BULLETIN
American Intellectual Property Law A ssociation
2009 Annual Meeting Issue Washington, DC
in this issue...
President’s Introduction..................................................................................................................................3 President’s Page...............................................................................................................................................5 2010 Robert C. Watson Competition Information.............................................................................................10 Sixteenth Annual AIPLA Quarterly Journal Publication Staff Competition Information.....................................11 37th Annual Giles Sutherland Rich Memorial Moot Court Competition Information.........................................13
Association Activities ...................................................................................................................................16 Membership Applications.................................................................................................................................16 News of Members ...........................................................................................................................................24 Future Meetings Calendar................................................................................................................................26 C.L.E Update ...................................................................................................................................................29 Copyright Office Affairs.....................................................................................................................................33
Thank You to Sponsors....................................................................................................................................41 Photo Pages.....................................................................................................................................................43 2010 Mid-Winter Institute Flyer........................................................................................................................54
Committee Reports: Amicus..............................................................................................................................................................55 Antitrust............................................................................................................................................................59 Biotechnology...................................................................................................................................................60 Committee on the ITC......................................................................................................................................60 Copyright Law..................................................................................................................................................61 Corporate Practice...........................................................................................................................................62 Education.........................................................................................................................................................66 Electronic and Computer Law..........................................................................................................................67 Emerging Technologies....................................................................................................................................71 Fellows.............................................................................................................................................................72 International Education.....................................................................................................................................73 IP Practice in Latin America..............................................................................................................................73 IP Practice in the Far East................................................................................................................................75 Law Practice Management...............................................................................................................................75 Licensing and Management of IP Assets.........................................................................................................76 Membership......................................................................................................................................................77
AIPLA
Published from the Association Office
Mentoring.........................................................................................................................................................77 Online Programs..............................................................................................................................................78 Patent Cooperation Treaty Issues....................................................................................................................80 Patent Litigation................................................................................................................................................81
AIPLA 241 18th Street South, Suite 700 Arlington, VA 22202 (p) 703.415.0780 (f) 703.415.0786 Web: www.aipla.org
Professional Programs.....................................................................................................................................81
Domestic Subscription Rate: $60.00 per year Foreign Subscription Rate: $70.00 ($20.00 per copy)
Women in IP Law.............................................................................................................................................87
2009 annual meeting issue
Public Education...............................................................................................................................................82 Special Committee on Genetic Resources, Traditional Knowledge and Folklore............................................84 Special Committee on the FDA........................................................................................................................85 USPTO Inter Partes Patent Proceedings (formerly, Interference)....................................................................86
2009 Annual Meeting, October 15-17, 2009.....................................................................................................90
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BULLETIN OFFICERS 2009 – 2010 Alan J. Kasper. .......................................................................................................................................................... President 2100 Pennsylvania Avenue NW, Washington, DC 20037 David W. Hill....................................................................................................................................................President-Elect 901 New York Avenue, NW, Washington, DC 20001 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 Anthony M. Zupcic .............................................................................. 1290 Avenue of the Americas, New York, NY 10104 (Terms Expire October 2011) Robert W. Clarida.......................................................................1133 Avenue of the Americas, New York, NY 10036-6799 Elizabeth Ann Morgan................................................................1180 Peachtree Street, NE, Suite 2050, Atlanta, GA 30309 Naomi Abe Voegtli.............................................................................................3410 Hillview Avenue, Palo Alto, CA 94304 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
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Alan J. Kasper The 103rd President of AIPLA by: Cindy Weber and W. Mack Webner
H
ow does one (or in this case two) introduce Alan Kasper? It is difficult to go anywhere in the intellectual property world and find someone who does not know Alan. Those who don’t know Alan have heard of him. His reputation is that he is indefatigable; he flies from Washington to Tokyo to attend a client conference, from there to Brussels for a speaking engagement, on to Switzerland for skiing with international colleagues in IPSKI and back to Washington to manage client issues, attend a partnership meeting at his firm and watch his son play a high school tennis match. That’s just the first week of the month. With regard to a guy who often travels with golf clubs, a tennis racquet or fly rod close at hand, just in case an opportunity for some fun is presented, it is exhausting just to try to describe him. For W. Mack Webner Cindy Weber that reason, in addition to our long standing admiration of Alan as a friend and colleague, both Cindy Weber and I are sharing the honor of introducing Alan Kasper to those, likely few, members of AIPLA who do not know him or have not met him. Mack: I first met Alan in the 1970’s at an Irving Kayton seminar in Florida on licensing. Alan was then patent counsel to COMSAT (Communication Satellite Corporation) in Washington, DC and I was trademark counsel for a Chicago based company. Since Alan never met a person he didn’t like (though I have tested him on occasion), and I amidst all of those patent lawyers was desperate for anyone to talk to, we quickly became friends. Cindy Weber is the Managing Partner of Sughrue Mion PLLC, the firm in which Alan and I found ourselves to be partners many years after our first meeting. Cindy has her own recollections of the early Alan. She tells it this way: Cindy: “I first met Alan when he was a client of the Sughrue firm and I was an associate. He was clearly a very smart and talented attorney and a challenge – and pleasure – to work for. When Alan decided to go into private practice, we were first in line and delighted to get him. I can speak for everyone here in saying that we have felt lucky to have Alan as our partner from that day to this. When Alan joined us in 1985, he fit right in with the all-male hunting and fishing crowd at the firm. At the time I was the only woman attorney and only female partner, and what impressed me was his considerate treatment of me and the other women in the firm, no matter what their status. Alan has been a champion for minorities – including women – since he joined us. I suppose that is due to his Eagle Scout training, or, more likely, the excellent influences of his mother. Soon after Alan joined us, he moved to Japan to head our Tokyo office, family in tow. Though his original stint was for two years, he stayed for four and there developed his interest in the international aspects of IP law. Alan became, as Mack says, a prodigious globe trotter for the causes of education, business development and a bit of adventure, with good friends throughout the IP world. Upon his return to Washington in 1994, he began his active involvement with AIPLA, with a focus on international practice, leading to positions as Chair of the IP Practice in Japan Committee, the International and Foreign Law Committee 2009 annual meeting issue
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and the PCT Issues Committee. His commitment to AIPLA is, perhaps, best exemplified by his success several years ago in persuading the firm to budget for every attorney and agent in the firm to automatically become a member of AIPLA. As Mack noted, Alan’s energy is unlimited and he seems to need little or no sleep, as his emails on firm issues often originate at three or four am. Such a schedule has enabled him to devote significant amounts of time to AIPLA, while maintaining his patent practice and a wonderful family. His wife and three children are all very understanding of Alan’s drive and his daughter Lauren, his oldest child, has followed Dad’s lead by becoming a graduate engineer, attending graduate school at SMU and considering law school. His middle child, son Evan, is majoring in finance and economics, also at SMU, but is dream career is to become his generation’s Van Halen. The youngest son, Peter, who was born in Japan, is soon to graduate from St. Albans in Washington, DC and his course of education is yet to be determined, though perhaps professional tennis is in his future. Susan, Alan’s wife, holds it all together for the Kasper family, as you might expect of someone who served as a relief services nurse in the Far East following the Viet Nam conflict. You can tell a lot about someone out in the wilds, particularly their ability to lead, be prepared for the unexpected and work in a team with others, but as Mack notes: Mack: As much as we could talk about Alan’s commendable skills in the outdoors (notice his tennis and golf skills have not been mentioned), it is application of such skills to the IP world that merits recognition. Alan’s ability to assess legal issues, understand the legislative process, work tirelessly toward a goal and mediate conflict makes him the right person for the job as President of AIPLA, particularly at this critical time in the effort to conclude patent reform, implement global worksharing, and advance the harmonization of patent law and practice. When Alan’s administrative and mediation talents are matched with his prodigious capacity for work and drive for success, it will make for an exhausting year ahead for AIPLA Committee Chairpersons and staff members. One need only to have heard or read Alan’s acceptance speech in October to recognize that he has serious plans for assuring that AIPLA maintains its rightful role as THE intellectual property organization in the national and international arena. Who better than Alan Kasper, an internationally recognized and respected patent lawyer with a corporate and private practice background, managerial training and proven leadership ability, can steer our organization during these critical times? I recognized those skills and talents when I approached him a few years after our first meeting to join me in establishing a new firm. Though he declined at that time, in order to advance to become an Assistant General Counsel at COMSAT, I was delighted to find, when I later came to Sughrue, that Alan already was a partner – a significant factor in my decision to join the firm. Our friendship has grown over the last dozen years and all of those initial impressions of Alan have been proven correct. But, while I have been in a firm in which Alan has shown his leadership abilities, Cindy’s explanation of Alan’s managerial talents are more pertinent. He was a member of the firm’s Management Committee when Cindy first became Sughrue’s Managing Partner and stayed in that position for many years. She can give you her insight on that facet of Alan. Cindy: “Alan was a member of the Management Committee during much of my term as Managing Partner and, even now, remains a part of my “kitchen cabinet”. Alan has the ability to get disputing parties together, and resolve a thorny issue without any ensuing or enduring rancor. He has foresight and, while some may disagree with him, it is never personal. Ultimately, his calm demeanor and considered opinions cause the collected group to reach a well reasoned and generally correct decision. He is also very wise and fair in dealing with firm issues. Near and dear to my heart, he has been a strong and consistent proponent of diversity for as long as I have been here. He is, in fact, one reason we have had a woman Managing Partner for ten years, and he was a strong supporter of our two new African-American partners and our contributions to the AIPLEF scholarship program. We have all benefited greatly from Alan’s positive attitude and vision for the firm. While we at Sughrue Mion miss having him as available as he once was due to his AIPLA duties, we are pleased and proud to share him with the organization during his tenure as President. You will become, if you have not already, a friend of Alan’s, pleased to be known as Alan’s friend, and as appreciative of his talents in directing the organization as we have been for the last thirty plus years.” We hope you enjoy getting to know Alan and working with him as he strives to enhance AIPLA’s status as the preeminent leader in both the domestic and international IP communities. 4
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president’s page by: Alan J. Kasper, AIPLA President
Incoming President Alan Kasper with Immediate Past President Teresa Stanek Rea at the Annual Meeting
I
n a speech at the AIPLA Annual meeting a couple of months ago, I commented on the unique alignment of stars in the IP universe that brought new leadership to the constellations of both US domestic and international practice. The recent appointment of Dave Kappos, an experienced patent and trademark practitioner and industry manager, as Director of the USPTO, with the accompanying appointment of a dedicated professional like Bob Stoll as Commissioners of Patents gave new hope to users of the system. Bob joins the experienced Commissioner of Trademarks, Lynne Beresford, who has successfully managed the trademark side of the Office. We are encouraged to have a leadership team that will listen to and understand the perspectives of users, provide an open and transparent government, and inspire a talented corps of examiners to discharge their duties with efficiency, accuracy and professionalism, and we are optimistic that this new team will work with AIPLA to meet those objectives. And at WIPO, the election of Francis Gurry as Director General, with the more recent appointment of past AIPLA President Jim Pooley as Deputy Director General for Patents, raises expectations for advances in PCT reform, worksharing initiatives, and harmonization of IP laws. Those expectations remain high, as the fresh winds blowing from the USPTO campus in Alexandria, Virginia have brought a long-sought revision to the examiner “count system” and a welcomed acceptance inside and outside the Office of the new philosophy that “rejection does not equal quality.” Many of us have been pleasantly surprised by unsolicited calls from examiners with proactive suggestions for claim amendments that place an application into an allowable condition, saving clients the costs of extended prosecution. Even the goal of 10-month pendency, stated by Secretary of Commerce Gary Locke following David Kappos’ swearing in, while generating an audible gasp from practitioners and the corps alike, shows an emphasis on tackling the problem that will drive complementary initiatives toward worksharing and prosecution efficiencies. The initial steps, while limited, include a promise of expansion if they prove to be sound. Innovative programs, such as the accelerated acquisition of quality IP protection for green technology, have been initiated by the Office to advance “the development and deployment of green technology, create green jobs, and promote US competitiveness in this vital sector.” In order to begin tackling the backlog, a pilot program has been initiated to “allow a patent application from a small entity to receive special, accelerated status if the applicant is willing to abandon an application that has not been examined.” The likelihood of expanding this program to major users of the patent system has been confirmed. Further, an enhanced and corporate-like focus on strengthening the skills of mid-level managers and enhancing the legal training throughout the corps has been matched, if not exceeded, by a commitment to 2009 annual meeting issue
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president’s page (continued)
transparency and outreach to users of the US patent and trademark system. Input from users on a broad spectrum of issues was requested within weeks of the new team being in place, and has continued at a blistering pace, through roundtables (worksharing, PCT issues), Federal Register requests for comment (Quality) and speeches in venues large and small throughout the country. The Director’s new blog, accessed through the USPTO website, already has heightened expectations for an “open channel for sustained dialogue and the exchange of ideas” with the user community. On the administrative front, it seems to be a “whole new ball game,” and AIPLA has been quick to establish lines of communication with the new Administration and to voice its support, and suggestions, for these initiatives. AIPLA has been an active participant in all available USPTO events under the new Administration, and has even hosted a unique online “Q & A” dialogue between Executive Director Q. Todd Dickinson and Director Kappos (AIPLA’s quarterly “Q & A” Programs give a platform to your views and concerns, as submitted directly to us or identified through our active Committees). Don’t forget: it is your views and those of your fellow AIPLA members, as communicated or developed through your active participation in any of the dozens of standing Committees, which provide the core of AIPLA’s positions on IP practice and policy. If you missed any Q & A Programs they are available online at the following URL: www.aipla.org/ html/QandA/ Internationally, new leadership at WIPO offers a unique opportunity for improvement and advancement of IP systems world-wide. These new leaders are individuals who have experience obtaining and defending intellectual property rights and are deeply committed to the global protection of intellectual property. To cite recent examples, the proposals for a PCT roadmap that promise streamlined and efficient patent prosecution, coupled with the demonstrated advantages of the Patent Prosecution Highway (PPH) that provide accelerated allowances in a large percentage of qualified applications, show the imagination and flexibility that is necessary to lead us to greater economy and efficiency. The optimism for welcome “change,” however, has also been confronted by the cold, hard reality of the challenges that still remain across the spectrum of issues and that present roadblocks to progress towards a better patent and trademark system. Those challenges are and will be presented on all fronts, domestic and international, within the courts, the legislatures and the administrative agencies. On the domestic front, patent reform continues to hold center stage, but progress seems to be suspended in time. As other more pressing items on the national agenda, such as health care, receive the attention of the Senate, the likelihood of patent reform slipping into the second session of the 111th Congress has become a reality. We are increasing the intensity of our activity to hold the present provisions in S. 515 intact, particularly the important damages and post-grant review provisions. Our top priority, however, continues to be the long-sought goal of stabilizing the revenue stream of the USPTO. AIPLA is greatly concerned that the USPTO, strapped by limited revenue due to decreased fee income, now finds itself unable to fund the needed new hires, retention incentives and infrastructure improvements essential to moving toward a reduction in backlog and pendency. At the same time, however, AIPLA continues to maintain its strong opposition to diversion in any form as a precursor to considering any fee increases, and is pressing for affirmative guarantees that the attainment of the USPTO’s goals will not be impeded by 6
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underfunding. Recent reduced budgetary allocations for the USPTO, coupled with projected fee income in excess of those allocations, are making more likely the possibility that the USPTO will not get to use all of the revenues it receives, which has heightened our concerns in this area Nonetheless, we recognize the urgency for consideration of possible fee adjustments that may more reasonably reflect the work performed by the Office and provide the needed income to the USPTO. Trademark practitioners recently were warned about the prospect of practical problems with the filing of affidavits for a registered extension of protection under the Madrid Protocol, which will demand legislative action to which AIPLA will contribute its views and insights. AIPLA, through its small but energetic Trademark and Internet Committee, also continues to engage on the complex and fast changing issues involving domain names. AIPLA has again submitted comments to the ICANN Board and its Generic Names Supporting Organization regarding the Third Draft Applicant Guidebook for New gTLDs. See AIPLA’s comments at the following URL: http://www.aipla.org/Content/NavigationMenu/IP_Issues_and_ Advocacy/Comments/Comments.htm#icann While current copyright issues seem to be less intense, they are not without controversy or concern. Notable among the concerns is the recent announcement by the National Academy of Sciences of a comprehensive review of current copyright principles and practices through a project entitled “The Impact of Copyright Policy on Innovation in the Digital Era.” We will offer the experts in our membership base to provide counsel on the wide variety of related topics that are certain to arise in this review. Fundamental issues involving the scope of fair use, technology mandates, secondary liability and statutory damages likely will be covered. Turning to the courts, the Board of Directors has approved the publication of a White Paper on Nominations for future vacancies on the CAFC, and that paper, which prioritizes the appointment of a District Court judge to fill the next vacancy, can be found on the AIPLA website at the following URL: http://www.aipla. org/Content/Microsites134/Public_Appointments1/Committee_Documents36/AIPLA_Recommendations_ Regarding_Nomination_of_Judges1/JudNomWhtPpr-11-10.pdf Your AIPLA also was extremely active this past year, having filed 12 amicus briefs on issues ranging across the entire IP spectrum, including Cardiac (Section 271(f) protection), Tafas (rulemaking authority), Reed Elseiver (copyright infringement and registration) and Princo (patent misuse and the rule of reason). As we now await the decision of the Supreme Court in the Bilski case on issues related to patentable subject matter, and the decision of the Federal Circuit in the Ariad case on written description and enablement standards, the only certainty is that we all will face significant challenges in applying any new standards defined by these cases. Additional issues regarding damages, the standard for obviousness, and the role of judges and juries on that issue may be addressed in the months to come. AIPLA staff and education committees stand ready to promptly inform and educate about these developments, and hope that you can take advantage of these offerings at meetings or online. All of AIPLA’s briefs can be found on the AIPLA website at the following URL: www.aipla.org/html/amicus_briefs International issues present perhaps the greatest challenge for creative thinking and diplomacy. The PCT and harmonization agendas at WIPO have been stalled in recent years by the development agenda of the WIPO developing countries. These countries are demanding recognition of their interests and protections for the genetic resources, traditional knowledge and folklore that originate within their jurisdictions. In order to address those challenges, we have formed a new Special Committee on GR/TK/F to monitor developments and advise the Board of Directors on the policy positions that the Organization should take. Similarly in both the health care debates and the recent Global Climate Change negotiations, some developing countries have demanded free rights to proprietary technology or at least compulsory licenses 2009 annual meeting issue
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president’s page (continued)
to exploit such technology. The AIPLA Emerging Technologies Committee has undertaken to monitor these developments and to develop positions for consideration by the Organization. AIPLA is extremely fortunate to have the energy and experience of new Deputy Executive Director for International and Regulatory Affairs Albert Tramposch to oversee and guide many of these efforts in the international and domestic arenas. In fact, Albert just returned from Copenhagen, representing AIPLA at the United Nations Framework Convention on Climate Change (UNFCCC) and carefully following the discussions among the 192 members. Among the many issues facing the COP15 is how to facilitate the transfer of technology to developing countries in order to help them limit their emissions of CO2, while maintaining economic momentum in the face of the world-wide economic crisis. AIPLA urged the negotiators to recognize that the global IP system is intended to maximize the inventiveness and innovative capacity of all countries, and that it is an effective and universal tool toward achieving critical goals in an efficient and cost-effective way. A final pair of proactive initiatives is worth noting. First, AIPLA will host in Washington next March an International IP Attorney Association Summit, to which a representative group of leaders from national IP attorney associations will meet to discuss education, communication, coordination and advocacy issues of common interest. Later in the spring, AIPLA will co-host with FICPI an international Colloquium, with participants from government, industry and academia, to discuss the sources and solutions for the existing patent backlog problem. As we enter this new year, please make it a priority to attend AIPLA programs and meetings, 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. Also, as your AIPLA does, advocate for adequate funding for the USPTO and an end to diversion of USPTO revenues. I look forward to meeting you at various fora, discussing current issues and working with you over the next year to the betterment of our profession.
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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 (30–40 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 submitter’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 10
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American Intellectual Property Law Association
Sixteenth Annual AIPLA Quarterly Journal Publication Staff Competition Writing Competition March 12–15, 2010 Staff Selection Announced August 2010 Publication Staff Participation August 2010 – May 2012 Competition Rules All students who will have exactly two full academic years remaining in an ABA accredited law school beginning August 2010, are eligible to compete for a position as a Publication Staff member for the period August 2010 through May 2012. This includes both first-year full-time JD candidates and second-year part-time JD candidates. The Publication Staff’s responsibilities are similar to that of members on other student-run journals and are coordinated by several student editors, selected each year from among the first-year Publication Staff.
For more information, please contact:
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Students wishing to compete must submit (by fax or mail) a Request to Compete form and a signed copy of the Candidate Agreement by close of business (5:00 p.m. EST) on Friday, March 5, 2010. These forms are available on the AIPLA website: www.aipla.org. The competition packet will be delivered to each applicant on March 12, and must be returned by mail, postmarked no later than the following Monday, March 15, 2010. Complete instructions will be included with the competition packet.
AIPLA Quarterly Journal Attention: Executive Notes Editor 2000 H Street, N.W. Washington, DC 20052 (202) 994-8620 Fax: (202) 994-8626 E-mail: QJ@aipla.org Or visit: www.aipla.org
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AIPLA
2010
online programs All of these programs run from 12:30 PM – 2:00 PM ET and CLE will be requested. January 20
Inequitable Conduct: Can an Intent to Deceive be Inferred from your Prosecution Practices?
