLA as a preeminent organization and resource for US trademark attorneys. Moving forward in 2010, the Trademark Law Committee will focus on updating its microsite consistent with the strategic plan. The committee will also continue its commitment to cutting edge continuing legal education programming by devoting resources to both the professional programs and on-line programs committees, and has appointed active liaisons to both committees. As part of its on-line programs effort, aipla bulletin

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committee leadership discussed local programs both in the form of live presentations and webcasts. Several firms have already volunteered to host these pilot programs in various offices throughout the country. To help publicize content at both the local events and future stated AIPLA meetings, the committee will work with the IP Law Association’s Committee. Trademark Bootcamp The Committee is well into its planning of the second annual Trademark Bootcamp, a single-day workshop covering basic trademark prosecution, including international and domestic issues in both a handson and lecture format. Bootcamp planning subcommittee chair, Kristin Harkins will work closely with the Education Committee to plan and administer the program, which is scheduled to take place in June, 2010, in Washington DC. Amicus & Legislation The committee continues to consider potential legislative issues and is actively involved in the amicus committee. We expect to continue this involvement in 2010, identifying substantive issues of interest and importance to the trademark community. Other Issues The trademark leadership also discussed formalizing a position for the US delegation to the working group on the Norway proposal to the Madrid Protocol. Additional details regarding preparing the committee proposed position can be found in the Trademark Treaties and International Law section, below. At the upcoming spring meeting in New York, the Trademark Law Committee will co-host a breakfast meeting with WIPO representative Alan Datri concerning the Madrid Protocol, positions on the Norway proposal and an update on the progress of the working group on this proposal. Individual Trademark Committee Reports: The Trademark Relations with USPTO Committee (chair: Jody Drake; vice-chair: Yasmin Tavakoli, vicechair: Linda McLeod) reported that it had, in partnership

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with the USPTO, engaged in a quality control review of over 400 first and final Office Actions. The Office appreciated the committee’s input and noted certain opportunities for improvement, including providing incentives for the issuance of more Examiner’s amendments when appropriate. The Office will be implementing changes immediately, based on this observation. Further collaboration is planned in the future. This committee continues to monitor and inform members about new procedural and substantive developments in trademark prosecution practice at the Office and proceedings before the Trademark Trial and Appeal Board. The Trademark Litigation Committee (chair: Steve Meleen; vice-chair: Jennifer Kovalcik) continues its work on updating the map of the US Circuit Courts of Appeal, which provides an online summary by circuit of leading precedent governing core trademark legal issues as well as its quarterly litigation report. The next quarterly report is scheduled to issue in time for the AIPLA Spring Meeting in May. The Trademark Internet and Cyberspace Committee (chair: Matt Nelles; vice-chair: Joe Keeley) will continue to monitor and participate in IP-focused coalitions commenting on ICANN policy in administrating the domain name system and significant trademark/ internet case law and legislative developments. The Trademark Treaties and International Law Committee (chair: Janet Fuhrer; vice-chair: Michael Ballard) continues to actively review and report on various aspects of international trademark practice and trademark treaties. The committee recently launched its first web survey regarding the Lisbon Treaty and is preparing its next survey regarding the Norway proposals to amend the Madrid Protocol. The chair will be attending the next WIPO SCT meeting (including a working group meeting on the Singapore Treaty) in April, while the vice-chair will attend a working group meeting on the Madrid Protocol in July. As well, the committee will be planning a CLE component for the Trademark Law Group of Committees meeting at the Annual Meeting in Washington later this year.

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Trademark Litigation

Chair: Stephen P. Meleen (left photo) Vice Chair: Jennifer L. Kovalcik (right photo) ___________________________________________ See Trademark Law Committee Report

Trademark Treaties and International Law Chair: Janet M. Fuhrer (left photo) Vice Chair: Michael M. Ballard (right photo) ___________________________________________ See Trademark Law Committee Report

Trademark-Relations with the USPTO

Chair: Jody H. Drake (left photo) Vice Chair, Prosecution: Yasmin Tavakoli (center photo) Vice Chair, Inter Partes: Linda K. McLeod (right photo) ___________________________________________ See Trademark Law Committee Report

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USPTO Inter Partes Patent Proceedings Chair: W. Todd Baker (left photo) Vice Chair: Herbert D. Hart (right photo) ___________________________________________

Board of Patent Appeals and Interferences held that a reissue application was improper where the only defect identified in an issued patent was the failure to present additional dependent claims. The board reasoned that the mere addition of new dependent claims did not identify any defect in the issued patent. Committee members had differing opinions on whether provoking an interference constituted a defect correctible by reissue absent another error.

The USPTO Inter Partes Patent Proceeding Committee conducted a one-hour business meeting at the 2010 Mid-Winter Institute. There were three primary topics of discussion. •

•

The Committee discussed the Federal Circuit’s decision in Koninklijke Philips Electronics N.V. (“Philips”) v. Cardiac Science Operating Company, 590 F3d 1326, 93 USPQ2d 1227 (“Cardiac Science”) (Fed. Cir. 2009). In Philips, a second panel of the Federal Circuit maintained that, when a party challenges the patentability of a “copied” claim pursuant to 35 U.S.C. §112, first paragraph, the “copied” claim is interpreted in light of the specification of the targeted patent or application. The Federal Circuit’s manner of treating copied claims remains a controversial topic amongst Committee members. The Committee briefly discussed Ex Parte Tanaka, 93 USPQ2d 1291 (BPAI 2009). In Tanaka, the

•

Topics for the upcoming 1.5 hour CLE seminar at the Spring Meeting in New York City were discussed. The following three topics were agreed upon: (i) inter partes reexam nuts and bolts (0.5 hrs), (ii) inter partes reexam -- case management reform (0.5 hrs), and (iii) strategic uses of inter partes reexam concurrent with district court litigation (0.5 hrs).