February 3
Protecting Your Client’s Brands: Using the National Advertising Division as a Cost Effective Mechanism for Resolving Advertising Disputes
March 3
Ex Parte and Inter Partes Reexamination: Strategies and Tactics * please note, topics are subject to change*
For more information, Check our website: www.aipla.org or call: 703.415.0780
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The 37th Annual Giles Sutherland Rich Memorial Moot Court Competition “Presenting Problems in Intellectual Property Law”
National First Place:
AIPLA Giles Sutherland Rich Memorial Award - $2,000
National Second Place:
Irving Marcus Award - $1,000 Regional Competitions March 19 - 21, 2010 Boston – Chicago – Houston – Silicon Valley National Finals Competition: April 21 - 23, 2010 Washington, DC Sponsored by: American Intellectual Property Law Association For More Information, Visit www.aipla.org
2009 annual meeting 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 Nanda Alapati Tysons Corner, VA Zayd Alathari McLean, VA Katharine L. Altemus East Palo Alto, CA Edward V. Anderson San Francisco, CA Christopher Banys Palo Alto, CA Jon H. Beaupre Chicago, IL Timothy Bedard Cincinnati, OH Nicholas Boebel Minneapolis, MN Neil Bombardier Winchester,VA Michael D. Broaddus Seattle, WA Kenneth W. Brothers Washington, DC Kerry Bundy Minneapolis, MN Mak J. Buonaiuto Deerfield, IL 16 
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Christopher J. Byrne San Jose, CA
Charles H. De La Garza Austin, TX
Adam M. Gustafson Milwaukee, WI
Ronald J. Campbell Ewing, NJ
Kean J. DeCarlo Atlanta, GA
Sarah Handwerger Bethesda, MD
Terrance J. Carroll San Jose, CA
Carl M. DeFranco Boston, MA
Julianne M. Hartzell Chicago, IL
E. Leon Carter Dallas, TX
Caryn DeHoratius Wellington, New Zealand
Claire F. Hawkins Seattle, WA
Alakananda Chatterjee Vancouver, Canada
Alexander Detschelt Pittsburgh, PA
Gary A. Hecker Los Angeles, CA
Andrew Chien New York, NY
James A. DiGiorgio Princeton, NJ
Toni-Junell Herbert McLean, VA
Kunoor Chopra Glendale, CA
Lonnie R. Drayer Plant City, FL
Edward Howard Fort Washington, PA
Ivan Ciment New York, NY
Tracy W. Druce Houston, TX
John Isacson Washington, DC
F. James Coe North Billerica, MA
Richard Duncan Minneapolis, MN
Kristine Johnson Fort Collins, CO
Donna J. Coningsby Beavertson, OR
Raymond R. Ferrera Houston, TX
Alvin D. Joran Pearl River, NY
Michael J. Corrigan Willoughby Hills, OH
Steven E. Garlock Saint Louis, MO
Daryl Joseffer Washington, DC
Cornell Crosby Redondo Beach, CA
Edward A. Gordon Boston, MA
Randall E. Kahnke Minneapolis, MN
Walter Davis Washington, DC
Robert M. Gould Chicago, IL
Michael G. Kelber Chicago, IL
Sean P. De Bruine Palo Alto, CA
David Griner Austin, TX
Gary Kitchen Marshall, TX 2009 annual meeting issue
James Klaiber New York, NY
Susan S. Morse Falls Church, VA
Jay Rosenthal Washington, DC
Todd A. Wagner Washington, DC
Eric J. Klein Dallas, TX
Sarah L. Nelsen Austin, MN
James E. Rosini New York, NY
Shelby J. Walker Princeton, NJ
Daniel Kloke Mountain View, CA
Justin Nelson Seattle, WA
Mark D. Saralino Cleveland, OH
Keith A. Walter, Jr. Wilmington, DE
Chris Konkol Hartford, CT
Robert P. Nupp Cleveland, OH
Rajiv P. Sarathy Seattle, WA
Steven M. War Washington, DC
Stanley Konzel Washington, DC
Jeremy P. Oczek Boston, MA
David L. Schaeffer New York, NY
Francine Ward Mill Valley, CA
Joseph P. Krause Oak Brook, IL
Patricia A. Olosky Pittsburgh, PA
Laurie Self Alexandria, VA
Donna T. Ward Dunstable, MA
Kelly J. Kubasta Dallas, TX
Raymond Owens Rochester, NY
Jenny L. Sheaffer Cleveland, OH
Robert C. Watson Annandale, VA
Ronald S. Laurie Palo Alto, CA
Elizabeth Parsons Washington, DC
Marc-Anthony Signorino Alexandria, VA
Laurence A. Weinberger Exton, PA
David Lee Alexandria, VA
Ashish Patel Atlanta, GA
Robert J. Silverman Boston, MA
Jennifer V. Whiting Los Angeles, CA
Norman Leventhal Washington, DC
Robert Thomas Payne Cromwell, CT
Scott M. Simmonds Indianapolis, IN
Kathleen Williams Boston, MA
Richard G. Lione Chicago, IL
John W. Pint Boston, MA
Thomas G. Slater, Jr. Richmond, VA
Jay Williams Arlington, VA
Verne A. Luckow St. Louis, MO
Margaret Polson Longmont, CO
Colleen D. Szuch Morristown, NJ
Megan S. Woodworth Washington, DC
Laura Majerus San Carlos, CA
Michael C. Prewitt Wickliffe, OH
Anthony Tacconi Glen Allen, VA
Kenneth M. Zeidner Clark, NJ
Michael W. Marino Burlington, MA
David C. Purdue Toledo, OH
Mary Anne Tillona Farrington, CT
Anastasia Zhadina New York, NY
Kevin McAndrews Fremont, CA
Mohammad S. Rahman Columbia, MD
Jeffrey J. Toney Atlanta, GA
Thomas Ziegler Coral Springs, FL
Thomas McMasters Minneapolis, MN
Paul E. Rauch Chicago, IL
Jennifer Trillsch Houston, TX
Lori S. Meddings Milwaukee, WI
James J. Richardson Dallas, TX
Clifford A. Ulrich New York, NY
Ryan Melnick San Diego, CA
Louis Alan Riley Plano, TX
Ralph Varndell, Jr. Leesburg, VA
Nancy J. Mertzel New York, NY
Steven G. Roeder La Jolla, CA
Stephanie K. Wade Washington, DC
Rivka Devorah Monheit Atlanta, GA
Michelle B. Rosenberg Framingham, MA
Louis F. Wagner Hudson, OH
2009 annual meeting issue
ACADEMIC Tonya M. Evans Philadelphia, PA Lucille M. Ponte Jacksonville, FL Daniel B. Ravicher New York, NY
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FOREIGN Carlos Aboim Rio de Janeiro, Brazil Alexander Anischenko Toronto, Canada Michael Bates North Sydney, Australia José Manuel Benedetti Madrid, Spain Rodrigo Bulnes Santiago, Chile Andrew Cobden Hong Kong Neville Cordell London, United Kingdom Tracy Corneau Ottawa, Canada Ralph Cox London, United Kingdom Huw Evans London, United Kingdom Jon Gowshall London, United Kingdom Megan L. Grainger Toronto, Canada Takao Igarashi Nagoya, Japan Brett Lewis Melbourne, Australia Ignacio Marques Barcelona, Spain Jeremy Morton London, United Kingdom SeungTaek Na Seoul, Republic of Korea Seiji Ota Osaka, Japan Jung Hoon Park Gwangju, Republic of Korea 18
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Matthew Pini Ringwood, Australia
Thomas D. Anderson Washington, DC
Jaime Canaves Manor, TX
Ivan Rajkovic Sydney, Australia
Jonathan C. Anderson Indianapolis, IN
Kelvin B. Catmull San Francisco, CA
Carolyn Rolls Ringwood, Australia
Yuri Astvatsaturov Chicago, IL
Alexander Chen Irvine, CA
Richard Smoorenburg Ringwood, Australia
Jonathan A. Auerbach New York, NY
Brian C. Cholewa Raleigh, NC
Elizabeth Swan Bristol, United Kingdom
Jacob Bachman Chicago, IL
Timothy Christman Minneapolis, MN
Jatin Trivedi Ahmedabad, India
Xiao Bai Chicago, IL
Patrick F. Clunk Cleveland, OH
Rajiv Tuli Delhi, India
Raghav Bajaj Washington, DC
Bridget Cochran Fort Collins, CO
Cailin Weng Shanghai, China
Victor J. Baranowski Latham, NY
Emily J. Cooper Boston, MA
David Wotherspoon Vancouver, Canada
Jared M. Barrett Seattle, WA
Jessica Cox Washington, DC
Mark I. Bentley Irvine, CA
James Cueva Greensboro, NC
Damian Biondo Abington, PA
Arthur J. Cutillo New York, NY
Travis W. Bliss Wilmington, DE
Thomas W. Dekleva Newark, DE
Leonidas Boutsikaris Arlington, VA
Christopher E. Drabik Acton, MA
Dalesia Boyd Philadelphia, PA
Sarah Duda Chicago, IL
Justin K. Brask Beaverton, OR
Martha Enge Saint Paul, MN
Sharon M. Briggs Reston, VA
Benjamin E. Evans Irvine, CA
Jessica Brookhart-Knost Reno, NV
Valerie A. Fabbro Steubenville, OH
Nathaniel T. Browand New York, NY
Robert Fahr Little Rock, AR
Samuel A. Brown Chicago, IL
Alissa Faris Palo Alto, CA
Nicole Bulman Chicago, IL
Scott M. Flaherty Minneapolis, MN
GOVERNMENT Elvia Camayd Mayaguez, PR Chantal M. D’Apuzzo Monrovia, CA Abraham Granderson Washington, DC Philip Greene Washington, DC Melanye K. Johnson Silver Spring, MD Gina M. Lupino Wappingers Falls, NY Peter C. Pappas Washington, DC James P. Rieke Minneapolis, MN
JUNIOR
Fernando Alberdi Ann Arbor, MI
2009 annual meeting issue
Sarah Foley Dallas, TX
Brent Jacobs Davison, MI
Bryan Leitenberger Chicago, IL
Todd A. Ostomel Moraga, CA
Glenn J. Foulds East Palo Alto, CA
Christopher D. James Reston, VA
Cameron M. Luitjens Minneapolis, MN
Ross Panko Arlington, VA
Robert Frame Westborough, MA
John E. Johnson, III Charlotte, NC
Daniel S. Marks Washington, DC
Jonathan W. Parthum Alexandria, VA
Dara Glasser Arlington, VA
Steve Johnson Boise, ID
Cynthia L. Martin Vienna, VA
Kevin S. Parton Washington, DC
Wendy Gombert Preston, WA
Taffie Jones Chicago, IL
Mary A. Mashruwala Seattle, WA
Kevin J. Patariu Chicago, IL
Jessica Gorczynski Raleigh, NC
Kevin M. Jones Tomball, TX
Benjamin Matthew San Diego, CA
Mark Payne Washington, DC
Matthew Gordon Salt Lake City, UT
Lisa Kilday Washington, DC
Joseph D. Maxey Oklahoma City, OK
Rachel L. Pearlman New York, NY
Leslie T. Grab Winston-Salem, NC
David S. Kim Saint Louis, MO
Stephen P. McBride Mulburn, NJ
N. Meredith Porembski Madison, WI
Ryan Gum Houston, TX
Craig Kirsch Miami, FL
Brannon C. McKay Atlanta, GA
Erica Reed New York, NY
Vladimir Y. Gusev Oakland, CA
Timothy Kiser Baltimore, MD
Matthew Meuse Los Angeles, CA
Brandon D. Ross Rockville, MD
Nathan Hamstra Chicago, IL
Matthew T. Kitces Glen Allen, VA
Nathan Milakovich Washington, DC
Dusan Sarapa Chciago, IL
Mark A. Harper Troy, MI
Jacqueline Koch Washington, DC
Elizabeth E. Millard Saint Louis, MO
Bradley W. Scheer San Jose, CA
Courtney D. Heinle New York, NY
Sarah Koniewicz Minneapolis, MN
Pamela M. Miller Saint Louis, MO
Adam Schlosser Washington, DC
James M. Hennessee Phoenix, AZ
Yakov Korkhin Boston, MA
Gary L. Montle Nashville, TN
Jo Ann Schmidt Seattle, WA
Moses Heyward Boston, MA
Julia Kornilova Milwaukee, WI
Michelle A. Moran Waukesha, WI
Tiffany L. Schwartz Saint Louis, MO
Amy L. Hulina Corona, CA
Gene Lang Miami, FL
Francine B. Nesti Troy, MI
Jacob Scott Spokane, WA
Paul Hyun Cliffside Park, NJ
Blair Lanier Birmingham, AL
Jason Nickla Omaha, NE
Michael Seymour Barberton, OH
Patrick T. Igoe Philadelphia, PA
Nicholas Lanzatella Minneapolis, MN
Eric M. Nielsen Phoenix, AZ
Jaimin Shah Berwyn, PA
Marylauren Ilagan Houston, TX
Joshua P. Larsen Indianapolis, IN
Michael R. Nye Troy, MI
Shahnam Sharareh Lawrenceville, NJ
Leanne M. Innet Ocean Ridge, FL
Michael Lee Los Angeles, CA
J. Jeb Bacon Oblak San Francisco, CA
Smith Sirisakorn Alexandria, VA
2009 annual meeting issue
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Robert I. Solomon Richboro, PA
Sherry A. Womack Atlanta, GA
Eric M. Balicky Concord, MA
John D. Norton Brooklyn Center, MN
Bobby Soltani Longmont, CO
Hui-Ju Wu Wilmington, DE
Karin Bartels Gillette, NJ
Lakshmi Rajan Ossining, NY
Jason Somma Silver Spring, MD
Bradley J. Yops Newark, DE
Urmi Chattopadhyay Alexandria, VA
Peter H. Renteln San Ramon, CA
Yuko Soneoka Redwood City, CA
Michael V. Young, Sr. Reston, VA
Joseph Christison North Logan, UT
Paul M. Schramm South Jordan, UT
Joseph S. Spano Burlingame, CA
Zoran Z. Zdraveski Cambridge, MA
Marc Christophersen Alexandria, VA
Rolf-Dieter Seichter Gilford, NH
Carolin Spiegel Austin, TX
John Zerr Pittsburgh, PA
Daniel C. Crane Alexandria, VA
Andrea B. Sherk Raleigh, NC
Doina G. Ene Denville, NJ
George P. White Long Beach, CA
David A. Fazzolare Boston, MA
Paul E. Wiedeman Abbott Park, IL
Geoffrey S. Findlay Austin, TX
Na Xu Falls Church, VA
Scott Gilbert Seattle, WA
Zhiwei Zou Cleveland, OH
Adam Stevens Salt Lake City, UT Tara C. Stuart Atlanta, GA Mark Swanson Huntsville, AL Sean L. Sweeney Portland, ME Jonathan Tam West Hollywood, CA Nick Thornburg Moraga, CA Susan Tull Washington, DC Hermine Valizadeh Chicago, IL Bradley J. Van Pelt Chicago, IL Jason A. Walls Houston, TX Tiewei Wang Dallas, TX Matthew B. Weinstein Bethesda, MD Kevin M. Welch Hermosa Beach, CA Cameron W. Westin Washington, DC 20 
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PATENT AGENT Marek Alboszta Palo Alto, CA Mark A. Buese Gainesville, FL David J. Chang Mountain View, CA David J. Fenick Winston Salem, NC Stephen Holzen Washington, DC Brian Janowski Marquette, MI Ann Marie Mewherter New York, NY Carmen K. Robinson San Diego, CA Maeng-Ho Shin Washington, DC Gergely T. Zimanyi Emeryville, CA Marie J. Archer Alexandria, VA Juan C. Arias New York, NY
Qian Gu Falls Church, VA Sai On Clement Jiang Fullerton, CA Steven W. Johnston Houston, TX Tsuyoshi Kageyama Brisbane, CA Jessamine Lee Boston, MA Robin Lopez Orlando, FL Mark D. McBriar Clinton, NJ Christopher P. McNett Palo Alto, CA Peter J. Melsa Niles, MI Axel Nix Birmingham, MI
STUDENTS Dannon Allbee Brighton, MA Boston University School of Law Matthew Allen Holt, MI Michigan State University College of Law Dale E. Andersen, Jr. Orem, UT Bringham Young University Law School A. Mendie Archibong Germantown, MD George Washington University National Law Center Diane Artal New York, NY Yeshiva University Benjamin N. Cardozo School of Law 2009 annual meeting issue
Sarah Ballenger Hilton Head Island, SC John Marshall Law School BriTonya Banks Birmingham, AL Samford University Cumberland School of Law Todd Barney Jersey City, NJ Yeshiva University Benjamin N. Cardozo School of Law James Barrett East Brunswick, NJ Franklin Pierce Law Center George Beighley, Jr. Arlington, VA George Washington University National Law Center Nicholas Bianchi Lexington, VA Washington and Lee University School of Law Jeffrey Bisonett Portland, OR Willamette University College of Law R. Michelle Boldon State College, PA Penn State University School of Law Frank Bonito West Chester, PA Widener University School of Law S. James Boumil, III Chicago, IL University of Chicago Law School Michael Broms Springfield, IL Franklin Pierce Law Center Thomas J. Campbell Chicago, IL DePaul University College of Law
2009 annual meeting issue
David R. Campobenedetto Strongsville, OH Ohio Northern University Pettit College of Law
Benjamin Feldman New Orleans, LA Tuland University School of Law
Om Gulati Annandale, VA George Washington University National Law Center
Shih-Yo Shawn Cheng Mountain View, CA
Kiri Feldman Bethesda, MD George Washington University National Law Center
Kathryn Haertel Dayton, OH University of Dayton School of Law
Robert Copeland Huntington Beach, CA
Thomas Ficchi Staten Island, NY St. John’s University School of Law
Sarah Hegi Lubbock, TX Texas Tech University School of Law
Brian Corcoran Morgantown, WV West Virginia University College of Law
Elizabeth Flynn El Cerrito, CA University of California Hastings College of the Law
Steve Hickman Maricopa, AZ William Mitchell College of Law
Ryan D. Coyer Alexandria, VA George Washington University National Law Center
Adam C. Fowles Falls Church, VA George Mason University School of Law
John Hodge Watervliet, NY Albany Law School Union University
Jennie Croyle Arlington, VA American University Washington College of Law
Mickey France Cordova, TN University of Memphis
Rackham Hoke Cambridge, MA Harvard University Law School
Stephen Chong Concord, NH Franklin Pierce Law Center
Adam Daniels Trumbull, CT University of Connecticut School of Law Joseph De Frank Chicago, IL Chicago-Kent College of Law Illinois Institute of Technology George Desh Chicago, IL University of Chicago Law School Mark Donahey Arlington, VA George Mason University School of Law
Yang Gao West Hartford, CT University of Connecticut School of Law Andrew Gilbert Arlington, VA George Mason University School of Law Dallin Glenn Falls Church, VA George Mason University School of Law Peng Gong Chapel Hill, NC Campbell University
Neslihan I. Doran Boston, MA
Gabriel Gonzalez Houston, TX University of Houston Law Center
Charles Fang Washington, DC George Washington University National Law Center
David Green Ardsley, NY University of Miami School of Law
Chris Holly Oxford, MS University of Mississippi Law School Min Suk Huh Fairfax, VA George Washington University National Law Center Nicholas Jackson Arlington, VA University of Tennessee College of Law Romeao Jennings, III Washington, DC American University Washington College of Law Bryce Jones Norton, OH University of Akron C. Blake McDowell Law Center
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Richard Kamprath Dallas, TX Southern Methodist University Ryan Kennedy West Conshohocken, PA Villanova University School of Law Joshua Kershner New York, NY Yeshiva University Benjamin N. Cardozo School of Law Prati Khanduri Chicago, IL Chicago-Kent College of Law Eddie Kiessling Birmingham, AL Samford University Cumberland School of Law
Sang Nam Lee McLean, VA George Washington University National Law Center
Robert P. Mino Gainesville, FL University of Florida College of Law
Thaine Lennox-Gentle Littleton, CO University of Colorado Law School
Christopher R. O’Brien Alexandria, VA Brooklyn Law School
Shih Ching Li Rockville, MD University of Maryland School of Law Victor Lin Hartford, CT University of Connecticut School of Law Jesse London Ithaca, NY Cornell Law School
Jae Kim Lexington, VA Washington and Lee University School of Law
Angie Mah Washington, DC Georgetown University Law Center
Jungmo Kim Mclean, VA,Georgetown University Law Center
Vanessa Manolatou Los Angeles, CA Santa Clara University School of Law
Tara Klamrowski San Francisco, CA Golden Gate University School of Law Olufolajimi Kolawole Elkridge, MD Howard University School of Law Lacy Kolo Leesburg, VA George Washington University National Law Center Stephen Kunen Decatur, GA Emory University School of Law Patrick Lafferty Washington, DC The Catholic University of America School of Law
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Lorena Marciano Copley, OH University of Akron C. Blake McDowell Law Center Benjamin Maskell Arlington, VA George Mason University School of Law Richard McCarty Houston, TX University of Houston Law Center Bijou Mgbojikwe Alexandria, VA George Washington University National Law Center Erick J. Michel Chicago, IL Chicago-Kent College of Law Illinois Institute of Technology
Darryl Ong Redwood City, CA Santa Clara University School of Law Andrew Patrick Rockville, MD Georgetown University Law Center Lynda Pope Bellevue, WA University of Washington School of Law Kathleen M. Portman Ann Arbor, MI Notre Dame Law School Aaron Priest San Diego, CA University of San Diego School of Law Haiou Qin Philadelphia, PA Temple University School of Law Radu Radulescu West Orange, NJ Rutgers University Law School Vivek Ramachandran Washington, DC George Washington University National Law Center Wongrat Ratanaprayul Hartford, CT University of Connecticut School of Law Elizabeth Robbins New York, NY Yeshiva University Benjamin N. Cardozo School of Law
Rebecca Rush Boston, MA Boston University School of Law Christopher Ryan Chicago, IL John Marshall Law School Nazli Saka Cambridge, MA Suffolk University Law School Paul Schramm Englewood, CO University of Denver College of Law Loni Schutte Durham, NC Duke University School of Law Richard Seagraves Houston, TX University of Houston Law Center Leslie Shanley Bristol, CT University of Connecticut School of Law Ali Sharifzada Potomac, MD The Catholic University of America School of Law Corinna Sheret Washington, DC Georgetown University Law Center Domingos J. Silva Philadelphia, PA Temple University School of Law Honeah Sohail Randolph, NJ Brooklyn Law School Philip Soo Monrovia, CA Loyola Law School Michael Strocko New York, NY University of Miami School of Law
2009 annual meeting issue
Christine Sung Alexandria, VA The Catholic University of America School of Law
Marie Weiskopf Alexandria, VA The Catholic University of America School of Law
Paden Woodruff, IV Tallahassee, FL Florida State University College of Law
Corina Tanasa Arlington, VA George Washington University National Law Center
David Werner Lorton, VA George Mason University School of Law
Yanbin Xu Arlington, VA The Catholic University of America School of Law
Xin Tao Washington, DC Georgetown University Law Center
Kiko White New York, NY Yeshiva University Benjamin N. Cardozo School of Law
Johnathan Yazdani Houston, TX University of Houston Law Center
Caroline Teichner Chicago, IL Chicago-Kent College of Law Illinois Institute of Technology Max Vilenchik Oldwick, NJ Yeshiva University Benjamin N. Cardozo School of Law
Fischer William Hazlet, NJ Rutgers, S.I. Newhouse Center for Law & Justice Mark Williams Bristol, RI Roger Williams University School of Law
Syed Zaidi Lexington, MA Suffolk University Law School Yanling Zheng Washington, DC George Washington University National Law Center Alan Zulanas Chicago, IL John Marshall Law School
Robert Yeh San Diego, CA University of California at Berkeley School of Law Roy H. Yim Gainesville, FL Universty of Florida School of Law
AIPLA call
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.
2009 annual meeting issue
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news of members Jeffery J. Makeever has been named a member of Irish America magazine’s “Irish Legal 100.” Makeever is the chair of Reinhart Boerner Van Deuren’s Intellectual Property Practice and the managing shareholder of the firm’s Rockford office. Irish America magazine recognizes lawyers from around the country who share a passion for the law and pride in their heritage. Makeever has more than 15 years experience practicing before the United States Patent and Trademark Office and also previously worked as a design and research engineer in the aerospace industry. He serves a wide range of corporate and university clients in a variety of industries including aerospace, consumer products and components, industrial equipment, and consumer software. He frequently functions as a trusted advisor to senior management and as part of his client’s inhouse counsel team providing such services as forward planning and the training of engineering and marketing personnel. Ruth Lebed-Rofes, attorney at S.C. Johnson & Son, recently received the Paul A. Welter Award for Excellence in Trademark Law from William Mitchell College of Law and Merchant & Gould. The national award, named after Welter who was a 1964 graduate of William Mitchell and had a long and distinguished career in trademark law at Merchant & Gould, honors in-house trademark counsel for outstanding career accomplishments and service to the community. Lebed-Rofes has served as trademark counsel at S.C. Johnson for 19 years and is known as an expert in her field. She is also very active in the community, serving as chair of the Make a Wish Foundation of Wisconsin and as a board member of UNICEF. She received her JD from Washington University in St. Louis School of Law.
Brad Lane
Creative Arts (LCA) in recognition of the firm’s pro bono services to the arts sector. Mr. Lane was a member of the ad hoc committee that formed the firm’s pro bono program in 2000 under the leadership of Jerome Gilson, a shareholder and former managing partner at the firm.
Brinks was the first intellectual property law firm in Chicago to establish a formal pro bono program, and the firm has a long history of involvement with LCA. Shareholder William H. Frankel is chairperson of the firm’s Copyright Group and is LCA’s immediate past president. Prior to his service as president, Mr. Frankel was a board member at LCA. During Mr. Frankel’s tenure as president, LCA received a Joseph Jefferson Award Citation for its work with Chicago theatres. William Frankel Founded in 1972, Lawyers for the Creative Arts is a nonprofit organization that provides high-quality pro bono legal services in all areas of the arts to organizations and individuals in metropolitan Chicago and throughout Illinois and neighboring states.
Brad Lane, a trial attorney and chairperson of the Brinks Hofer Gilson & Lione’s pro bono program, recently accepted – on behalf of the firm – the “Distinguished Service for the Arts” award from Lawyers for the 24
aipla bulletin
2009 annual meeting issue
deceased members Robert H. Rines passed on November 1, 2009. Mr. Rines was a lawyer, composer, inventor and physicist whose discoveries led to sharper resolution in radar, sonar and ultrasound imaging. He was 87. Rines invented prototype radar and sonar technology that was later also incorporated in ultrasound imaging of internal organs. He donated the radar patent to the US government and gave the imaging patent to the rest of the world to use for free. Rines held more than 80 patents. The radar technology patent — developed while he was a student at Massachusetts Institute of Technology’s radiation laboratory and honed while serving as a US Signal Corps’ officer during WWII — formed the underlying technology used to guide Patriot missiles during the 1991 Gulf War and produce
early warning missile-detection systems and other sophisticated military hardware. He also wrote music for more than 10 Broadway and off-Broadway productions and shared an Emmy for his work on a piece about former New York City Mayor Fiorello LaGuardia. Born in Boston, Rines graduated from the MIT and received a law degree from Georgetown. He completed a doctorate thesis at National Chiao Tung University in Taiwan. He also is the founder of the Franklin Pierce Law Center in New Hampshire and the Academy of Applied Science. Rines used some of his inventions in attempts to prove the existence of the Loch Ness Monster, and claimed to have seen Nessie in 1972.
B oston ma | F t. L auderdale fl | H artford ct | M adison nj | N ew York ny | Newport Beach ca | P rovidence ri S tamford ct | W ashington dc | W est P alm B each fl | W ilmington de | L ondon uk | H ong K ong
2009 annual meeting issue
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future meetings calendar
For updated schedule, visit www.aipla.org.
2010 January 27 – 30
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Mid-Winter Institute, La Quinta Resort & Club, La Quinta, CA (703-415-0780)
March 10 – 12
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Global IP Practitioner Association Summit Gaylord National Hotel, National Harbor, MD
April 6
Design Day cosponsored by AIPLA, ABA-IPL and IPO, at the USPTO, Alexandria, VA
April 8 – 10
ABA-IPL Section Annual IP Conference (www.abanet.org/intelprop)
May 6 – 8
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Spring Meeting, New York Marriott Marquis, New York, NY (703-415-0780)
May 22 – 26
INTA Annual Meeting, Boston, MA (www.inta.org)
August 5 – 10
ABA-IPL Section Annual Meeting, Toronto, ON, Canada (www.abanet.org/intelprop)
September Date TBD FICPI 12th Open Forum, Munich, Germany (www.ficpi.org) September 12 – 14 IPO Annual Meeting, The Hyatt Regency, Atlanta, GA (www.ipo.org) October 1 – 6
26
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October 20
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Partnering in Patents XVII, Madison Auditorium at the USPTO Alexandria, VA (703-415-0780)
October 21 – 23
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)
2011 February 2 – 5
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Mid-Winter Institute, The Peabody Hotel, Orlando, FL
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)
May 12 – 14
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Spring Meeting, The Palace Hotel, San Francisco, CA
May 14 – 18
INTA Annual Meeting, San Francisco, CA (www.inta.org)
August 5 – 10
ABA-IPL Section Annual Meeting, Toronto, ON, Canada (www.abanet.org/intelprop)
September 11 – 13
IPO Annual Meeting, Los Angeles, CA (www.ipo.org)
AIPPI, 42nd World IP Congress, Paris, France (www.aippi.org)
2009 annual meeting issue
future meetings calendar
For updated schedule, visit www.aipla.org.
October 19
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Partnering in Patents XVIII, Madison Auditorium at the USPTO Alexandria, VA (703-415-0780)
August Dates TBD
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Patent Prosecution Boot Camp, Practical Patent Prosecution Training for New Lawyers (703-415-0780)
October 20-22
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Annual Meeting, Washington, DC (703-415-0780)
September 9 – 11
IPO Annual Meeting, San Antonio, TX (202-466-2396, www.ipo.org)
October 24
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Partnering in Patents XIX, Madison Auditorium at the USPTO Alexandria, VA (703-415-0780)
October 25-27
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Annual Meeting, Washington, DC (703-415-0780)
2012 January 23 – 25
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION 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)
May 5 – 9
INTA Annual Meeting, Washington, DC (www.inta.org)
May 10 – 12
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Spring Meeting, Hilton Austin, Austin, TX (703-415-0780)
July Dates TBD
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Patent Cooperation Treaty Seminar (703-415-0780)
2009 annual meeting issue
2013 January 30 – February 2
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Mid-Winter Institute, Tampa, FL (703-415-0780)
May 6 – 8
AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Spring Meeting, Seattle, WA (703-415-0780)
aipla bulletin
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PROFESSIONAL PATENT SEARCH SERVICES FOR LITIGATION AND PROSECUTION PURPOSES The Governmental administration, Danish Patent and Trademark Office, offers a wide range of technical patent search services. Our search services are based on the philosophy of delivering high quality and customized products to meet your – or your clients’ needs: - The customized patent searches are performed on quotation with state-of-art search tools, in worldwide patent and NPL databases. - We have an ISO 9001 certified quality control management system for all examination and search processes, ensuring the high quality level.
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www.dkpto.org/2009
pvs@dkpto.dk www.dkpto.org
At a leading edge of best practice Puhua & Associates a member firm of PRICEWATERHOUSECOOPERS, TAIWAN We support our clients through all stages of the IP cycle, from inception through procurement and exploitation to disposal. Our Services: IP Search & Patent Mapping/Analysis IP Prosecution & Maintenance Patent Invalidation Proceedings, and Trademark Opposition and Invalidation Proceedings IP Litigation Legal & Tax Advisory Related to IP Assignment, Licensing and Management Due Diligence IP Related Tax & Transfer Pricing Consultancy 23/F, No. 333, Section 1, Keelung Road, Taipei, Taiwan, R.O.C. Tel: +886-2-2729-6666 Ext.: 23850 Email: tim.wey@tw.pwc.com 28
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Fax: +886-2-8780-0342 http://www.pwc/tw 2009 annual meeting issue
2009 Annual Meeting 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)
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 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) LOUISIANA........................................................3.5
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)
2009 annual meeting issue
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)
2009 Partnering in Patents XVI Alexandria, VA • October 14, 2009 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)
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)
CLE
update
PENNSYLVANIA......................................16.0 (4.0) RHODE ISLAND......................................19.5 (5.0) S. CAROLINA......................................................... TENNESSEE.........................................17.0 (4.17) TEXAS...................................................16.25 (4.0) UTAH.......................................................16.0 (4.0) VERMONT...............................................16.3 (4.1) VIRGINIA..................................................16.0 (40) 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 parenthesis and is included in the total.
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 parenthesis and is included in the total.
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 parenthesis and is included in the total. aipla bulletin
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ALABAMA..........................................................7.8 ALASKA...........................................................7.75 ARIZONA.........................................................7.75 ARKANSAS.....................................................7.75 CALIFORNIA...................................................7.75 COLORADO......................................................8.0 CONNECTICUT................................................7.5 DELAWARE.......................................................9.3 FLORIDA.........................................................10.5 GEORGIA..........................................................7.7 IDAHO.............................................................7.75 ILLINOIS..........................................................7.75 INDIANA............................................................7.8 IOWA...............................................................7.75 KANSAS............................................................9.0 KENTUCKY.....................................................7.75
2009 Trademark Boot Camp Alexandria, VA • June 17, 2009 LOUISIANA......................................................7.75 MAINE.............................................................7.75 MINNESOTA....................................................7.75 MISSISSIPPI.....................................................7.8 MISSOURI.........................................................9.0 MONTANA.......................................................7.75 NEVADA............................................................7.5 NEW HAMPSHIRE..........................................7.75 NEW MEXICO.................................................7.75 NEW YORK.......................................................9.0 N. CAROLINA..................................................7.75 N. DAKOTA........................................................7.5 OHIO...............................................................7.75 OKLAHOMA......................................................9.5 OREGON.........................................................8.25 PENNSYLVANIA................................................7.5
RHODE ISLAND................................................9.0 S. CAROLINA..................................................7.75 TENNESSEE...................................................7.75 TEXAS...............................................................7.5 UTAH.................................................................7.5 VERMONT.......................................................7.75 VIRGINIA...........................................................8.0 WASHINGTON................................................7.75 W. VIRGINIA......................................................9.3 WISCONSIN......................................................9.0 WYOMING.......................................................7.75
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
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
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
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)
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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 parenthesis and is included in the total.
2009 annual meeting issue
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2009 annual meeting issue
copyright office affairs by: Wendi A. Maloney & Judith Nierman (photos below)
Copyright Office Adjusts Fees The Copyright Office amended its fees for copyright services on August 1, 2009. Thanks to cost-savings achieved through Office automation, some fees remained the same or decreased. Other fees–mostly for services requiring manual labor–increased. The Register of Copyrights submitted a report to Congress in March analyzing changes in costs arising from the reengineering of the Copyright Office in 2007 and the introduction last year of an electronic system for processing copyright applications. The report also takes into account general economic factors and the requirement in copyright law that fees be fair and equitable and support the objectives of the copyright system.
new fee structure inspires another 30 to 40 percent of filers to use eService, the total annual savings for filers and the government will be tremendous, and filers will get their registration certificates more quickly.” The waiting time to receive certificates is much shorter for eService filings compared with paper filings. As of October 2009, more than 70 percent of copyright applications arrived through eService. Other advantages of electronic filing–in addition to a lower filing fee and the fastest processing time–include the ability to track the status of claims online, pay by credit or debit card, and upload certain categories of registered works electronically.
For services for which costs remained constant The fee for filing a copyright application online or dropped since fees were last adjusted in July using the Copyright Office’s new electronic 2006, corresponding fees stayed the same or system, known as eService, remains $35. The were adjusted downward. For services for which report explains that the Office realizes substantial costs went up (specifically those requiring manual savings from eService as a result of not “having to work by staff) fees increased to offset rising process a paper form, manually enter and quality- costs. In addition to registrations filed on paper review data, [and] process a fee payment.” Fees for applications, services affected include document other filing options rose. The new fee for using fill- recordation and searches of records. in Form CO is $50, an increase of $5. The new fee for paper applications is $65, an increase of $20. “The Copyright Office has traditionally charged fees The report states that these fees reflect the Office’s that recover less than the full cost of registration,” recognition that electronic processing is more Peters explained. “It does so for two reasons: first, cost-effective than the processing of paper forms. to encourage participation in the copyright system “More than 50 percent of copyright claims are now as a way to provide the fullest possible record of being submitted through eService,” Register of copyrighted works for public use, and, second, Copyrights Marybeth Peters pointed out in a press to enhance the Library of Congress collections.” release at the time of the fee adjustment. “If the Each year, the Copyright Office typically forwards 2009 annual meeting issue
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to the Library’s collections more than a million deposit copies, including books, maps, music, and motion pictures.
In her statement, Peters cited the Copyright Office’s “history of recommending extension of full performance rights to sound recordings,” and she called the legislation under consideration For a complete list of adjusted fees, go to www. “long overdue.” She noted that the United States copyright.gov/docs/fees.html. is “probably the only industrialized country that does not recognize performance rights for sound recordings, including performances made by Licensing Division Introduces Online Search means of broadcast transmissions.” of Statements of Account The Licensing Division of the Copyright Office Opponents of the legislation argue that air play implemented online searching that the public can on radio stations amounts to free advertising for use to retrieve certain data from statements of performers, a fair exchange for the lack of royalty account filed by cable television operators under payments. They also say that radio stations, whose section 111 of the Copyright Act. The division will ad revenues have dropped recently, will suffer provide data beginning with the accounting period financial hardship or fold if forced to pay royalties. January–June 1992 to the present. The service, Supporters of the bill counter that a downturn in updated nightly, is accessible from the Copyright record sales has similarly hurt record labels and Office website at http://licensing.copyright.gov/ musicians, and they view the legislation as an search/. issue of fairness. For more information, visit www.copyright.gov/ licensing, contact the Licensing Division by email at licensing@loc.gov, or call (202) 707-8150.
The House Judiciary Committee is sponsoring a companion bill. To limit the legislation’s economic effects on radio stations, the committee approved an amended version of the bill in May 2009. The amended bill establishes a flat annual fee in lieu Register Supports Performance Rights Act of royalty payments for stations grossing less than At the request of the Senate Judiciary Committee, $1.25 million a year. Stations grossing less than Register of Copyrights Marybeth Peters submitted $100,000 a year, for example, would pay $500 a written statement in support of the Performance annually. In addition, the bill delays implementation Rights Act for an August 4, 2009, hearing. The of royalty payments by a year for larger stations committee heard live testimony from musician and by three years for those grossing less than $5 Sheila E. and other witnesses, including Internet million, and it grants an exemption for broadcasts and radio executives, the owner of a small record of religious services and for incidental uses of company, and a law professor. The hearing, titled sound recordings. The amended bill is awaiting “The Performance Rights Act and Parity Among action on the House floor. Music Delivery Platforms,” took place just before the Senate’s summer recess. Congress Moves to Reauthorize Satellite The Performance Rights Act proposes to require Television License over-the-air AM and FM radio stations to pay Two separate bills introduced in the House and royalties to performers whose sound recordings Senate judiciary committees in September 2009 of music they play. Under the Digital Performance propose to reauthorize the distant-signal license Right in Sound Recordings Act of 1995, contained in section 119 of the Copyright Act. webcasters, satellite radio providers, and cable The license will expire at the end of 2009 unless companies already pay such a royalty, but the law Congress reauthorizes it. Section 119 permits does not apply to over-the-air AM and FM radio satellite carriers to retransmit copyrighted works on stations. distant network station and superstation broadcast signals in exchange for payment of royalties set 34
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by the government. The House and Senate bills both reauthorize section 119 through December 31, 2014. Enacted in 1988 for an initial five-year term, the license has been renewed by Congress three times in the past. Among other measures, both bills include technical changes to modernize section 119 as well as section 111, which pertains to retransmission of copyrighted works by cable operators. For example, the bills acknowledge the recent digital television transition by replacing references in the licenses to analog signals with citations of digital signals and making adjustments to the “unserved household” definition. The bills also propose a new methodology for calculating royalty fees. The bills would permit cable operators to pay for the carriage of distant signals on a community-by-community basis to alleviate the problem of paying for distant signals not carried in a particular community. Noting that the current system “threatens to raise cable prices and disrupt cable service,” Rep. John Conyers (D-Mich.), chair of the House Judiciary Committee, stated, “This legislation alters the way royalty rates are calculated to restore certainty to the marketplace and make the compensation for copyrighted content more fair.” The Copyright Office submitted a report to Congress in June 2008 in which it recommended phasing out sections 111 and 119. “The cable and satellite industries are no longer nascent entities in need of government subsidies through a statutory licensing system,” the report states. “They have substantial market power and are able to negotiate private agreements with copyright owners for programming carried on distant broadcast signals.” Neither the House nor the Senate bill eliminates sections 111 or 119. Still, Sen. Patrick Leahy (DVt.), chair of the Senate Judiciary Committee, cited the Copyright Office’s report upon introducing the bill, stating, “The legislation we introduce today draws on the recommendations of the Copyright Office,” and he endorsed the goal of eventually phasing out the licenses.
requires the Copyright Office to issue a report, no later than 12 months after passage of the legislation, analyzing proposed mechanisms, methods, and recommendations for phasing out current statutory licensing requirements set forth under sections 111 and 119 as well as section 122 of the Copyright Act. Several provisions in the House bill are not included in the Senate bill, including language addressing multicasting, filing fees, audits, emergency preparation, and waiver provisions for Echostar. Conversely, besides requiring the report cited above, the Senate bill includes a provision allowing a satellite carrier to import distant network station signals when there is no local affiliate of that network in the local market. The differences between the bills are expected to be reconciled as they move through the legislative process. Register Finds Key Parts of Proposed Google Settlement at Odds with the Law In oral testimony before a September 10, 2009, House Judiciary Committee hearing entitled “Competition and Commerce in Digital Books,” Register of Copyrights Marybeth Peters stated that key parts of the Google Book Settlement “are fundamentally at odds with the law–they impinge on the exclusive rights granted to authors and other rights holders.” The settlement arose from a class-action lawsuit filed by authors and a subsequent suit filed by book publishers. The plaintiffs challenged Google’s systematic, wholesale scanning of entire books, access to which was arranged through contracts with the University of Michigan’s library and other research institutions. Google incorporated keywords from the scanned books into its search engine, and it displays “snippets,” or a few lines, from the books when online users search the keywords. Google maintains that these activities are fair use under the law. The parties reached a settlement in October 2008.
In her testimony, the Register stated that the settlement, as originally proposed by the parties, would allow Google to scan books into the indefinite To further this goal, the Senate version of the bill future and to “engage in a number of activities that 2009 annual meeting issue
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were not actually part of the lawsuit and that are indisputably acts of copyright infringement.” The Register said that the settlement is also “troubling” because it includes certain foreign works that have not been published in the United States but that are implicated because a US research library acquired a copy of them. The Register’s written testimony concentrated on the impact of the proposed settlement on US copyright law and policy in three areas.
inconsequential to whether the book is protected under copyright law. But the proposed settlement gives Google permission to commercially exploit an out-of-print work without obtaining, or attempting to obtain, the prior permission of the copyright owner, and releases Google from liability, including statutory damages. “In essence, the proposed settlement would give Google a license to infringe first and ask questions later,” wrote the Register.