Women in IP Law

Chair: Carey C. Jordan (left photo) Vice Chair: Alyson G. Barker (right photo) ___________________________________________ The Women in IP Law Committee has kicked-off 2010 with a bang. At the Mid-Winter meeting in La Quinta, we had a packed audience at our breakfast meeting where Stewart Hirsch provided an interactive program on networking. Participants were seated at tables with a diverse group of men and women representing various practice settings, technical backgrounds, and various stages in one’s career. At the conclusion of the networking program participants shared the 84

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“connections” that each group made. Thank you to Stewart Hirsch for presenting and to Howrey, LLP for generously sponsoring the meeting. In addition, thank you to Bea Swedlow for “tweeting” during the meeting so that those members who could not attend in person could join us in spirit. We plan on having live “tweets” at all of our future events. Then, on February 11, 2010, the committee hosted its 2010 mid-winter institute issue

third annual networking dinners throughout the United States and Canada. Despite blizzard conditions in most of the Eastern half of the country, women came together in 23 cities for an evening of networking, mentoring, and fun. Four additional locations were supposed to host dinners but had to postpone the event due to weather. These locations have since hosted dinners. During the dinners, all of the locations were joined by teleconference. Each host identified which city she was calling-in from, how many women were joining her, and then each location had an opportunity to cheer or in the case of the Texas dinners, give a warm “howdy” to the other locations on the call. The chair of our dinners’ subcommittee spoke about the importance of women helping other women and AIPLA’s President, Alan Kasper, graciously joined the call to speak about the Association’s commitment to advancing women in the profession. A great time was had by all according to the many “tweets” that were posted from the various dinners. A big thank you to all of our host firms, Hathaway Russell for organizing everything, and to Alan Kasper and the staff of AIPLA for all of their support. We look forward to our 4th annual dinners in 2011 and hope that Mother Nature will cooperate with us more next year. In addition to these events, under the leadership of Randi Karpinia and her team of dedicated volunteers,

the committee continues to expand its outreach efforts to existing and potential committee members. The electronics and communications subcommittee has developed an active community of over 250 LinkedIn members who share information about the committee, AIPLA, and discuss topics of interest to women in IP law. We also are continuing to post on the committee’s blog, http://womeninip.blogspot.com, we just started a Facebook group, and we have a growing group of tweeters posting under the designation #womeninip. We encourage all committee members to check us out on the web. Starting in March we will circulate and post our inaugural e-newsletter and plan on making that a quarterly occurrence. If you are interested in helping with electronic outreach, please contact Randi Karpinia at randi.karpinia@motorola.com. Last but not least, we hope to see renewed interest and participation in our quarterly book club by better utilizing our online resources. Our next book is titled It’s Not a Glass Ceiling, It’s a Sticky Floor by Rebecca Shambaugh. Our moderator this quarter is the chair of the book club subcommittee, Christine McCarthy. Christine will be posting discussion topics on LinkedIn, the blog, and Facebook. We encourage you all to participate in your preferred online medium and would like to point out that the blog allows anonymous comments if you are more comfortable with that format.

Young Lawyers

Co-Chair: Ehab M. Samuel (left photo) Co-Chair: Michael Valek (right photo) ___________________________________________ The Young Lawyers Committee held a successful joint meeting with the Trademark Committees and the Education Committee at the Mid-Winter Meeting in La Quinta, CA. We plan to continue to collaborate with those committees for future meetings and, indeed, are currently working with the Education Committee and Law Student Committee on a panel presentation for the spring meeting in New York on the topic: Practical 2010 mid-winter institute issue

Considerations for Present and Future IP Professors - Everything You Wanted to Know but Didn’t Know Who to Ask. The joint meeting will include a panel discussion on how to prepare yourself for a position as a full-time or adjunct professor, where to look for opportunities as a professor, what to do once you get an adjunct or full-time position, how to balance working and teaching (for adjuncts), best and worst aipla bulletin

teaching techniques, and resources available to professors. The Young Lawyers Committee has also recently launched a Facebook® page as part of our initiative to improve communication with among our members. This page will serve as a central hub for news about opportunities to volunteer on our committee and other committees throughout the AIPLA. Our AIPLA microsite page has also been updated to include a live feed and link to the Young Lawyers Committee Facebook® page. This way, even those who are not on Facebook®, can get up-to-date information about upcoming events and opportunities to get involved in various projects throughout the AIPLA. If you are interested in learning more, or if you are a member of another committee seeking young lawyer volunteers for a project, please send an e-mail to Mike Valek (mvalek@velaw.com) or Ehab Samuel (SamuelE@ gtlaw.com).

aipla bulletin

Since the Mid-Winter Meeting, the Giles Rich Moot Court Subcommittee completed preparation of the bench memo for this year’s Giles Rich Moot Court Competition. We owe a big thank you to the subcommittee chair, Stephen Stout of Vinson & Elkins, and subcommittee member Chad Pannell and Rich Miller of King & Spalding, Artem Sokolov of Sughrue Mion, and Jerry Suva of Baker Botts. The moot court subcommittee is already working on compiling a list of volunteers to work on next year’s problem. If you are interested, please contact Mike or Ehab. Finally, we are currently in the process of collecting a list of volunteer judges to support this years Watson Writing Competition and the Intel International Science and Engineering Fair (Intel ISEF). Both of the Watson Writing Competition subcommittee cochairs, Jen Kuhn and Janet Gongola, have decided to continue their leadership of this project for this year’s competition. If you are interested in volunteering to help, please contact Mike or Ehab.

2010 mid-winter institute issue

Trim: 7.25”x9.75”

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