In addition, with regard to out-of-print books, the Register said that the settlement would interfere First, the Register wrote that the settlement in the efforts of Congress to address the issue of encroaches on Congress’s prerogative to legislate orphan works, which are those works for which the copyright policy by allowing what amounts to a copyright owner cannot be identified or located. judicial compulsory license for one entity. The Not all out-of-print books are orphan works, the settlement as proposed includes more than the 7 Register noted. A work missing from the Book million books originally at issue in the underlying Rights Registry to be formed under the settlement lawsuits: it would include all works that were could be deemed an orphan work, when in fact published (and for US works, registered in the the copyright owners of the book might be easy Copyright Office) by January 5, 2009. It would not to locate but absent from the registry by choice only grant Google the right to “scan entire libraries, or for other reasons. The Register strongly holds for commercial gain, into the indefinite future,” but that, with respect to orphan works, Google should it would also permit it to engage in new commercial “conduct itself according to the same options activities, including online display of books and available to other users of copyrighted works.” sale of subscription products—activities that were not at issue in the lawsuits and that were never The third area of concern addressed by the before the court. The practical effect would create Register was the automatic inclusion of foreign for Google a private structure that is very similar to works in the proposed settlement, even when a compulsory license. their copyright owners have not taken steps to enter the US market. She said that foreign rights “As a matter of copyright policy, courts should be holders should not “be swept into a class action reluctant to create or endorse settlements that settlement unknowingly, and they should retain come so close to encroaching on the legislative exclusive control of their US markets.” Several function,” the Register stated. “Congress generally foreign governments have raised questions about adopts compulsory licenses only reluctantly in the the proposed settlement, and the governments of face of a failure of the marketplace, after open France and Germany have filed objections with and public deliberations that involve all affected the US District Court in New York. In the filings, stakeholders and after ensuring that they are they raise questions about the compatibility of the appropriately tailored.” proposed settlement with US treaty obligations, among other issues. Next, Peters addressed the issue of why provisions of the settlement compromise the legal rights of In addition to providing congressional testimony, copyright owners, including those who own what the Office worked closely with the Department the settlement characterizes as not commercially of Justice and other agencies on a statement of available, that is, out-of-print, books. She stated, interest filed with the court by the Department of “The Copyright Office strongly objects to the Justice on behalf of the United States government treatment of out-of-print works under the proposed on September 18, 2009. In the statement, the settlement.” Whether a book is out of print is Justice Department raised questions of copyright 36
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law, class action (rule 23 law), and antitrust law and asked the court to reject the settlement as drafted. Under the approval of the presiding judge, a fairness hearing scheduled for October 7, 2009, was rescheduled to allow the parties to work on revisions due in mid-November. A new timetable announcing deadlines for the public comment period and a date for the rescheduled fairness hearing will be issued by the court accordingly. To read the Register’s testimony, go to www. copyright.gov/statements.html. The US statement of interest is available at www.justice.gov/atr/ cases/f250100/250180.pdf. Office Proposes to Require Electronic Registration for Deposit Account Holders The Copyright Office has proposed to require that all applications paid for by deposit accounts must be filed electronically (74 FR 33930). Deposit account holders make advance payments into their accounts and then charge copyright fees to the account instead of sending separate payments for every service request. Until now, deposit account holders have been able to file an application for registration in whatever manner they chose.
the deposit account holder, retrieve and reprocess the application, or convert data submitted on a paper application to digital format. Moreover, the remitter will benefit from the efficiency and lower cost of electronic filing as well as from a possible earlier effective date of registration. Deposit account holders will not be required to open a new account but only to register and create an account with eService and to link the existing deposit account to the newly created eService account. In addition to requesting comments on the proposal to require electronic registration when payment is made by deposit account, the Office also requested comment from current deposit account holders on the continued need for these accounts. Comments were due on August 28, 2009. For further information, go to the Copyright Office website at www.copyright.gov. Office Proposes to Amend Mandatory Deposit Regulations on Electronic Works The Copyright Office proposed to amend its regulations governing mandatory deposit of electronic works published in the United States and available only online (74 FR 48191). The Library of Congress is working to collect online works in addition to hard-copy ones and has determined that mandatory deposit can serve the function of building the collections in the online world as well as in the print environment.
However, the Office finds that many deposit accounts do not hold sufficient funds to pay for the service request. When a deposit account holder files on paper and the account contains insufficient funds, the Office must suspend processing to notify the account holder and store the application and associated deposit copies until funds are received. Processing time is thus doubled, and costs to the The amendments would establish that works Office increase. available only online—including, for example, monographs, serials, sound recordings, automated The proposed rule change addresses these databases, and all other categories of electronic concerns and provides benefits to the remitter as works—are exempt from mandatory deposit well. When applications are filed using eService, until the Copyright Office identifies a particular the Copyright Office’s online registration system, category as being subject to demand, at which fees are collected at the time of filing. eService time it may issue demands for deposit of copies or will not process an application unless the deposit phonorecords of these works. The Library, which account contains adequate funds. When payment says that more than 5,000 scholarly journals are is guaranteed at the time of the submission of the available solely online, intends to begin collecting application, the costs to the Office to process the electronic serials before expanding its collection application are significantly reduced because the to other categories of works. A demand would staff does not have to suspend the application, notify apply to all subsequent issues of a serial title. For 2009 annual meeting issue
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purposes of the regulation, an electronic serial is an electronic work published in the United States and available only online, issued or intended to be issued in successive parts bearing numerical or chronological designations, and intended to be continued indefinitely. This class includes periodicals, newspapers, annuals, and the journals, proceedings, and transactions of societies. The proposed amendments would require a single copy or phonorecord of a demanded work but would allow simultaneous access by two onsite users, thus achieving the statute’s goal of providing two copies of a published work for the Library of Congress. The amendments would also set forth the process for issuing and responding to a demand for deposit; amend the definition of a complete copy of a work for purposes of mandatory deposit of online-only works to include the metadata and formatting codes that are a part of a unit of onlineonly works; and establish new best-edition criteria for electronic serials available only online. The Office sought comment on whether the copyright owner or the owner of the exclusive right of publication in an online-only work should be required to notify the Library when a new onlineonly work is published in the United States. The Office also sought comment on whether such a requirement as a condition of the qualified exemption from mandatory deposit is within the legal authority of the Office under 17 U.S.C. 407 and whether such a notice is even necessary.
circumstances. The most important are cases where a copyright owner is about to file a copyright infringement suit. Such a suit cannot be filed until the copyright has been registered. Claims filed online, which are processed relatively quickly and efficiently, now constitute well over half of all claims received each week. However, the large volume of paper applications received prior to the release of eService in July 2008 has resulted in a significantly increased processing time for paper applications. As a consequence, the Office has concluded that when applicants need expedited registration for purposes of copyright infringement litigation, it is unfair to impose the special handling fee of $760 for claims that have been pending for more than six months. An interim regulation (74 FR 39900) published on August 10, 2009, states that the Office will waive the charge for special handling temporarily in cases where the applicant satisfies the Office that a copyright infringement suit is about to be filed and the application has been pending for more than six months with no action by the Copyright Office. Then the associated claim will be converted to expedited-handling status, and the special handling fee will be waived. The interim regulation will remain effective until July 1, 2011. For further information, go to the Copyright Office website at www.copyright.gov.
Notice of Inquiry Published on Facilitating Access to Copyrighted Works for the Blind The United States Copyright Office and the United States Patent and Trademark Office sought comment on possible solutions to enhance the Comments on these proposed revisions were accessibility of copyrighted works for the benefit due August 31, 2009. Reply comments were due of the blind and other persons with disabilities September 28, 2009. For further information, go (74 FR 52507). Comment was requested to the Copyright Office website at www.copyright. specifically on the objectives and text of a draft gov. treaty prepared under the auspices of the World Blind Union and proposed formally at the May 2009 session of the World Intellectual Property Special Handling Fee Suspended in Certain Organization’s Standing Committee on Copyright Cases and Related Rights. Interested parties were invited Special handling, a service that provides to submit comments on the topics outlined in the expedited processing of an application for supplementary information section of the Federal copyright registration, is offered only under certain Register notice. Initial comments were due 38
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The Office received 25 proposed exemptions for consideration, including, for example, those that would allow extraction of clips from DVDs for use in documentary films or in educational Hearings Held on Technological Measures or noncommercial settings. In consultation with the assistant secretary for communications Barring Access to Copyrighted Works The Copyright Office heard testimony on May 1, and information at the US Department of 2009, in Palo Alto, California, and on May 6-8, Commerce, the Register of Copyrights will 2009, in Washington, D.C., for a rulemaking make a recommendation to the Librarian of proceeding under section 1201 of the Copyright Congress based on the record in the rulemaking Act. Section 1201 prohibits circumvention of proceeding. The Librarian will decide on any technological measures that protect access exemptions this fall, and any issued will last for to copyrighted works. The Digital Millennium the ensuing three-year period. Copyright Act of 1998 requires the Copyright Office to conduct such a rulemaking every three years to determine whether prohibitions on circumvention technology adversely affect users in their ability to make noninfringing uses of copyrighted works. November 13, 2009. Reply comments were due December 4, 2009.
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daily report At the 2009 Annual Meeting, in partnership with Managing IP magazine, AIPLA published an official conference newspaper, the AIPLA Daily Report, which provided reading that many attendees found to be both necessary and enjoyable. The 2009 Daily Report combined the journalistic skills of Managing IP’s global editorial team with AIPLA senior staff expertise. A new issue of the Daily Report greeted conference attendees bright and early each morning of the three-day conference. In addition to substantive articles covering hot IP issues, the Daily Report provided attendees with information pertinent to the Annual Meeting schedule and opportunities. Specifically, the AIPLA Daily Report included in-depth interviews with key attendees, round-ups from the previous day’s keynote speeches and sessions, official AIPLA announcements, articles on pressing IP issues, delegate opinions, news from around the meeting, and coverage of receptions and other social events. To read the 2009 editions of the AIPLA Daily Report, click here: www.aipla.org/html/annual/2009/ The overwhelmingly positive feedback from members and guests on the Daily Report means that AIPLA will continue this special publication at the 2010 Annual Meeting, October 21 - 24 in Washington, DC.
Advertising Opportunities Available! There are several advertising opportunities available in the AIPLA Daily Report. As the only official daily source of information at the Annual Meeting, the Daily Report will be the must-read publication for the attendees of the 2010 AIPLA Annual Meeting. As with the 2009 publication, there will be three editions: one Thursday, one Friday and one Saturday. The Daily Report will be distributed extensively throughout the conference venue. The Daily Report will also be available on the AIPLA and Managing IP websites. Advertising in the Daily Report will provide targeted, repeat exposure to the influential Annual Meeting audience and support this new initiative. For further information please contact Sara Barker, AIPLA’s Mangager of Marketing & Communications at sbarker@aipla.org. 40
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thank you AIPLA 2009 annual meeting sponsors! platinum Finnegan Henderson Farabow Garrett & Dunner, LLP Morrison & Foerster Sponsor: Friday Night Dessert Reception & Sponsor: Young Lawyers Committee Reception Diversity In IP Law Breakfast Partial Sponsor: Opening Night Reception & Friday Dinner Entertainment Sughrue Mion, PLLC Sponsor: Friday Pre-Dinner Reception
silver Edwards Angell Palmer & Dodge Partial Sponsor: Opening Night Reception
NERA Economic Consulting Partial Sponsor: Friday Dinner Entertainment
Fitzpatrick Cella Harper & Scinto Sponsor: Cyber CafĂŠ
Thomson West Sponsor: Post Meeting CD-Rom
Foley Hoag Partial Sponsor: Opening Night Reception
Vinson & Elkins, LLP Partial Sponsor: Friday Dinner Entertainment
bronze Bingham McCutchen Sponsor: Friday AM Break
Howrey, LLP Sponsor: Women in IP Law Breakfast
CPA North America Partial Sponsor: Opening Night Reception
McAndrews Held & Malloy, Ltd. Sponsor: New Member/First-Time Attendee Reception
Crowell & Moring, LLP Sponsor: Thursday AM Break Dickstein Shapiro, LLP Partial Sponsor: Annual Meeting Journal DLA Piper, LLP Partial Sponsor: Opening Night Reception Express Search, Inc. Partial Sponsor: Attendee Gift Hogan & Hartson, LLP Sponsor: AIPLA Technology Center
Morgan & Finnegan, LLP Sponsor: Friday Lunch Reception Pirkey Barber, LLP Partial Sponsor: Opening Night Reception Schwegman Lundberg & Woessner, PA Sponsor: Thursday Lunch Reception Thomson Reuters, Scientific Partial Sponsor: Annual Meeting Journal
AIPLA 2009 annual meeting sponsors (cont’d) crystal sponsor Jamison IP Services Sponsor: Solo Practitioners Reception
pearl sponsors BAR/BRI Patent Bar Review Sponsor: Job Fair Hospitality Room
Henderson Legal Services Partial Sponsor: Meeting Signage
George Mason University Law School, IPLS Sponsor: Job Fair Reception
Software Analysis & Forensic Engineering Partial Sponsor: Meeting Signage
AIPLA 2009 Alan J. Kasper, Incoming President, AIPLA
annual meeting leadership
Passing of the President’s Gavel from Teresa Stanek Rea to Alan J. Kasper
Teresa Stanek Rea, Outgoing President, AIPLA
David Hill, Incoming President-Elect
J. Michael Martinez de Andino, Program Chair
Q. Todd Dickinson, AIPLA Executive Director
2009 annual meeting photographs by: Richard Burgess
Passing of the Medallion
a few speakers
Alyson Barker
Honorable Alison Brimelow
Jeffrey Neuman
President, European Patent Office
Chen Wang
Ying Tuo Buckmaster De Wolf
Michael Lang Margie Milam
Honorable David Kappos
Director, USPTO
Honorable Randall R. Rader
Alan J. Kasper
Judge, US Court of Appeals for the Federal Circuit
a few more speakers Honorable Paul R. Michel
Chief Judge, US Court of Appeals for the Federal Circuit
Honorable Ronald M. Whyte
District Judge, Northern District of California
Honorable T. John Ward
District Judge, Eastern District of Texas
Honorable Kathleen O’Malley Michael K. Kirk
District Judge, Northern District of Ohio
Susan Hightower Raymond Van Dyke
Harrie Samaras
Philip T. Petti
a few more speakers Andrew Stein
Chris Schlicht
Georgann Grunebach
Grant Lynds
Joel Miller Hathaway Russell
Perry Saidman
Valerie L. Calloway Sylvie Strobel
Women in IP Law Breakfast
AIPL A awardees AIPLA salutes the outstanding contributions of dedicated USPTO and Copyright Office Employees
Copyright Awardees: Theodora Agee, Chad Becker, Tymica Carroll, Joanna Corwin, Lauren Fasceski, Denise Garrett, Mary Svrjcek
Alan J. Kasper presenting the awards
USPTO Awardees: Leonardo Andujar, Stephan Avila, Katherine A. Bareford, Betsy L. Deppe, George R. Evanisko, Bryon P. Gehman, Melissa Koval, Benjamin E. Lanier, Thomas E. Lazo, Jason Lott, Susanna Meinecke Diaz, Margaret G. Moore, Kathleen M. Mosser, Burt Mullins, Jerry E. Redman, Andrew Schechter
AIPL A student awards, mentor of the year, & AIPL A project award
2009 Robert C. Watson Award Recipient, Aileen McGill, for her paper entitled: “Compulsory Licensing of Patented Pharmaceuticals: Why a WTO Administrative Body Should Determine What Constitutes a Public Health Crisis Under the Doha Declaration”
2009 Past President’s Award Recipient, Matthew Avery, for his paper entitled: “Continuing Abuse of the Hatch-Waxman Act by Pharmaceutical Patent Holders and the Failure of the 2003 Amendments” Inaugural Mentor of the Year Award presented to J. Allison Strickland
2009 Project Award Winners Manny Schecter and Bradley Forrest AIPLEF presented their scholarship recipients 2009 Sydney B. Williams Scholarship Award Recipients: (from left to right) Mark Carter, Jenny Shum, Maria Lapetina
In recognition of outstanding service to the American Intellectual Property Law Association for their hard work and dedication to the US Patent and Trademark Office Statistics Project. Award also presented to Bradley Forrest (not pictured)
AIPL A excellence award 2009 Excellence Award Winner,
Tom Arnold Recognizing extraordinary leadership and public service in the promotion of intellectual property law, both in the United States and around the world, as attorney, scholar, and leader of the American Intellectual Property Law Association, during a distinguished career which was marked by intellect, integrity, and an unwavering commitment to the rule of law.
Tom Arnold, AIPLA President 1978-1979
Gordon Arnold accepting the 2009 Excellence Award on behalf of the Arnold Family
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 AIPLA members played Nintendo Wii Sports and classic arcade games including Space Invaders, Pac-Man, Dig Dug and Asteroids at the Opening Night Reception
AIPLA would like to thank the sponsors of the opening night reception: - Bingham McCutchen LLP - Edwards Angell Palmer & Dodge - Inovia - Kenyon & Kenyon, LLP - Morrison Foerster, LLP
friday dinner & enter tainment New York Swing!
The entertainment included a tribute to Frank Sinatra by NYC Swing
AIPLA would like to thank the sponsor of the dinner & entertainment: Sughrue Mion, PLLC
desser t reception
AIPLA would like to thank the sponsor of the Friday night dessert reception: Finnegan Henderson Farabow Garrett & Dunner, LLP
AIPLA
2010 mid-winter institute
January 27–30, 2010
La Quinta Resort and Club • La Quinta, CA
Efficient and Effective: IP Counsel’s Quest
Efficiency in IP Management, Defense, Assertion and Acquisition: Finding Opportunities, Managing Risk and Preserving Value
Global changes in the worldwide economy, laws and governments, provide IP practitioners with the opportunity to be innovative in providing efficiency in IP management, defense, assertion and acquisition. The agenda for the Mid-Winter Institute of the AIPLA, has been developed with the influence and guidance of all AIPLA Committees to assist and provide our members with information, ideas and directions on seeking and understanding opportunities for managing risk, preserving value of IP and identifying and implementing practice efficiencies as global changes continue to take place. The Mid-Winter Institute will provide worldwide updates of key developments in the courts, regulations, laws and patent offices as all aspects of IP practice continue to change. The Mid-Winter Institute considers the following current trends: • Companies are maintaining IP portfolios on tighter • budgets and with innovative approaches. • Outside counsel are continuing to face many requests for proposal and restructured arrangements from long term clients, as both try to find the right partners to see their way through changing times. • As the global monetary system improves, acquisitions will increase as the healthiest investors attempt to take advantage of historic buying opportunities where IP assets are a key component. • Many are working to maximize the value of their own or newly acquired assets through licensing and efficient litigation while managing the challenges of defending their own activities against their competitors and other IP holders. The Mid-Winter Institute agenda and the new TABLE TALK, Luncheon Program has been developed to compliment proposed AIPLA Committee meetings that may take place in conjunction with each program Track and the Luncheon.
The Mid-Winter Institute will address many issues including the following: • Building Strong IP on a Smaller Budget • Peering Into the 2010 Crystal Ball: What Awaits the IP Practioner? • New Luncheon Program: TABLE TALK – participants will have the opportunity to have interactive discussions with other members on a selection of topics of interest during the luncheon as facilitated by the AIPLA Committees • Buying and Selling IP • Fact or Fiction? How To Really Make Patent Prosecution More Efficient • IP Licensing • The Ethical Minefields of Arbitration and Mediation – What Every Lawyer Needs to Know • To Buy or Not To Buy: Acquired Patents as Litigation Tools • Leveraging Value From Marks and Copyrights • Making and Selling Confidential Information • Enforcing Efficiently – Where To Litigate in the US and Europe • Ethics and Loss Prevention
Reservation Information Call in your reservation and ask for the AIPLA Mid-Winter Institute rate - $305.00 (single/ double) (the resort fee of $10.00 plus tax per room, per day has been waived). For reservations, please call 1-800-598-3828. For sponsorship information, please contact Lindsay Nalevanko at 703.412.4357 lnalevanko@aipla.org
If you can’t join us in person for the meeting, portions of the Mid-Winter Institute will be available via live web streaming.
committee annual meeting october 15-17, 2009
reports
Amicus
Patrick J. Coyne, Chair (left photo) Edward Robert Reines, Vice-Chair (right photo) ___________________________________________
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micus participation is a critical component of the AIPLA’s public policy efforts. We look forward to another productive year, advancing our members’ interests through effective advocacy. We now have in place a number of initiatives to increase early awareness of amicus opportunities, to focus our amicus efforts, and to extend our lead time in responding to them. We will work through the coming year to refine these tools and to focus on opportunities that directly enhance or support the Association’s policy initiatives.
Committee’s progress on various substantive issues and to solicit from the various substantive law committees their views on cases that are being considered as well as on new cases in which AIPLA may wish to consider participating. The Amicus Committee is currently designating members of the Committee to serve as liaisons to the various substantive law committees, and soliciting the substantive law committees to designate members to serve as liaisons to the Amicus Committee.
We have undertaken a number of initiatives this past year to address concerns about having sufficient leadtime to participate in amicus opportunities. These efforts—involving five separate initiatives—have been broadly effective and we continue to work diligently to enhance opportunities for AIPLA participation.
Federal Circuit Rule Change On February 6, 2009, the Federal Circuit issued changes to Federal Circuit Rules 35 and 40. Specifically, the time for filing a petition for rehearing has been revised to 30 days (from 14) after the entry of judgment and, in cases in which the United States is a party, 45 days after entry of judgment. An amicus brief filed in connection with a petition for rehearing must now be filed within 14 calendar days (from 7) of the date of filing of the petition or response that the amicus curiae supports. These changes provide AIPLA critical additional time within which to consider participating in cases that are before the Federal Circuit on a petition for rehearing and to file a substantive brief with the Court. Provided AIPLA is aware of the case prior to the filing of the petition for rehearing, these rule changes will give AIPLA up to an additional three weeks of time
Amicus Liaison Group This group includes liaison members appointed by various of the 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 2009 annual meeting issue
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to consider and draft an appropriate amicus brief. The rule change does not affect the time for filing amicus briefs on the merits.
network continues to grow and we anticipate increased coordination among various bar groups as this year progresses and well into the future.
Accelerate Consideration of Amicus Opportunities We have attempted to accelerate the time period for consideration of amicus participation by attempting to identify cases early in the review process, even before a petition for rehearing or petition for writ of certiorari is filed. The Amicus Committee is reviewing a substantial number of cases, many of them prior to the time when petitions for rehearing or a petition for writ of certiorari are actually filed. The number of cases reviewed and submitted for a formal vote of the Committee since last October is substantially larger than the number we have reviewed during comparable time periods in prior years. Although this process has placed increased burdens on the Amicus Committee members, it has expanded greatly the time available for consultation with the substantive law committees, for formulating our substantive positions on various issues, and for preparing briefs. In many instances, we are now able to consult with the substantive law committee(s) prior to making a recommendation to the Board and present the views of both the Amicus and substantive law committee(s) to the Board.
Amicus Filings (2008-2009 Program Year) In Re Bose (2008-1448) is an appeal to the Federal Circuit from a decision of the Trademark Trial and Appeal Board (“TTAB”) cancelling a registration on grounds of fraud. Bose renewed its registration, leaving among the goods and services listed a good that it was no longer selling as a retail product. Bose asserts that its use of the mark in conjunction with warranty service and repair of the product constitutes use in interstate commerce. The TTAB held not only that it is not used in commerce but also that reliance on this interpretation, supported by the requisite affidavit of use, is fraudulent. AIPLA filed an amicus brief on October 11, 2008, at the panel stage and oral argument was heard on May 6, 2009. AIPLA’s brief urges that the Court set the standard for fraud at the TTAB to be knowledge or reckless disregard of the truth. On August 31, 2009, the Federal Circuit issued a panel decision reversing and remanding the case on the grounds that there was insufficient evidence of intent to support a judgment of fraud.
Focus In order to make these efforts more productive, the Amicus Committee is aligning its focus with the Board’s other public policy outreach programs. 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 56
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Haulapai Tribe v. Grand Canyon West (2009-1012) is an appeal to the Federal Circuit from a decision of the TTAB. The Grand Canyon West case involves the trademark “GRAND CANYON WEST” for use in conjunction with air transportation services, an activity that is regulated and requires a license from the appropriate regulatory authorities. The TTAB held that the applicant committed fraud on the Trademark Office in claiming first use at a time when such use would have been unlicensed and canceled the registrant’s registration for the mark. This case raises issues similar to those in the Bose case in which the Association participated as amicus last year. Bill Barber drafted a brief on behalf of AIPLA articulating the same positions that the Association had previously taken in the Bose case. The brief was filed on December 4, 2008. The Appellant filed a motion to withdraw the appeal and the order granting the motion was issued as a mandate on July 29, 2009. Prometheus v. Mayo Labs (2008-1403) is an appeal to the US Court of Appeals for the Federal Circuit from a decision of the US District Court for the Southern District of California. The Prometheus case is pending at the pre-panel decision level at the Federal Circuit. The case was originally scheduled to be heard last 2009 annual meeting issue
year and the Court continued the briefing schedule in Prometheus in view of the Court’s impending en banc decision in In re Bilski. After the Bilski decision was issued last year, the Court reset the briefing schedule in Prometheus. In Prometheus, the district court held that the intermediate metabolite that was formed by ingesting a drug is a “naturally occurring” substance and, therefore, unpatentable. At the panel stage, we are, as is the panel, bound by the Court’s en banc ruling in In re Bilski. The Association’s brief, which was drafted by Ed Reines, articulates why the invention at issue in Prometheus is patentable under the standard articulated by the Court in Bilski. On September 16, 2009, the Federal Circuit issued a panel decision holding that the claims at issue constitute statutory subject matter. The mandate was issued on October 23, 2009. The Mayo Collective has filed a petition for a writ of certiorari. Cardiac Pacemakers v. St. Jude (2007-1296) involves whether, under Section 271(f), supply of material abroad for use in a patented process infringes a method claim. This issue was raised previously in the Union Carbide v. Shell case. The Association participated as amicus in the Union Carbide case but the case was resolved by settlement prior to a decision on the merits. The same issue is raised again in Cardiac Pacemakers. In the Union Carbide case, AIPLA filed jointly with the Federal Circuit Bar Association an amicus brief articulating why Section 271(f) should not operate to limit damages in the manner the court below ruled that it did. The Associations again cooperated in preparation of a brief in the Cardiac Pacemakers case on the petition for rehearing, filed January 30, 2009, articulating the positions that they had espoused in the prior Union Carbide appeal. On August 19, 2009, the Federal Circuit held en banc that the district court erred in holding that Section 271(f) (inducement and contributory infringement) applies to method claims. A petition for a writ of certiorari was filed on November 17, 2009. Bilski v. Kappos (2008-964). On January 28, 2009, Bilski filed a petition for a writ of certiorari with the Supreme Court asking the Court to modify the Federal Circuit’s en banc decision in the In re Bilski case, establishing the “machine-or-transformation test” as the standard for subject matter patentability of a process claim. AIPLA previously filed an amicus brief in the Bilski case when it was pending at the Court of Appeals for the Federal Circuit. The Federal Circuit, however, declined to follow AIPLA’s recommendations, 2009 annual meeting issue
and AIPLA has submitted an amicus brief pursuing this issue further and supporting Bilski’s petition for a writ of certiorari. AIPLA’s brief, authored by Bill West, was filed on March 2, 2009. The Solicitor filed a brief in opposition to the petition on May 1, 2009, for the United States, opposing the petition. The Supreme Court granted the cert. petition and, on August 6, 2009, AIPLA filed an amicus brief on the merits. AIPLA’s brief urges the Court to reject the Federal Circuit’s “machine or transformation” test as being based on dicta in Flook, Benson, and Graham and, instead, adopt a test based on the concrete, useful application of a process. The case was argued to the Supreme Court on Monday, November 9, 2009, and has been submitted for decision. Reed Elsevier, Inc. v. Muchnick (2008-103). This case follows the prior Supreme Court decision in Tasini v. New York Times, in which the Court held that freelance journalists had a cause of action for copyright infringement against the Times for the electronic reproduction and distribution of their works that originally appeared in the print edition of the Times. The district court certified a class of authors and the parties reached a settlement of the claims, including works that were registered as well as unregistered works. The Second Circuit reversed, over a vigorous dissent, the panel majority holding that the district court lacks jurisdiction to certify a class including authors who have failed to register their works. AIPLA submitted an amicus brief on June 8, 2009, authored by Amy Cahill, supporting the outcome that registration is not a jurisdictional prerequisite. The case was argued to the Supreme Court on October 7, 2009, and has been submitted for decision. Tafas v. Kappos (2008-1352). Tafas and GSK filed challenges to the USPTO’s rulemaking that would have established additional limitations on continuation practice and required additional disclosure of information to the USPTO. The US District Court for the Eastern District of Virginia invalidated the rules and the Federal Circuit panel majority reversed. The Court agreed to rehear the case en banc and vacated the panel majority’s decision. The parties have agreed to continue the briefing schedule and the case is not currently scheduled for oral argument. AIPLA submitted an amicus brief, authored by Jerry Sellinger, on June 17, 2009, arguing that the panel applied the incorrect test in determining whether the USPTO has authority to promulgate the new rules. The USPTO has now withdrawn the proposed rules, and the case has been dismissed. Although the panel aipla bulletin
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majority decision was vacated, the district court’s decision was not. Shire v. Sandoz (2009-1180). Drug maker, Shire, has been involved in litigations against a series of generic defendants involving the same patent. The claims were construed in a first case by the US District Court for the District of Delaware and subsequently by the US District Court for the District of Maryland. The Maryland court declined to adopt the Delaware court’s construction. The parties settled both the Delaware and Maryland cases. This appeal arises from a third case in Colorado. The Colorado court has declined to follow either of the prior two claim construction rulings and certified to the Federal Circuit the issue whether res judicata applies to an interlocutory claim construction order that has not been reviewed on appeal. On July 22, 2009, AIPLA submitted an amicus brief, authored by Sharon Israel, arguing that res judicata should not be applied to either of the prior judgments in this case. Rather, the brief urges the court to adopt a flexible approach to issue preclusion, analyzing the pertinent factors on a caseby-case basis. The parties have settled and the case was dismissed on October 15, 2009. Agilent Technologies v. Affymetrix (2008-1466). This case involves the construction of claims involved in interference proceedings. The panel majority held that the application supported the counts of the interference. On August 19, 2009, AIPLA submitted an amicus brief, authored by Charles Gholz, arguing that the panel decision incorrectly relies upon the specification of the copied patent to determine written description issues. The brief argues that the panel relied upon an obsolete rule dating back to the period before validity and priority were merged into a single interference proceeding. The Court has denied the petition for rehearing. Bayer v. Barr (2008-1282). This case raises issues of the application of the “obvious to try” standard in determining obviousness under KSR. The district court found that the art neither taught toward nor away from the invention but, nonetheless, held that
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the invention would have been obvious to try. The Federal Circuit panel majority affirmed, over a vigorous dissent by Judge Newman. Bayer seeks rehearing. On September 28, 2009, AIPLA submitted an amicus brief, authored by Rex Stratton, in support of neither party, arguing that the Court should rehear the case to clarify certain statements in the panel majority’s opinion that the invention was obvious because the patented option was a viable option, rather than following the KSR holding that in order to be obvious the option must be predictable. The Court has denied the motion for rehearing. Ariad v. Lilly (2008-1248). Lilly prevailed at the panel stage based on its argument that the patent-in-suit was invalid for lack of a written description. Ariad filed a petition for rehearing en banc, questioning the existence of a written description requirement independent from an enablement requirement. In response, the Federal Circuit issued an en banc order to determine whether written description should be a independent requirement and, if so, its scope and purpose. The Board has authorized the filing of a brief stating that there is an independent written description requirement, but that it is closely related to enablement and must be kept in balance and in its proper role. Amicus briefs in support of either the Appellant, Ariad, or neither party are due November 30, 2009. Appellee Lilly’s Brief is due December 17, 2009, and amicus briefs in support of Lilly are due December 24, 2009 (n.b., November 19, 2009, AIPLA submitted an amicus brief authored by Teresa Stanek Rea. For more information see www.aipla,org.). The Amicus Committee continues to solicit input from all members of AIPLA regarding appropriate cases in which to participate. In particular, we are looking for cases to support the Board’s public policy initiatives, particularly with respect to fraud and inequitable conduct and patent damages. Please feel free to contact Ed Reines or myself if there are any cases that you feel that we should consider or if you wish to participate in our monthly liaison calls.
2009 annual meeting issue
Antitrust
Kenneth M. Frankel, Chair (left photo) Richard S. Taffet, Vice-Chair (right photo) ___________________________________________
T
he Antitrust Law and Biotechnology Committees held a joint meeting during the AIPLA Annual Meeting in Washington, DC. Three high-level officials from the federal antitrust agencies spoke about IP and competition: from Federal Trade Commission– Suzanne Michel, Deputy Director, Office of Policy Planning, and Willard K. Tom, General Counsel; and from the Antitrust Division of the Justice Department– Philip J. Weiser, Deputy Assistant Attorney General for International, Policy, and Appellate Matters. Ms. Michel first discussed her views regarding the competitive benefits of the FDA approval process for follow-on biologics. She compared competition in the marketplace for follow-on biologics with competition in the marketplace for small molecule generic pharmaceuticals, and pointed to several distinctions. For the latter, she noted, for example, the Hatch-Waxman Act’s patent challenge procedures, temporary exclusivity for first filers, and automatic stays, as well as low cost development of generics, automatic substitution, and significant price discounts upon introduction of multiple generics. In contrast, for follow-on biologics, she noted high development costs, complex production methods, and much smaller expected price discounts, due largely to biologic products not being initially interchangeable and the lack of automatic substitution. Ms. Michel discussed her views regarding whether follow-on biologics needed the Hatch-Waxman Act’s special rules or whether the patent system and market rewards provide sufficient protections and incentives. She concluded, recognizing differing views, that market dynamics do not support the need for special procedures for followon biologics, and that various competitive problems had arisen under the Hatch-Waxman Act. Ms. Michel referred the group to the FTC’s report and results of its workshop on follow-on biologics available on the FTC’s website. Mr. Weiser discussed more generally antitrust oversight of the exercise of IP rights. He explained that IP is
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important to our economy, and that over the years, antitrust law has become much more sophisticated about IP. Today, antitrust and IP are viewed in harmony, sharing common goals, but IP rights do not convey blanket immunity from the antitrust laws. He noted that if general access to IP were required, it would lead to less invention, while if IP protection were too broad, it would unduly limit competition. He also discussed some differences between IP and other types of property, which affect the competitive analysis. Mr. Weiser asked for input from IP practitioners to continue the dialogue with the federal agencies to advance the sophistication of the approach to IP and antitrust law. Mr. Tom discussed settlement of pharmaceutical patent infringement cases brought under the Hatch-Waxman Act. He addressed competitive issues that arise in settlements where consideration from the innovator pharmaceutical company that owns the patent on the pharmaceutical is transferred to the generic pharmaceutical company that is the accused infringer challenging the patent. He noted that the issues are pending in the courts and may be resolved by the Supreme Court, while legislation currently is pending in Congress to address the issues. He then turned to standard-setting, including competitive problems that arise if patents are not disclosed at the time the standard is being developed and adopted, RAND licenses, and negotiation of license terms before the standard is adopted. Ms. Michel returned to discuss some of the results of the series of hearing the FTC held last year and earlier this year on the Evolving IP Marketplace. The hearings examined changes in IP law and the marketplace for IP in recent years. She explained that a report would be issued in the near future. She noted some of the issues the hearings addressed, including the new secondary market for patents and associated competitive effects, as well as damages properly compensating for infringement.
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Biotechnology
Karen S. Canady, Chair (left photo) James J. Kelley, Vice-Chair (right photo) ___________________________________________ Please see Antitrust Committee Report on p. ##
Committee on the ITC
Tom M. Schaumberg, Chair (left photo) L. Scott Oliver, Vice-Chair (right photo) ___________________________________________ Proposed Amendment to Section 337 in view of Kyocera Tom Schaumberg updated the members on the Committee’s efforts in moving forward a proposed amendment to Section 337 legislation in view of the Federal Circuit’s recent decision in Kyocera. In particular, Tom, Scott Oliver, Karin Norton, and Kim Choate attended AIPLA’s Board Meeting on Thursday, October 15, 2009. Tom gave arguments for amending Section 337 in view of Kyocera, and Karin gave views for not amending Section 337 in view of Kyocera. The Board has decided to have the Patent Legislation Committee review the Committee’s proposed amendment. New Efforts, Projects and Subcommittees The Committee held an open discussion as to new issues that should be addressed by the Committee, as well as the formation of new Subcommittees to address such new issues. One topic discussed was the issue of effective enforcement of ITC orders at Customs. A new Subcommittee on Enforcement was formed to discuss and address enforcement issues, as well as assist the ITC and Customs with their efforts in enforcing these orders. 60
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A Subcommittee on Princo was also formed to work with the AIPLA Amicus Committee. The Subcommittee will work with the Amicus Committee and determine whether an amicus brief should be prepared in response to the Federal Circuit’s grant of en banc review of the Princo v. ITC case. The amicus briefs are due on December 12, 2009 (n.b., on December 4, 2009, AIPLA submitted an amicus brief arguing that patent misuse allegations must be analyzed under a “rule of reason” approach.). The Committee next discussed possible topics for the Committee’s presentation at the AIPLA 2010 Annual Meeting. One topic discussed was the effectiveness of Advisory Opinions, as well as the length of time it took for such opinions to issue. This may be a possible topic our Committee would like to address in a future presentation. Another topic proposed was a review of statistics on orders for/against Complainants. Ken Nigon announced that the Education Committee would like to join our Committee in efforts to present CLE programs in the near future. IPLA Spring Meeting 2010 NYC A The Committee announced that we will present at 2009 annual meeting issue
the Spring 2010 Meeting in New York City. Scott Oliver and Lyle Vander Schaaf are planning and coordinating the meeting on behalf of the Committee. Chief Administrative Law Judge Paul Luckern, Tom Schaumberg and Kim Choate will be speaking. Several potential topics discussed included customs issues and IP enforcement across the borders. Review of ITC ADR Program James Worth from the ITC Office of General Counsel updated the Committee on the Alternative Dispute Resolution (“ADR”) program at the Commission. He updated members on the Commission’s future plans and the efforts to encourage use of program. James requested members of the Committee to encourage their clients to use the ADR program. He reported
that no parties had yet utilized the volunteer program, and that the Commission had hoped for a much higher participation in the program. The Committee discussed the importance of ADR, and discussed holding a presentation on the issue at a future meeting. AIPLA Mid-Winter 2010 Meeting La Quinta The Patent Law, Patent Litigation and the International Trade Commission Committees will hold a joint meeting at the 2010 Mid Winter Conference in LaQuinta. Scott Oliver from our Committee will participate on a panel discussion with members from the other two Committees in discussing post-KSR practice, in particular the application of 35 U.S.C. 103, in the district courts as well as the ITC.
Copyright Law
Harry M. Barton, Chair (left photo) Kevin Tottis, Vice-Chair (right photo) ___________________________________________
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he Copyright Law committee held two joint sessions at the Annual Meeting. Along with the IP Practice in the Far East Committee and all of the trademark committees, the first session addressed trademark and copyright issues in China. In conjunction with the Corporate Practice Committee, the Copyright Law Committee presented a CLE session and webinar on intellectual property and cyber-insurance. The panel addressed legal and practical issues for protection of intellectual property on the web and elsewhere. During 2009, the Committee was actively involved in preparing the amicus brief filed on behalf of AIPLA before the US Supreme Court in Reed Elsevier, Inc. v. Muchnick. The brief was drafted by Amy Cahill, with review and
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assistance by members of the Copyright and Amicus Committees. The Committee also has announced the formation of Amicus and Legislative Subcommittees which should help the Committee more efficiently and expeditiously address legal and legislative issues as they arise. Although a number of Committee members already have volunteered, available spots remain open on the subcommittees. Throughout the upcoming year, at all stated meetings, the Committee anticipates interactive panel discussions led by top copyright practitioners addressing various topics including the Google settlement and other hot-button copyright issues.
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Corporate Practice
Georgann S. Grunebach, Chair (left photo) Kenneth Seddon, Vice-Chair (not pictured) ___________________________________________
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he Committee thanks out-going Chair, Chen Wang, for her outstanding contribution to the goals, needs and objectives of the Corporate Counsel membership. Her efforts are most appreciated and we sincerely hope she will remain to participate, advise and counsel as the Committee moves forward! The Committee welcomes in-coming Vice Chair, Kenneth Seddon. We look forward to working with him in the upcoming year. Finally, we thank the outstanding efforts of Board Liaison, Naomi Abe Voegtli, and IT professionals Shannon Beech and Brad Chin for all of their efforts in 2009 to make the inaugural webinar presentations a success! This Committee develops programming and disseminates information relating to intellectual property law and practice that is particularly useful to Corporate Lawyers. During the 2009 Association Year, the Corporate Practice Committee fielded recommendations from Corporate Practice Committee members and implemented some of those suggestions as Programs at the Mid-Winter, Spring and Annual Meetings. In this report is a listing of key events in 2009. The Committee established strong cooperative relationships with the Copyright, Trademark, PCT, and Women in IP Law Committees through joint presentations at the Mid-Winter, Spring and Annual Meetings. During 2010, this Committee will develop and expand 2009 initiatives. Two key areas of exploration and expansion will be the establishment of two new subcommittees. The first subcommittee, entitled the In-House Best Practices Subcommittee, will collect and disseminate practical information to Corporate Counsel Committee members on best practices to get more work for less 62
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money and enhance cost efficiencies. The second sub committee, entitled the In-House Counsel In Transition Sub committee, will promulgate information about job opportunities and transitional education for outside counsel entering Corporate Practice. KEY EVENTS 2009 YEAR: AIPLA 2008 ANNUAL MEETING October 23rd – 25th , 2008 Marriott Wardman Park Hotel , Washington, DC Effective Collaboration Strategies With Customers, Vendors And Competitors: How To Leverage Intellectual Property To Drive New Products And Sales Moderator: Diderico van Eyl of SABIC Innovative Plastics Panelists: Chen Wang, Chair, Corporate Practice, E.I. du Pont de Nemours and Company Thomas J. Dodd, Johnson & Johnson Johnson & Johnson Georgann Grunebach, Vice Chair, Corporate Practice, Fox Group Legal The Moderator and Panelists discussed the most effective strategies they had found in their years of Corporate practice to facilitate the capture, documentation and leverage of Intellectual Property, especially in a collaborative creative environment. Helpful and practical information was conveyed to the attendees from diverse technology perspectives. After the substance of the panel discussion Chair, Chen Wang, described the focus of the upcoming year. AIPLA 2009 MID-WINTER INSTITUTE January 28 – 31, 2009 Marriott Doral Golf Resort & Spa in Miami, FL. 2009 annual meeting issue
Joint Presentation with PCT Committee Cost Management Through Effective Use of PCT Filing Entities Moderator: Georgann Grunebach, Vice Chair, Corporate Practice, Fox Group Legal Carl Oppedahl, Vice Chair, PCT Issues Panelists: Carl Oppedahl, Vice Chair, PCT Issues Jay Erstling, Vice Chair, PCT Issues Thursday, January 29, 2009, 4:00-6:00 pm The Corporate Practice Committee in co-sponsorship with the PCT Committee had a successful two hour presentation on the effective use of PCT filing entities at the 2009 Mid Winter Meeting. The meeting effectively compared filing entities around the world for PCT searching. Website Beta Testing at the Mid-Winter Institute David Kappos/Naomi Voegtii The Thursday, January 29, 2009 Plenary Session of the 2009 Mid Winter Meeting was effectively broadcast as a beta test webinar to 100 volunteers of the Corporate Practice Committee. The 100 participants watched the webcast sessions on their computers from home or office and then completed an on line survey for feedback. This beta site test is in anticipation of the full scale roll out for the Spring AIPLA meeting. AIPLA 2009 SPRING MEETING Joint Presentation with ADR Mediation Issues Unique to Corporate Counsel There Is More Than One Way to Skin A Cat: Cost Effective Alternatives to Litigating IP Disputes A program jointly hosted by ADR Committee and Corporate Practice Committee at the AIPLA Spring Meeting (Hotel del Coronado, San Diego, CA), with simultaneous and interactive webcast sponsored by the law firm of Bromberg & Sunstein LLP. Moderator: Georgann Grunebach, Vice Chair, Corporate Practice, Fox Group Legal 2009 annual meeting issue
Speakers: Hon. Louisa S. Porter, Magistrate Judge, United States District Court; Hon. William F. McDonald (Ret.), c/o JAMS; Thomas J. Stipanowich, Academic Director, Straus Institute for Dispute Resolution, Pepperdine University -- School of Law; Lee Carl Bromberg, Bromberg & Sunstein LLP; Freddie K. Park, BioForm Medical, Inc. Corporate counsel are constantly confronted with handling disputes about intellectual property. Disputes may range from oral exchanges, to written exchanges, to formal papers filed with adjudicatory tribunals. Although each dispute deserves attention and requires resources to resolve, not all can receive the same level of attention and resources, particularly in these economically stressed times. Through generalized examples the presenters provided practical ideas for using and customizing ADR for creatively resolving domestic and international IP disputes in comparison to litigated alternatives. Note: This was the first successful LIVE WEBINAR broadcast from an AIPLA meeting. Over 82 people attended on-line IN REAL TIME. A copy of this presentation is available for access on the AIPLA website. KEY EVENTS 2009-2010 YEAR: AIPLA 2009 ANNUAL MEETING October 14th – 16th , 2009 Marriott Wardman Park Hotel , Washington, DC Joint Presentation with Women in IP Law Women at the Top of Their Game: How to Get There, How to Stay There, and How to Help Others Along Their Way This panel discussion was be moderated by Harrie Samaras. Panel included, Cynthia Weber, Georgann Grunebach, and Kimberly Van Voorhis. The program was sponsored by Howrey, LLP. IP and Cyber-Insurance - You Have Fire Insurance for Your Building, Shouldn’t You Have It for Your IP?. A Joint CLE Committee Education Session hosted by the Corporate Practice and Copyright Law Committees of AIPLA during the 2009 Annual Meeting in Washington, DC.
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With webinar facility sponsored by the law firm of Lowenstein Sandler PC (no CLE provided to webinar attendees). OVERVIEW OF TOPIC: The basic components of cyber-insurance are invasion of privacy, IP infringement, computer disruption and corrupted data. At first, companies tried to gain coverage for these risks through their traditional liability and property policies, but after many years of coverage litigation, that effort has largely failed. Insurance companies moved to fill this gap by the creation of new insurance products - cyber-policies that specifically address these risks. This market is now welldeveloped, and a company can choose from a number of cyber-policies. However, as technology changes, companies must constantly examine these policies to see if they respond to evolving risks. This seminar will trace the development and the range of current cyberpolicies, and discuss the applicability of these policies to such risks as open source software, user generated content and copyright and patent infringement. INVITED SPEAKERS: Moderator: Georgann Grunebach, Chair, Corporate Practice, Fox Group Legal Speakers: Robert D. Chesler, Vice Chair, Insurance Subcommittee, Corporate Practice, Lowenstein Sandler PC Christopher Keegan, Willis HRH Kimberly Klein Cauthorn, Cauthorn Consulting, LLC George Love, Fleming Pharmaceuticals Agenda: • Introduction •
IP and Cyber-Insurance: An Overview of Legal Issues
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Current Marketplace and Trends in CyberInsurance
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Current Marketplace and Trends in IP Insurance
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IP Insurance From A Corporation’s Perspective
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Business Meeting Portion
In addition to programming at Stated Meetings, the Corporate Practice Committee is focused on the following 2010 initiatives for the upcoming association year. 64
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Establishment of the In-House Best Practices Subcommittee Subcommittee Chair: Kenneth Seddon Subcommittee Vice Chair: Open This unique subcommittee will draw upon the available materials from the Law Practice Management Committee, as well as conduct surveys and telephone meetings with Corporate Practice Committee members. It will be the goal of the subcommittee to generate recommended practices to Corporate Counsel to achieve greater results with reduced budgets. Use of the LinkedIn system, established by the LinkedIn Group Subcommittee will facilitate this effort. Establishment of the In-House Counsel In Transition Subcommittee Subcommittee Chair: Open Subcommittee Vice Chair: Open In view of the rapidly changing job market, particularly for outside and in-house counsel, the Corporate Practice Committee’s In-House Counsel in Transition Subcommittee will provide to their membership information regarding the shifting IP job market. Additionally, it’s anticipated that materials will be assembled and presentations made to assist in the transition from outside counsel to in-house counsel. Pro-IP Public Relations Campaign Subcommittee Chair: Georgann Grunebach Subcommittee Vice Chair: Open Consistent with the Strategic Plan under the Professional Development Goal, the Corporate Practice Committee will continue to work with the Special Committee on IP Education to formulate a pro-IP communications/ marketing program as a way to improve the public’s perception of intellectual property. The focus of the plan is to develop consistent pro-IP messages that can be used by all industries and sizes of companies to help promote the value of IP. Vice Chair, Georgann Grunebach had been tasked with taking the lead on this project. She will continue to work with new Public Education Chair, Evelyn McConathy. In-House Counsel “Lunch” Call Program Subcommittee Chair: Kenneth Seddon Subcommittee Vice Chair: Georgann Grunebach 2009 annual meeting issue
The Corporate Practice Committee launched its first regularly scheduled “lunch” teleconferences for inhouse counsel ONLY participation in the beginning 2008-2009 Association Year. These one-hour teleconferences, in a multi-media format were designed to address topics of particular interest to in-house IP practitioners in an environment that enabled the free flow of ideas and benchmarking among in-house practitioners that were members of the Corporate Practice Committee. During the 2007-2008 Association Year, we brought four “lunch” call webinar programs with substantial assistance of the On-Line Program Committee and the AIPLA staff: (1) November 8, 2007 entitled, “The Road Ahead: GSK v. Dudas and Patent Prosecution Strategies under the New USPTO Rules”, presented by William E. McCracken, Edward M. O’Toole, and Nicholas P. Schmidbauer from the law firm of McCracken & Frank; (2) February 14, 2008 entitled, “Patent Application Preparation and Prosecution Cost Management Effort”, presented by a panel of in-house practitioners, a firm practitioner focused on the offshore perspective, and a moderator presented anonymous firm practitioner perspectives; (3) July 10, 2008 entitled, “Utilizing Centralized Opposition Proceedings Before the EPO to Invalidate Patents In Europe”, presented by Dr. jur. Daniele Schiuma, European patent attorney, and Dr. rer.nat. Joachim Hock, European patent attorney of Müller Boré & Partner IP Law Firm; (4) September 11, 2008 entitled, “IP Insurance: The Big Secret Corporate Counsel Cannot Ignore”, presented by panelists Leib Dodell, Chairman, Media/Professional Insurance; Chad Milton, National Practice Leader for Media, Marsh Inc., moderated by the IP Insurance Subcommittee of the Corporate Practice Committee. Thank you to webinar sponsors: McCracken & Frank, Müller-Boré & Partner and Media/Professional Insurance. Fall/Winter of 2009, a new series of presentations will be established on a monthly basis. We will actively seek sponsorship to support the GotoMeeting function at no cost to the Corporate Practice membership. 2009 annual meeting issue
IP Insurance Subcommittee Subcommittee Chair: Kurt Goudy Subcommittee Vice Chair: Robert Chesler The goal of the IP Insurance Subcommittee is multifaceted. For in-house counsel and IP risk managers, we need to improve awareness of IP insurance coverage in the marketplace particularly as it relates to infringement litigation. We need to teach the substantive breadth of IP insurance coverage under existing policies, and the potential role of IP insurance in connection with mergers & acquisitions and business income protection. Part of the education will include providing corporate counsel and risk managers (users of such coverage) with an understanding of the existing IP coverage in CGL forms and other standard products, and reveal the state of the market for specialty IP coverage and product trends. If we create more knowledgeable and sophisticated insurance purchasers, corporations will in turn be able to demand more from the insurance agents and brokers which in turn should lead to increased demand for IP insurance products and ultimately promote an expansion of IP products and markets over time. Education will also reduce the likelihood of corporate malfeasance and malpractice associated with failing to report IP claims to insurance carriers. We thank David Henry for his outstanding efforts in this subcommittee and we acknowledge Kurt Goudy and Robert Chesler in their new roles as Subcommittee Chair and Vice Chair, respectively. LinkedIn Group Subcommittee Subcommittee Chair: Vince Egolf In 2009, Vince Egolf working in conjunction with Randy Sagara established the Corporate Practice LinkedIn Group Subcommittee and set up the Corporate Practice Committee’s LinkedIn Group. Thank you Vince for this effort, and we thank you in advance for your commitment to serve as subcommittee Chair in 2009-2010. Liaison to the Women in IP Law Committee The Corporate Practice Committee looks forward to working more closely with the liaison from the Women in IP Law Committee: Randi Karpinia, Motorola, Inc.
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Specifically, the Women in IP Law Committee is exploring the use of the LinkedIn system and is vetting this process with the AIPLA Board. We also look
forward to co-sponsoring events with Women in IP Law at upcoming meetings.
Education
Troy E. Grabow, Chair (left photo) Hathaway Russell, Vice-Chair (right photo) ___________________________________________
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t the 2009 Annual Meeting, the Education Committee participated in a joint program with the Law Students and Young Lawyers Committees. The program included a panel discussion regarding how not to let the economic downturn slow your professional development. The program was well-attended by a cross section of law students, junior/senior -level associates, and young partners. The panelists provided strategic advice for all of those in attendance, and answered a wide range of questions. The Education Committee would like to thank the following panelists for sharing their expertise and taking the time to take part in this great program: Janet Gongola of the US Patent & Trademark Office; Dan Binstock of BCG Search; DeAnn Smith of Foley Hoag; and Dean Nakamura of MDIP LLC The program was so well received that the Education Committee will be partnering with the Online Programs Committee to put on a webinar with the same panel. This webinar is tentatively scheduled for January 22, 2010. Please invite your friends and colleagues to sign up for this program. Additional details will be distributed by AIPLA. After the panel discussion, the committees discussed upcoming events and programs for each committee.
Annual Practical Patent Prosecution Training for New Lawyers Program (“Boot Camp”) On August 26-28, 2009, the Education Committee again presented the three-day AIPLA Practical Patent Prosecution Training for New Lawyers Program (“Boot Camp”), at the Westin Alexandria, Virginia. The Boot Camp has been offered annually for several years, and includes instructional sessions and hand-on claims drafting workshops taught by skilled and experienced private and corporate practitioners. This year we also had three talks that were webcast live from the Boot Camp. This was a pilot program, with the idea that such webcasts could be replicated at future AIPLA seminars. These 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 2010 Bootcamp will take place in late August. Further details will be distributed as they are known. The Education Committee also worked with Online Programs for a post-Patent Prosecution Boot Camp online program directed to one of the sections from the Boot Camp - Continuation and RCE Practice: Present and Future Tips. This webcast program by George Wheeler was conducted on October 21, 2009. We have also started a subcommittee for planning of the 2010 Patent Boot Camp; please let us know if you would like to volunteer. Another way for committee
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members to get involved would be to attend or serve as an instructor at the Boot Camp. Please be sure to look for our upcoming announcements and encourage your friends and colleagues to attend. First 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 a one-day Trademark Boot Camp program, held at the Westin Alexandria on June 17, 2009. The 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 attorneys new to the area of trademark prosecution. Please contact one of us or Kim Van Voorhis if you are interested in getting involved. Prior to the 2009 Trademark Boot Camp, we worked with Online Programs and the Trademark Committees on an online program entitled “Initial Considerations in Seeking Trademark Protection,” by Richard Gilmore and Michael
Ballard. This program, conducted May 6, 2009, served as a “teaser” for the 2009 Trademark Boot Camp. 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. For example, we are coordinating with Online Programs to develop various online seminars including the January 2010 seminar on how to survive and thrive in today’s economic climate. We will be coordinating with Online Programs to put on additional programs in 2010 directed to patent prosecution basics. We have also done various activities with other committees such as the Young Lawyers and Law Students Committees. Finally, the Education Committee is in the process of forming several subcommittees relating to educating law students, law school administrators, and others concerning careers in intellectual property law. Please let us know if you would like to volunteer. Once again, we are always looking for new ideas so let us know if you have any suggestions.
Electronic & Computer Law
Manny Schecter, Chair (left photo) Jacques L. Etkowicz, Vice-Chair (right photo) ___________________________________________
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he Electronic and Computer Law Committee had a full schedule at the 2009 Annual Meeting, jointly hosting the annual Partnering In Patents joint program (and associated focus session on interview practice – see below) with the USPTO, sponsoring a track session in international patent practice issues (including foreign filing licenses, export controls, and inventor remuneration), and jointly presenting a committee educational program with the Emerging Technologies Committee relating to green technologies. In addition, 2009 annual meeting issue
the committee leadership attended a luncheon with the Group Directors in the electrical Technology Centers at the US Patent and Trademark Office in Alexandria, VA. We also planned a full slate of activities for 2010 including a single day road show in Denver in June, webinars, a track session on statutory subject matter at the 2010 Annual Meeting, and our regular committee education sessions at stated meetings.
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Partnering In Patents and Interview Focus Session As part of the Annual AIPLA Conference, the Electronic and Computer Law Committee sponsored the Sixteenth Partnering in Patents session held at the USPTO Madison Auditorium. Approximately 170 attorneys registered for the program, which had an attendance of around 300 (including approximately 130 examiners). The program included: (1) a USPTO information session addressing the ombudsman program, peer review, the central reexamination unit, the patent hoteling program, board of appeals changes, PCT outsourcing, the count system, and accelerated examination options; (2) a patentable subject matter session in which Drew Hirshfeld, Acting Deputy Commissioner for Patent Examination Policy, reviewed the recently released patentable subject matter interim guidelines from the USPTO and a presentation by Diallo Crenshaw regarding the impact of Bilski and the interim guidelines on patent procurement and enforcement; (3) a session by Lisa Dolak on in the impact of inequitable conduct rulings on practitioner’s dealings with the USPTO; (4) a session by Deanna Allen on claim construction (why practitioners write claims in the manner that they do); and (5) an interview practice session in which Joe Oriti and Ali Sharifzada conducted a mock interview and then members of an earlier focus session presented their results. The earlier focus session included a total of approximately 100 attorneys and examiners, integrated into groups in two separate rooms. The purpose of the focus session was to gather information that could be used to make the interview process more productive. The focus session gathered views on issues including the expectations of the parties, what should be included in the Interview Summary Record, interview agendas and draft responses, and the like. There were no surprises, but what was of most interest was the USPTO’s commitment to expanding the use of interviews to expeditiously resolve issues in pending applications. One of the issues identified in the focus session was the inconsistent treatment by the USPTO of draft amendments and agendas in that some but not all examiners make these documents 68
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part of the prosecution record. The participants from the bar were generally opposed to such treatment. Track Session The Electronic and Computer Law Committee organized a track session, including presentations by several members of the committee, on the topics of Foreign Filing Licenses, Export Controls and the pitfalls that are present when dealing with inventors who are not US citizens, as well as inventor remuneration. The panel consisted of Joel Miller, Antoinette (Toni) Paytas, Ed Round, Ying Tuo, Valentina Boyet and Bradley Forrest. Mr. Miller opened up the session with a presentation on Foreign Filing Licenses, Secrecy Orders, and Export Controls discussing USPTO Procedures and the International Traffic in Arms Regulations (ITARs). Mr. Miller presented an interesting hypothetical (which was carried through by the remaining presenters) of a US national in Australia who developed a new sophisticated GPS system (subject to ITARs) while in the outback of Australia. Ms. Paytas discussed US export control laws and their impact on US patent application filing. Ms. Paytas made the point that exporting from the US is a privilege and subject to a license similar to driving a car or owing a gun. Ms Paytas then discuss the various laws controlling what, where and to whom products and technology may or may not be exported. Mr. Round presented on the topic of inventor remuneration in the UK, Germany, France and Japan. Mr. Round reviewed the statutory provisions regarding ownership of inventions and rights to apply for patents in relation to employee inventions. He also provided an overview of the statutory provisions regarding compensation to be paid to employee inventors as well as an analysis of recent cases on the subject. Mr. Ying Tuo discussed the recently amended China Patent Law (effective on October 1, 2009) and the correspondingly amended Implementation Regulations and the likely impact on patent operations for foreign companies. Among the topics discussed were the first filing rule, foreign filing licenses and inventor remuneration in China and a comparison of same between the newly effective law and the preceding law.
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Next to give an in-house practitioner’s perspective on these various topics was Ms. Boyet. She discussed the expectations of the corporate client, and the practitioner’s concerns and the need to strike a balance between business objectives and risks. She then picked up on the hypothetical introduced at the beginning of the session by Mr. Miller and the practicalities of where to draft, where to file and inventor remuneration.
telescope which will make the Hubble telescope look like a “tinker toy”. Specific GSFC green technologies include: (1) methods of production of single walled carbon nanotubes; (2) radar system architectures; and (3) loop heat pipes.
Finally, Mr. Forrest discussed the ethical implications surrounding first filing requirements, export regulations and inventor remuneration. Mr. Forrest reviewed various statues and rules including Rule 56, the Canons set forth in 37 CFR §10, et seq., the ABA Model Rules and State Ethics rules. Mr. Forrest also touched on the role that the USPTO Office of Enrollment and Discipline plays in our professional lives and entertained those in attendance with a few “war stories.”
Mr. Klaiber spoke about the parallels between green technology patenting and semiconductor patenting. Billions of dollars of government funds are available to green technology. In addition, lots of private equity firms are searching out green technology investments and most “green” technologies have actually been around for a long time.
Joint Committee Educational Meeting The Electronic and Computer Law Committee held a joint educational meeting with the Emerging Technologies Committee directed toward international green technology patenting trends including litigation and prosecution perspective and tips. The panel consisted of : Manny Schecter (moderator), Raymond Van Dyke (moderator), Henry Behnke (speaker), Bryan Geurts (speaker), James Klaiber (speaker), Scott Stinebruner (speaker), and Matthew Bryan (speaker). Manny Schecter introduced the format - two separate panels: one on specific green technologies and another on the patent issues surrounding green technologies. Schecter stated that green technology is spawning somewhat analogous policy issues to biomedical/pharma technology whereby developing nations want free exploitation and developed nations want strong protection. Mr. Van Dyke introduced the ETC panel of speakers on specific green technologies. Mr. Behnke spoke about different solar panel technologies. In particular, he focused on the differences between thin film technology and more conventional solar panel technologies. Mr. Behnke spoke about various issues with thin films, which are now getting the attention and investment that LCDs got during the 90s. Mr. Geurts spoke about NASA’s Goddard Space Flight Center (“GSFC”) and various green technologies it is developing. GSFC is working on the James Webb
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Mr. Schecter introduced the ECLC panel of speakers on the patent issues surrounding green technologies.
Mr. Stinebruner spoke about prosecution issues in patenting green technologies. Inventions involving green technologies are different from those involving emerging technologies in that green inventions are typically not pioneering, make existing technologies more “green,” and are usually based on mature underlying technologies. Green industries are expanding while other industries are contracting. So, people innovating in green technologies may not have “green” backgrounds. Green patent applicants may have invented a technology tried before, that provides similar solutions used in other areas, or that is difficult to search because of the large scope of potential art. Accordingly, to overcome obviousness rejections, applicants may attempt to steer examiners away from non-green prior art, secure narrower claims, focus the specification around green problems and solutions, and provide quantifiable support in the specification or rule 132 declarations. Mr. Bryan spoke about the international patent landscape for green technologies. There has been significant growth in green technology patent filings, for example, in PV technologies. Mostly, this growth is driven by the private sector with lots of government incentives. There is a question of how United Nations Framework Convention on Climate Change (UNFCCC) will affect the green technology landscape. Group Directors Luncheon The leadership of the Committee attended the annual luncheon with the USPTO electrical Technology Center Directors from Technology Centers 2100, 2400, 2600, 2800 and 3600 (Business Methods). A total of approximately 20 attorneys and USPTO directors
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attended. We learned about the recently concluded examiner interview training. The training materials will be posted to the USPTO website. Examiners are encouraged to contact applicants in order to clarify issues. The Directors emphasized that feedback from practitioners is welcome. The Office is also considering developing applicant interview guidelines. The Office has also completed core-wide training on the Interim Examination Instructions For Evaluating Patentable Subject Matter. We also learned about USPTO quality initiatives. The USPTO is reviewing underlying factors relating to serial office actions for issues such as nonfinal second office actions and interspersed RCEs. Upcoming Committee Events The Committee leadership also met to discuss the planning for upcoming meetings and events, including the following: 2010 Mid-Winter Meeting: We are organizing a committee education session on statutory subject matter that extends a similar committee education session at the same meeting earlier this year. Speakers and topics are essentially set.
Webinars: We are always interested in new ideas for future webinars. We are currently pursuing a webinar with Commissioner Stoll (through proper AIPLA channels) - an opportunity for him to reach many members of the patent community. Blog monitoring: The board of directors has initiated a project for members of the Student Committee to monitor IP blogs and we identified two volunteers to help oversee the students. The ECLC leadership team follows. ECLC Leadership and Subcommittees (2009-10) Chair: Manny Schecter schecter@us.ibm.com Vice Chair: Jacques Etkowicz, jletkowicz@ratnerprestia.com Secretary: Scott Stinebruner, sstinebruner@whepatent.com Immediate Past Chair: Brad Forrest, bforrest@slwip.com Board Liaison: Phil Petti ppetti@usg.com
2010 Spring Meeting: We are organizaing a joint committee education session on defensive patent entities. We already have tentative interest of speakers from some of the defensive patent entities – we will now re-engage and firm up plans.
TSC Subcommittee Chair: Blake Reese, Breese@milbank.com
2010 Roadshow on electronic & computer law in conjunction with the IP Section of the Colorado Bar Association: the AIPLA board of directors has approved this event, which is likely to be held in June. Next step is to locate a venue in Denver. We will work with the assigned AIPLA meeting planner, and with the contact at the Colorado Bar Association to create an agenda and invite speakers.
Copyright Subcommittee Chair: David Einhorn, deinhorn@bakerlaw.com
2010 Annual Meeting: We are pointing towards a track session on statutory subject matter since a decision on Bilski could come down after the Spring Meeting. The suggestion has been proposed to the Programs Committee. We will organize with other volunteers once the session is approved. We also discussed a committee education session on the Patent Prosecution Highway, including speakers from different patent offices and private speakers. If the committee education session for the Spring Meeting on defensive patent entities falls through, we will likely move this idea to the Spring Meeting. 70 
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Coordinates interactions between ECLC and Young Lawyers, Women Lawyers, Diversity, and others.
Addresses issues related to securing copyright protection for computer software. International Affairs Subcommittee Chairs: Erwin J. Basinski, ejb@basinskilaw.com; John Collins, jcollins@marks-clerk.com Tracks changes in the laws of other countries and informs the committee of these changes. Patents and Legislative Affairs Subcommittee Chair: Lance Reich, lreich@woodcock.com; Joel Miller, jm@computer.org Tracks pending legislation, particularly concerning the patenting of electronic and computer technologies. Interfaces with the Patent Law Committee of AIPLA.
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Licensing Subcommittee Chairs: John Salazar, jsalazar@middreut.com; Steve Lundberg, slundberg@slwip.com Addresses issues concerning the licensing of electronic and computer technologies. PTO Relations Subcommittee Chairs: Lynn Anderson, lynnea@us.ibm.com; Mike Dunnam, dunnam@woodcock.com Organizes the Partnering in Patents seminar, the annual Brown Bag lunch meetings with TC directors, and manages our committee’s efforts to provide technical training to PTO examiners. Professional Programs Subcommittee Chairs: Steve Weed, sjweed@ratnerprestia.com; John Salazar, jsalazar@middreut.com Responsible for the educational programs presented by the ECLC.
Technology and Business Development Subcommittee Chairs: Thomas Hassing, hassing@sbcglobal.net; James Hallenbeck, jhallenbeck@slwip.com Addresses the advancement of technology and business development with focus on business methods. ECLC Website Subcommittee Chair: Nathaniel Ari Gilder, agilder@jensenpuntigam.com Maintains ECLC website and dissemination of information to the membership. Electronic and Computer Patent Prosecution Subcommittee Chairs: Tim Bianchi, tbianchi@slwip.com; Jeff Ranck, jranck@microsoft.com Holds periodic electronic round table meetings to discuss current patent prosecution issues.
Webinars Subcommittee Chair: Valentina Boyet, valentina.boyet@sap.com Responsible for on-line presented by the ECLC.
education
programs
Emerging Technologies
Brian H. Batzli, Chair (left photo) Kirk Damman, Vice-Chair (right photo) ___________________________________________
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t the 2009 Annual Meeting, the Emerging Technologies Committee held a joint educational meeting with the Electronic and Computer Law Committee directed toward international green technology patenting trends including litigation and prosecution perspective and tips. The panel included: Manny Schecter (moderator), Raymond Van Dyke (moderator), Henry Behnke (speaker), Bryan Geurts (speaker), James Klaiber (speaker), Scott Stinebruner (speaker), and Matthew Bryan (speaker). 2009 annual meeting issue
The presentations were well received, and the Emerging Technologies Committee wishes to thank each of the speakers for their contributions. Details on the presentations may be found in the Electronic and Computer Law Committee report. Also, portions of the presentations will be posted on the Emerging Technologies Committee website shortly. Prior to the joint educational meeting, Brian Batzli (Chair of the Emerging Technologies Committee) aipla bulletin
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announced plans for a joint committee meeting at the Midwinter Institute with the Emerging Technologies Committee, the IP in Latin America Committee, and the Special Committee on Genetic Resources, Traditional Knowledge, and Folklore. The topic will
be genetic resources. The program will include a general discussion on genetic resources followed by presentations on the application of IP laws related to genetic resources in Brazil, China, and India.
Fellows
John T. Wiedemann, Co-Chair (left photo) Sheldon H. Klein, Co-Chair (not pictured)
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he Fellows Committee welcomed the four new members recently approved by the AIPLA Board of Directors: Gordon Arnold, Pryor Garnett, Jim Pooley, and Alison Strickland. After much discussion concerning proposed topics for a Fellows-organized concurrent track at the AIPLA 2010 Annual Meeting, a proposed topic was selected addressing effective IP case management and cost control both before and during litigation. Issues to be addressed by the proposed program include: (1) use of early case assessment as a conflict management process designed to facilitate informed decision making at the early stages of the dispute; (2) the effect of electronically stored information (“ESI”) on the cost of litigation in managing discovery costs generally; and
In addition, the Fellows proposed organizing a study to examine these issues going forward to determine whether the Fellows can recommend specific measures or best practices that could be taken to help in-house counsel manage the costs of litigation. Harrie Samaras agreed to draft an outline for such a program based on the Fellows’ input and to chair the further development of such a program. The Fellows Dinner at the AIPLA 2009 Annual Meeting took place at the Mie N Yu Restaurant in Georgetown. Don Dunner graciously volunteered to host the Fellows Dinner at the 2010 Annual Meeting. The AIPLA Board is requesting the Fellows to become involved in two special projects involving issues that are being reviewed by the USPTO. More information will follow.
(3) how can in-house counsel, outside counsel, and the trial judge impact the cost of litigation, and how can these costs be managed.
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International Education
James Ruland, Chair (left photo) Marc Hubbard, Vice-Chair (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 with foreign delegates to discuss US intellectual property policies and regulations. The Committee has also been initiating joint sessions with other committees at stated meetings to provide programs of interest to our members. Moving forward, we will continue these activities as well as coordinate with other committees to identify programs of interest that can be presented
using an online platform. Particularly, to the current economic climate may present opportunities to maintain and expand relationships with individuals and associations outside the US through the use of online programs. SPECIFIC TASKS UPDATE AND GOING FORWARD: We will continue, upon request, to arrange meetings with foreign delegations in the US as well as facilitate lectures and seminars in foreign countries. We will also be meeting with Chairs and Vice-Chairs of related committees, such as International and Foreign Law, the IP Practice in Europe, the IP Practice in Japan, the IP Practice in Latin America, and the IP Practice in the Far East Committees, to identify subject matter and sponsors for online programs of interest. We will organize and conduct a trial online program by 1st Quarter 2010; as well as develop a short-list of candidate programs for 2010. We are ascertaining the compatibility of online platforms with foreign infrastructure before proceeding with the programs. Finally, we are reinvigorating the Committee’s microsite.
IP Practice in Latin America
Roberto Capriotti, Chair (left photo) James Larson, Vice-Chair (right photo) ___________________________________________
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t the 2009 Annual Stated Meeting, the IP Practice in Latin America Committee (“LAC”) conducted a two-hour joint committee educational session with the Licensing and Management of IP Assets Committee. The topic of the meeting was “A GLOBAL UPDATE ON 2009 annual meeting issue
IP LICENSING - A Comparative Discussion; Do’s and Don’ts; and How Recent Developments Have Changed Licensing Practices Around the World.” The panelists discussed recent developments in global licensing of intellectual property (IP) assets that will impact the way aipla bulletin
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IP owners conduct business on a global scale. The panelists provided a perspective on global IP licensing from Brazil, Japan, China, and the United Nations (UN). Mr. Claudio Szabas provided a perspective from Brazil. His discussion was centered around some aspects of the Brazilian practice regarding the signature of IP license agreements in the light of two recent lawsuits brought by Koninklijke Philips Electronics N.V. v. INPI (Instituto Nacional da Propriedade Industrial) concerning the limits of the Brazilian PTO’s ability to intervene in patent licensing agreements and which were decided contrariwise by the same Federal Court of the 2nd region (Rio de Janeiro) at relative short interval. Mr. Yuichi Ide provided a perspective from Japan. His discussion was centered around recent changes in the license registration system in Japan. His discussion included a background of the amendment highlighting problems associated with the old system and an introduction of “Provisional Exclusive License Registration,” “Provisional Non-exclusive License Registration” and “Limited Disclosure” provisions under the new system. The presentation also included a discussion of a new system for comprehensive licenses for “Special Non-Exclusive License Registration” and problems that remain to be solved. Mr. Ide also provided a quick overview of the employee invention compensation system in Japan. His discussion included a brief introduction of the employee invention compensation system under Patent Law-Art. 35, a background of the 2004 amendment, corporate practices after amendment and recent case law. Mr. Shaojie Chi provided a perspective from China. His discussion was centered around general “do’s and don’ts” when licensing IP assets in China, which is currently the world’s most dynamic and fast-growing economy. According to Mr. Chi, China is trying much harder than ever to adopt the global prevailing rules in market operation and supervision and to endeavor to adapt itself to the doings of world economic community. Mr. Robert M. Bauer provided a perspective from the UN. His discussion was centered around a report on the United Nations Commission on International Trade Law (UNCITRAL) and included a discussion of IP Rights and UNCITRAL Legislative Guide completed in 2007 by Working Group VI of the United Nations Commission on International Trade Law. Mr. Stephen Y. Chow provided a perspective from the UN. His discussion was centered around the UNCITRAL Working Group VI Legislative Guide on secured transactions. Mr. Michael Dennis from the State Department leader of the US Delegation to the UNCITRAL Working Group VI also provided additional perspective from the UN. 74
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The meeting was chaired by the Chair of the Licensing and Management of IP Assets Committee Mr. Kevin Wolff. The meeting was moderated by the Chair of the IP Practice in Latin America Committee Mr. Roberto Capriotti. After the welcomes and introductions, Mr. Capriotti introduced the speakers: Mr. Claudio Szabas Aspeby-Szabas Rio de Janeiro, Brazil Mr. Yuichi Ide General Manager IP Division NEC Display Solutions, Ltd. Kanagawa, Japan Mr. Shaojie Chi CCPIT Beijing, PRC Robert M. Bauer MacDonald Illig Jones & Britton Erie, Pennsylvania Mr. Stephen Y. Chow Burns & Levinson Boston, Massachusetts Michael Dennis US State Department The power point presentations and papers will be posted at the LAC website. Each of the presentations was well received, and the Committee wishes to thank the speakers and Mr. Kevin Wolff for chairing the meeting. The IP Practice in Latin America Committee also saw the outgoing of its former Chairman, Jim Larson from the firm of Hamre, Schumann, Mueller & Larson, P.C. in Minneapolis, MN, for which the Committee owes a debt of sincere gratitude for all of his hard work and dedication to the Committee over the last two years. The Committee is however very fortunate to see its past ViceChairman, Roberto Capriotti, from the Pittsburgh Office of K&L Gates LLP take over as Chairman of the Committee. And, as evidenced from the joint-session meeting, which Mr. Capriotti moderated in DC, the IP Practice in Latin America Committee is in good hands and is already “off and running” with informative and relevant committee sessions. Mr. Capriotti is joined by in-house counsel James E. Larson (no relation to former Chairman Jim Larson) in the position of Vice-Chairman from Xaviant, LLP out of Atlanta, GA, but who spends a majority of his time practicing from Xaviant’s Costa Rican office.
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Finally, at the conclusion of the educational portion of the meeting, the LAC held its regular social, which was held off-site at Murphy’s Pub near the Hotel.
Approximately 15-20 people attended this casual event, which provided an opportunity for the members to know each other on a social level.
IP Practice in the Far East
William D. Fisher, Chair (left photo) Ying Tuo, Vice-Chair (right photo) ___________________________________________ Please see Copyright Law.
Law Practice Management Ashok Mannava, Chair (photo)
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iven the current economic times, law practice management has become a hot topic. Some of our goals this year include providing informative programs on law practice management at the meetings as well as an online program. This includes joint committee meetings with the Corporate Practice Committee, the Membership Committee and other committees. At the last Annual Meeting, we conducted a very successful joint committee meeting with the Membership Committee on Business Development Plans. We had a consultant speak on the development of business plans and two attorneys spoke to the process of generating a plan. We also provided a sponsored reception after the meeting that was well attended. We intend to provide other successful programs at future meetings.
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We are setting up sub-committees to handle the diverse areas of law practice management, and we are looking for active participants for these subcommittees. These subcommittees will include a Corporate Practice Subcommittee, a Small Firm and Solo Subcommittee, a Programs Committee, and an Economic Survey Committee. We will be discussing the tasks for each subcommittee at our next committee meeting, and look forward to meeting any members interested in participating.
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Licensing & Management of IP Assets Kevin Wolff, Chair (left photo) Paul Hunter, Vice-Chair (right photo) ___________________________________________
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he Licensing and Management of IP Assets Committee (the Committee) develops and shares information on procedures for enabling intellectual property owners to extract additional value from that property. The Committee also analyzes the impediments to valuing intellectual property assets as compared to tangible assets, develops procedures for overcoming these impediments and recommends features for tools to assist in mining intellectual property portfolios, managing those portfolios and managing the revenue streams obtained from those portfolios 2009 ANNUAL MEETING The Committee has focused its efforts on producing educational sessions in support of the AIPLA’s Strategic Plan. Educational Session: Global Perspectives on IP Licensing – A Comparative Perspective; Do’s and Don’ts; and How Recent Developments Have Changed Licensing Practices Around the World Presenters Claudio M. Szabas of Aspeby Szabas Industrial Property (Brazil) Shaojie Chi of CCPIT (China) Yuichi Ida of NCE Display Solutions (Japan) Michael Dennis of the State Department (US) Robert Bauer of McDonald Illig Jones & Britton LLP (US) Stephen Chow of Burns & Levinson LLP (US) The Global Perspectives on IP Licensing presentation was organized jointly with the IP Practice in Latin
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America Committee. The panelists addressed recent legal developments and challenges related to IP licensing and doing business in a global economy. Mr. Claudio M. Szabas presented first on recent suits challenging intervention to set terms in IP licensing agreements by the Brazilian PTO. In particular, he provided a detailed discussion of Philips Electronics v. the Brazilian Patent & Trademark Office. This case was originally decided in favor of Philips, but currently has an appeal pending before the Brazilian Supreme Court. Mr. Shaojie Chi presented second on the Do’s and Don’ts of Licensing in China. His presentation touched on co-patentee issues, license recordation, and practical considerations for licensing and IP management in China. Mr. Yuichi Ida presented third on IP licensing in Japan. His presentation focused on changes in the Japanese licensing recordation system and provided an overview of the employee invention compensation system. Mr. Michael Dennis presented fourth on the guide on secured credit law being prepared by the United Nations Commission on International Trade Law (UNCITRAL). He addressed the inclusion of intellectual property rights in the guide and operation of the guide, particularly when the guide conflicts with the laws of countries that are parties thereto. Mr. Robert M. Bauer and Mr. Stephen Chow followed Mr. Dennis’ presentation with a discussion of their involvement in the preparation of the guide as US delegates to UNCITRAL and the current status of the guide. The presentation was well-received and was followed by a vigorous discussion of a number of the issues covered by the presenters.
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Membership
Jerry R. Selinger, Chair (left photo) Bryan W. Bockhop, Vice Chair (right photo) ___________________________________________
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he Membership Committee held a joint meeting with the Law Practice Management Committee. The Membership Committee held a brief business session in which several issues were discussed, including the Small Firm/Solo Practitioner Subcommittee and the Targeted Substantive Committee (TSC) Liaison initiative. The Small Firm/Solo Practitioner Subcommittee reaches out to the many small firm and solo practitioners who are members of AIPLA. It provides a nexus for small firm and solo practitioners to interact with each other and AIPLA. The TSC initiative provides leadership opportunities for newer members as liaisons between substantive
committees and several targeted committees. The Membership Committee facilitates this initiative. After the business meeting, the committee held a panel discussion entitled “Developing a Business Plan for Solo and Small Firm Practitioners.” Initially, Stewart Hirsch, a development trainer and practice coach gave a presentation on how to draft a business plan. Next, Cheryl Agris and Ashok Mannava presented the business plans that they developed under Mr. Hirsch’s guidance. After the panel discussion, we held a Small Firm/ Solo Practitioner reception sponsored by Jamison IP Services. The reception drew about 60 attendees.
Mentoring
Liz Burke, Chair (left photo) Daphne Lainson, Vice-Chair (right photo)
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t the Thursday Luncheon of the Annual Meeting, the inaugural Mentor of the Year Award was presented to J. Allison Strickland for her contributions to the AIPLA Mentoring Program. The Mentoring Program is administered by the Mentoring Committee with its primary goal being to increase participation in AIPLA. A secondary goal is to mentor individuals in their career and professional development. The Mentoring Committee also met at the Annual meeting to discus plans and goals for the upcoming year. The Committee has launched two subcommittees directed to pairings and evaluation of pairings. Lisa 2009 annual meeting issue
Jorgenson from STMicroelectronics and Allison Strickland of Fross Zelnick will co-chair the Evaluations Subcommittee. This Subcommittee will be updating the evaluations process, including for selection of the next Mentor of the Year award. The Committee continues to look for a Chair of the Pairings Subcommittee. The Committee will be revising its Guidelines, and providing additional guidance to mentors and mentees to assist them in the Mentoring Program. The Committee is also working with AIPLA to develop and improve its web-site and e-mail lists to improve communications with mentors and mentees. Further, the Committee will be reaching out to other aipla bulletin
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Committees to encourage participation and awareness of the Mentoring Program. 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 MidWinter Institute meeting!
Online Programs
Shannon Beech, Chair (left photo) Brad Chin, Vice-Chair (right photo) ___________________________________________ MISSION: Our Mission is to provide high quality, affordable education by means of an 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 AIPLA as a whole and to their constituents and to facilitate others in AIPLA to utilize online media for program delivery. EXECUTIVE SUMMARY: In the current calendar year, Online Programs focused on the preparation and presentation of live online CLE programs. Online Programs typically performs 11-12 scheduled programs per year (with additional quick turnaround programs on hot topics), but beginning in the Fall of 2009, Online Programs added an additional program every two months. As a result, 18 revenuegenerating programs are proposed in 2010 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. A live webinar was performed at the Corporate Practice and ADR Joint Committee meeting at the 2009 Spring Meeting with great success and a total of 83 registrants. A second live webinar was conducted at the Copyright and Corporate Practice Joint Committee meeting at the 2009 Annual Meeting. This live webinar was also a success and had an audience of 66 registrants. As the number of programs has grown, Online Programs has been working to increase the number and the practice diversity of our 78 
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coordinators through the TSC Liaison program and help from the Young Lawyers Committee. 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 has created a video for new and potential members that may be found on the AIPLA’s website. Capture of this video took 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. Our goal is to perform 18 programs per calendar year at a pace of three programs every two months with the flexibility to provide additional rapid response programs. We are working with other substantive committees to develop online content. We are developing expertise on the GoToWebinar platform through our subcommittee. This subcommittee assists the Corporate Practice and Electronic and Computer Law Committees with hosting online programs using the Citrix GoToWebinar platform. An appendix to these procedures may be developed in cooperation with other AIPLA Committees as needed and has been completed for the Corporate Practice Committee. We conducted a webinar live from the Corporate Practice and ADR Joint Committee 2009 annual meeting issue
meeting at the 2009 Spring Meeting, and another webinar live from the Corporate Practice and ADR Joint Committee meeting at the 2009 Annual Meeting, both of which were a great success. The goal is to have subcommittee members available to assist other AIPLA committees to use the Citrix platforms and reduce the workload on AIPLA headquarters staff. In response to the changing economic environment, starting on January 23, 2009 AIPLA has been sponsoring a Career and Practice Management series of webinars that will be complimentary to all AIPLA members. This series will be performed on the GoToWebinar platform 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. Future programs in this series are under consideration. The work on reinvigorating 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 is continuing to explore various platforms for recording live meeting content, including recording from live streaming video of the stated meetings. The Online Programs Committee will be working with 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 are currently performing three programs every two months with the possibility of 1-3 additional rapid response programs. 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 Vice-Chair to help with coordinating this class of online programs, and as numbers increase likely 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. 2009 annual meeting issue
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. The International Education Committee is currently developing content to start conducting webinars. We are currently examining the possibility of using the Citrix platform to perform non-CLE, attendee-paid programs, such as adapting the secretaries and paralegals conference to an online program. PROGRESS REPORT ON LIVE, INTERACTIVE ONLINE PROGRAMS: Financials: With the current pricing structure our break-even point is about 100 sites. We are continuously monitoring our financial returns to ascertain the economic success of the 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: Online Programs Schedule Jan 20/10-Inequitable Conduct (Praxair from Annual) Program Coordinators: Noel Humphreys, Orin Paliwoda Feb 3/10-Protecting Your Client’s Brands: Using the National Advertising Division as a Cost Effective Mechanism for Resolving Advertising Disputes Program Coordinators: Darren Franklin, Michael Ballard, Tashia Bunch Mar 3/10-Reexamination and Interference (Tentative) Program Coordinators: Cheryl Agris, Sheetal Patel We anticipate 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 and Electronic and Computer Law Committees in performing online programs using GoToWebinar on topics of aipla bulletin
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significant interest for these committee members. We are assisting the International Education Committee in an effort to perform webinars for foreign practitioners. 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, non-CLE 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 is initiating 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 are being matched up with experienced coordinators for training and mentoring purposes.
Patent Cooperation Treaty Issues Carl Oppedahl, Chair (left photo) Jay A. Erstling, Vice-Chair (right photo) ___________________________________________
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his is an exciting time for the Treaty. After a decade during which USPTO did not place as high a priority on PCT as the patent community would have liked, we have an Undersecretary of Commerce Kappos who recently said: “We are also focused on bringing the quality of PCT processing to world-class level. “ Jim Pooley, who like Dave Kappos has been active in AIPLA for many years, has been named Deputy Director General at WIPO in charge of patents. The Trilateral offices (EPO, USPTO, JPO) will begin a pilot project in January 2010 in which positive PCT
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search reports and written opinions will be a basis for Patent Prosecution Highway requests in the Trilateral offices. Much work lies ahead for the PCT Issues Committee. The Committee hopes to support USPTO in its efforts to improve its handling of PCT work. The Committee will engage in outreach to help potential PPH filers appreciate the opportunities that the pilot project will offer. The Committee will be planning and carrying out the Fourteenth Annual PCT Seminar, to be offered in summer of 2010.
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Patent Litigation
Robert W. Payne, Chair (left photo) Dianne Elderkin, Vice-Chair (right photo) ___________________________________________
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he Patent Litigation Committee met for one hour on October 15 at the Annual Meeting in Washington, D.C. Outgoing Committee Chair Phil Johnson announced the new Chair of the Committee, Robert Payne, and Vice Chair, Dianne Elderkin. Bob Payne then gave an overview of the Committee’s current activities. The Committee currently has three subcommittees and study groups. Continuing from last year is the Amicus Committee Liaison Group, which advises on potential amicus opportunities of particular relevance to patent litigation. The AIPLA Model Jury Instruction Subcommittee will also work on proposed amendments to the organizations model instructions, taking into consideration new decisions and the model instruction work of Federal Circuit Bar. Finally, in response to a request by the Board, a subcommittee has been formed to review and report on several discrete
questions involving the recent Supreme Court decision of Ashcroft v. Iqbal. The Committee Chairs seek and welcome participation from members and suggestions for additional activities which members would find helpful and interesting. Outgoing Chair Phil Johnson led a panel discussion on “The Patent Reform Act: The Senate Compromise on Damages.” The panelists were Jennifer Duck, former Chief Counsel for Senator Dianne Feinstein, and Ryan Triplette, former Chief Intellectual Property Counsel for then-Ranking Member Senator Arlen Specter. The two were instrumental in negotiating the breakthrough within the Senate Judiciary Committee on the damages portion of the Patent Reform Act in SB.515 and shared their stories about how the compromise was reached.
Professional Programs
Michael J. Martinez, Chair (left photo) Steve Malin, Vice-Chair (right photo) ___________________________________________
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he Professional Programs Committee conducted its meeting on October 14, 2009. Among other topics, the Committee discussed the selection of coordinators and topics for the 2010 Spring Meeting in New York and began discussions of general topics for the 2010 Annual Meeting. Committee Chair J. Michael Martinez thanked the Committee for its hard work in planning the 2009 Annual Meeting and answered a number of questions from Committee Members. Mr. Martinez 2009 annual meeting issue
also reiterated a number of rules governing selection of coordinators and topics, quality control, and CLE requirements. 45 Committee members attended the meeting in person, and five members attended by telephone.
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Public Education
Evelyn H. McConathy, Chair (left photo) Salvatore Anastasi, Vice-Chair (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 •
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.
Substantive Tasks Following Up from 2009 Annual 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 needs to work 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 will begin 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 sub82
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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. Website: The Creativity in Bloom website was launched in September 2009, and populating that site with articles and reports relating to information that is expressly positive or negative regarding intellectual property rights will be the focus of our efforts over the next year. Michael Stewart will be coordinating this effort with Randy Sagara and Zehra Fazal. We will work closely with our liaison to the Board Michael Piper and with AIPLA Communications Manager, Sara Barker. A disclaimer is being added to the website and only links will be provided to articles. No copy of any work will be posted unless there is permission from the author. However, because of the difficulties associated with finding such information, the Committee has initiated a Blog Monitoring Project under the direction of Brian Stanton to review the over 100 blogs that discuss IP, which the goal being to report only pro-IP or con-IP articles and comments – not general IP. The effort was launched in September 2009 with a handful of volunteers from the AIPLA Student Committee under Jesse Ormsby and Chris McKeon. The volunteers will make weekly reports to Brian, or more often as needed, and then Brian will assemble a weekly summary report and links to be posted on the website. We have been very clear in all messages to our volunteers that no response may be made to any blogger or other content provider on behalf of the Committee or AIPLA. The Board-approved Policies regarding this Blog Monitoring Project were written by Ken Nigon, who continues to be involved in this effort. This is entirely a monitoring project, initially to determine trends and to provide information to our membership. 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. 2009 annual meeting issue
Distribution Channel Development: Initially, the Committee is focusing on three distribution channels Youth Education (Subcommittee chair Sal Anastasi), Corporate Committee, and Internet Committee with others to follow as help and experience is gained and/ or as specific needs and volunteers arise (such as a proposed “Hill Day” below). The subcommittees 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. Our Internet Subcommittee is pleased to report the highly successful online presentation in July 2009 by Professor Lisa Dolak regarding the appearance of IP in the media to better understand how IP is being reported. This will also be posted on our Website. A follow up presentation is being considered to provide our membership with detailed facts and arguments to help them effectively rebut some of the myths about the IP system as they circulate through their respective communities and relationships. Consequently, the creation of a Subcommittee for Press and the Media is planned. The Youth Education Subcommittee under Sal Anastasi and Scott Daniels continues to present live demonstrations of youth education programs to provide a public understanding of intellectual property for children and their parents and teachers, with specific teaching examples. It is a goal of this subcommittee to continue to develop additional resources and find ways to organize them for ease of use, as well as get permissions from selected sources to incorporate their materials into pre-made packets for distribution to volunteers wanting to go into schools and make presentations about IP law. A Youth Education SubCommittee working document has been prepared, setting out goals and directions, which will be posted on the website. The next step is 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 Subcommittee 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 antipiracy outreach to students. While initially focused on younger children, the Subcommittee has also started efforts to build resources for university students as well through John Calvert at the PTO. 2009 annual meeting issue
The Internet Subcommittee is working with the AIPLA Fellows to set up and train a group of volunteer Fellows to begin interacting with Wikipedia definitions of key IP terminology in an attempt to provide a balanced viewpoint informed with the wisdom of the Fellows in those definitions. An article and presentation is planned to combat Negative Perceptions in coordination with Jennifer Rankin-Byrne and Richard Maulsby at the Office of Public Affairs of the PTO, who have also been charged with changing the negative views in the public regarding IP. We have also made initial efforts into producing a series of short podcasts for our website on initial IP topics, but this effort may be hampered by budgetary constraints. The “Hill Day” Project will probably be tabled for now, but we continue to work with Vince Garlock on a proposed project to develop procedures and support, perhaps coordinated with the WIPO Hill Day in the Spring. The intended focus is advocacy in support of the AIPLA’s efforts on the Hill, and eventually to provide an opportunity for AIPLA members more generally to visit the District and their individual representatives (even representatives who are not key defined players in IP committees and subcommittees) to increase awareness and education on Intellectual Property and its value and impact to them and other constituents. The Committee and HQ would help coordinate the effort of getting appropriate appointments as well as organizing a social event at or around HQ for those members who travel to participate. The goal would be to find a way to set this up on a recurring, possibly annual basis, at a time when the congressmen and women are likely to be reasonably available, but do so in a way which reduces possible negative impacts to specific AIPLA lobbying efforts and instead maintains a much more general, consensus, theme level approach to the interactions. A Subcommittee for Congress & the Courts identified previously may be created to help with this and future efforts in this channel or direction. Jeff Lewis has also expressed an interest in the education of Judges in the benefits of intellectual property. 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 PTO and Copyright Offices, IPO, ABA-IL, INTA, and aipla bulletin
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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 Genetic Resources, Traditional Knowledge and Folklore Thomas Moga, Chair (left photo) DeAnn Smith, Vice-Chair (right photo) ___________________________________________
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he newly formed Special Committee on Genetic Resources, Traditional Knowledge & Folklore was introduced at the Annual Meeting in October. A brief and informal inaugural meeting was held at this time.
will encourage US and foreign members who have an understanding of these issues or who are interested in developing such an understanding to actively participate in Committee activities.
The Special Committee has several tasks. First, we will join existing committees to present educational sessions on genetic resources, traditional knowledge and folklore at future meetings. Second, we will advise the Board as to the fundamental issues involved in genetic resources, traditional knowledge, and folklore and will further advise the Board as to the impact of these issues both domestically and internationally. Third, the Special Committee will informally review legislation, regulations and treaties around the world in the areas of genetic resources, traditional knowledge and folklore. Fourth, we will, as required, prepare position papers and comments on such legislation, regulations and treaties. Fifth, the Special Committee
The Special Committee will hold a joint meeting with the Emerging Technologies Committee and the IP in Latin America Committee at the Mid-Winter Institute. We will particularly look at laws and practices related to genetic resources in Brazil, China and India. A brief business meeting will be held following the joint committee meeting.
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Looking ahead to the Spring Meeting, the Special Committee will hold a session directed to traditional knowledge and folklore. We hope to see all of you at the Mid-Winter Meeting.
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Special Committee on the FDA Myra H. McCormack, Chair (left photo) Freddie K. Park, Vice-Chair (right photo) ___________________________________________
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ur 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. At the 2009 Annual Meeting, the FDA Clearance of Trade/Brand Names Subcommittee, Michael Lang, Chair, and Allison Strickland, Vice Chair, presided over the CLE presentation on the FDA’s clearance process for brandnames/tradenames proposed for FDA-regulated products by Susan M. Proulx, PharmD, MED-E.R.R.S., Horsham, PA. Dr. Proulx’s presentation was very well attended and her Power Point slides are available of the committee’s AIPLA webpage. We originally formed 4 subcommittees but have consolidated two of the committees. The committees are active and have provided comments for AIPLA Board adoption and presentations at the stated meetings. In addition to the FDA Clearance of Trade/Brand Names Subcommittee, the other two subcommittees are: Biosimilars Subcommittee: Chair, Pam Politis, Endo Pharmaceuticals, and Vice Chair, Chad Landmon, Axinn Veltrop & Harkrider. This subcommittee presented an update on all the pending biosimilar legislation at the 2009 Mid-Winter Meeting and an update at the 2009 Spring Meeting and continues to monitor these bills and update members on policy matters.
Section 4 of the QI Act which amends Section 505 of the FDCA Act. The comments were approved by the AIPLA Board and submitted to the FDA. This subcommittee is currently working on an AIPLA position paper on reverse payments/settlement agreements and authorized generics. They were able to interest the Antitrust Committee in joining the effort. The intent is to provide the AIPLA Board with a position paper for adoption at the 2009 Annual Meeting. The former Paragraph IV Litigation Subcommittee, lead by Chair, Jeff Lewis, Patterson Belknap Webb & Tyler, and Vice Chair Kevin Nelson, Locke Lord Bissell & Liddell has been consolidated into the Hatch-Waxman Subcommittee. The Paragraph IV Litigation subcommittee provided a presentation at the 2009 Spring Meeting on “30-Month Stays and DJs.” The entire committee participated jointly with the Biotechnology Committee to prepare comments on the draft Report to the Secretary of Health and Human Services, “Public Consultation Draft Report on Gene Patents and Licensing Practices and Their Impact on Patient Access to Genetic Tests” 74 (52) Federal Register 11730 (March 19, 2009) (hereinafter SACGHS). The comments were adopted by the AIPLA Board and forwarded to the NIH on May 15, 2009. The committee is planning a Joint Committee Meeting with the Biotechnology Committee at the upcoming Spring 2010 Meeting.
Hatch-Waxman Subcommittee: Chair, Kurt Karst, Hyman Phelps & McNamara and Vice Chair, Lauren Stevens, Finnegan Henderson. This subcommittee prepared comments on FDA’s implementation of
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USPTO Inter Partes Patent Proceedings (formerly, Interference) Todd Baker, Chair (left photo) Herb Hart, Vice-Chair (right photo) ___________________________________________
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he meeting, attended by about 70 individuals, including a number of present and former Administrative Patent Judges, opened with a discussion of the committee’s new name and scope of interest, including not only interferences, but inter partes reexamination and the proposed post-grant review and derivation proceedings. With that broader focus, the committee expects its membership to grow in the coming year. Brief reports on the activities of the subcommittees followed. Existing subcommittees are (1) interference rules and standing order; (2) inter partes reexamination; and (3) post-grant review proceedings. Also discussed was the committee’s plan to organize and present a full CLE program at the 2010 Spring Meeting, with the likely topic being inter partes reexamination. Committee members were asked to volunteer their ideas and their time in planning that proposed program. Following that, the floor was opened for discussion of future impact of Agilent v. Affymetrix, a case for which the committee had prepared and filed an amicus brief in support of the request for rehearing and en banc consideration filed by Affymetrix. That brief did not take a position on the merits of the case; rather it advocated that the Court resolve the inconsistency in approaches to claim construction under the panel’s decision. The primary focus of the discussion was directed to attempts to predict what action the Board of Patent Appeals and Interferences would take in future cases in view of the denial of en banc consideration. As became clear as the discussion progressed, the practical impact at the Board is very unclear.
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Specifically, there is no intent from the Board to provide practitioners or examiners any forward-looking guidance on interpreting copied claims. Next, the committee received a State of the Board report by Chief Administrative Patent Judge Fleming, stating, briefly, that less than 50 interferences are currently pending (an all-time low), with pendency of terminated interferences dropping to 10.1 months. The number of ex parte appeal filings, however, has reached an all-time high, with an “inventory” of 12,577 and an average pendency (from the point of docketing) of 7.7 months (up from 6.4 months for the prior period). Plans for dealing with the increased caseload include: (1) Develop and implement plans for more efficient chamber operations, (2) Develop and implement approaches to allow for shorter opinions, (3) Develop and implement ex parte rules to improve appellate practice to allow for efficient decision making, (4) Improve Examiner’s Answers, and (5) Develop and implement Judges’ new productivity goals. A copy of the full report has been posted on the committee’s web page.
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Women in IP Law
Daphne C. Lainson, Chair (left photo) Carey C. Jordan, Vice-Chair (right photo) ___________________________________________
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t the 2009 Annual Meeting, a joint committee breakfast meeting was held with the Corporate Practice Committee. The meeting was attended by over 200 men and women who listened to a panel presentation entitled, “Women at the Top of Their Game: How to Get There, How to Stay There, and How to Help Others Along the Way.” The panel consisted of Margaret Boulware from Baker & McKenzie LLP, Cynthia Weber from Sughrue Mion, PLLC, Mary-Ellen Devlin from Boehringer-Ingelheim USA Corporation, Georgann S. Grunebach from Fox Group, and Kimberly VanVoorhis from Morrison & Forrester LLP. The panel was moderated by the talented Harrie Samaras of the ADR & Law Office of Harrie Samaras who led our panelists in a discussion of what it means to be at the top of your game, how that definition evolves over the course of a career, what responsibility successful women have to assist other men and women in reaching career success, and how to overcome obstacles on the path to career success. Thank you to all of our panelists and our moderator for an insightful and engaging program. At the committee meeting we also introduced the launch of our new Electronics and Communication Initiative Subcommittee. Randi Karpinia from Motorola is chairing the subcommittee and already has made significant strides in helping our committee to enter the technological age by expanding our online presence and outreach to existing and potential committee members. The Women in IP Law Committee now has a group on LinkedIn that is open to all AIPLA members. Please visit http://www.linkedin.com/ groups?gid=2108091&trk=hb_side_g to join this group. The purpose of the LinkedIn group is to give committee members access to announcements about the committee’s activities, to give committee members an opportunity to post their own announcements about events that may be of interest to committee members, and to serve as an online forum for discussion of topics pertinent to women in IP law. In conjunction with the new LinkedIn group, we also introduced the committee’s new blog that can be accessed at www.
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womeniniplaw.blogspot.com. The blog is another forum to learn about what the committee is involved in, to engage in discussion, and to provide suggestions for future committee events. Updates that are made to the blog are automatically sent to the committee’s LinkedIn page so that committee members can elect to follow the blog or LinkedIn but do not need to follow both. Shortly after the meeting Randi held a teleconference for interested volunteers who are going to assist the committee with developing a Facebook group and a twitter account. The goal is to bring the Women in IP Law Committee to you so that when you log on to your preferred medium of communication (the blog, Facebook, or LinkedIn), you will receive up-todate information about the committee. If you are interested in assisting with these efforts or if you have ideas for content and design, please contact Randi at Randi.Karpinia@motorola.com. Meg Boulware and Nancy Klembus also discussed the progress they made over the summer leading the Subcommittee on Advancement and Retention of Women in IP law. Over the last several months Meg, Nancy, and the other subcommittee volunteers worked with the company that develops AIPLA’s annual economic survey to develop a similar survey designed to study what factors influence the advancement and retention of women and minorities in the profession. The proposal was presented to the Board in September and garnered significant interest and support. The Board would like to incorporate the survey into a membership survey that AIPLA is developing. Meg and Nancy will continue to work with AIPLA staff and the Board to make sure that the membership survey addresses issues related to the advancement and retention of women and minorities. Thank you to Meg, Nancy, and all the volunteer members of the subcommittee for all of the work you put into getting this project up and running. In addition, thank you to our Board liaison, Denise DeFranco for presenting the proposal to the Board and advocating on behalf of the committee. Please watch for the survey in the next several months and make sure to complete it when you receive it.
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Last but not least, Hathaway Russell of Foley Hoag LLP was introduced as this year’s director of the Women in IP Law Networking Dinners. This year marks the third year of the dinners and already Hathaway has lined up 20 hosts. Please save-the-date for February 11, 2010 and make sure to sign-up as
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soon as you receive an invitation (early January) as the dinners often reach capacity very quickly. Thank you in advance to Hathaway for all of her hard work in organizing the dinners. If you are interested in hosting a dinner in your city, please contact Hathaway at hrussell@foleyhoag.com.
2009 annual meeting issue
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2009 Annual Meeting - Washington DC October 15-17, 2009 Marriot Wardman Park Hotel CD-DVD Order Form THURSDAY MORNING CONCURRENT TRACK #1 (9:00 AM – 12:00 NOON) THE VIRTUAL WORLD OF COPYRIGHTS AND TRADEMARKS; AND THE BEST PRACTICES IN TRADEMARK LICENSING Moderator: Kimberly N. Van Voorhis (Bio) The Virtual World of Copyright and Trademarks What is the Virtual World? Avatars, Video Games, Streaming Ads and the Movies -Karen R. Berry (Bio, Paper, Slides) How Is Money Made in the Virtual World? -Lara Pitaro Wisch (Bio, Paper, Slides) How Does the Law Operate in the Virtual World? -Pamela A. Kilby (Bio, Paper, Slides) Best Practices in Trademark Licensing License Drafting – The Good, the Bad and the Ugly -Eli B. Nathanson (Bio, Paper, Slides) Licensing Disputes and Interpretation -Richard Raysman (Bio, Paper, Slides) License Arrangements in an Economic Downturn -Christopher J. Mugel (Bio, Paper, Slides) THURSDAY – MORNING CONCURRENT TRACK #2 (9:00 AM – 12:00 NOON) UNCLE SAM’S SWEET SPOT: UNDERSTANDING USPTO RESTRICTIONS AND EXPORT LICENSES Moderator: Wayne P. Sobon Foreign Filing, Licenses, Secrecy, Orders and Export Controls: Pitfalls for the Unwary -Joel Miller (Bio, Paper, Slides) What Do US Export Laws Have to Do with My Patent Filings? -Antoinette D. Paytas (Bio, Paper, Slides) Too Many Concerns, So Little Time: An Inside Perspective from a Multi-National Company -Valentina A. Boyet (Bio, Paper, Slides) UK, France, Germany and Japan: With Record-Breaking Decisions, Is the Inventor King? -Michael Gilbert & Ed Round (Bio, Paper) China: Should I be Concerned When Entering this Emerging Market? -Ying Tuo (Bio, Paper, Slides) Ethical Musings on First Filing and Inventor Remuneration -Bradley A. Forrest (Bio, Paper, Slides, Slides 2) THURSDAY MORNING CONCURRENT TRACK #3 (9:00AM – 12:00 NOON) EXPERIENCE NEEDED! ALTERNATIVE PATHS FOR EXPANDING YOUR CAREER: IN-HOUSE, PRIVATE PRACTICE AND PRO BONO Moderator: Chen Wang (Bio, Slides) Crossing Over to the Dark Side Outside In – Making the Transition to Inside Counsel Using the Skills Learned as Outside Counsel -Philip T. Petti (Bio, Paper, Slides) From In-House to Private Practice: Litigation Lessons That (Hopefully) Have Been Learned -Grant W. Lynds (Bio, Paper, Slides) Happily Married? The Relationship Between Corporate & Private: Practitioners Creating and Maintaining In-House and Outside Counsel Relations During the Global Recession Outside Counsel Perspective -Lou A. Budzyn (Bio, Paper, Slides)
Morning Concurrent Track #3 continued (9:00 am – 12:00 Noon) In-House Perspective -Nanette S. Thomas (Bio, Paper, Slides) A Marriage Made in Heaven – Practical Recommendations for Achieving and Maintaining a Positive Relationship Between In-House and Outside Counsel In-House Perspective -Georgann Grunebach (Bio, Paper, Slides) Outside Counsel Perspective -H.M. (Bud) Bedingfield (Bio, Paper, Slides) So You Want to Do Real Legal Work? Is Pro Bono Work for You? How to Save the World, One IP Lawyer at a Time -Elizabeth M. Burke (Bio, Paper, Slides) An IP Lawyer Gets Tough on Crime – and Gets Some Pro Bono -Andrew N. Stein (Paper, Slides) THURSDAY AFTERNOON CONCURRENT TRACK #1 (2:00 PM – 3:30 PM) ETHICS: CURRENT TRENDS IN INEQUITABLE CONDUCT IN PATENT LITIGATION Moderator: Leland Schultz (Bio) How Far Do You Have to Look Under the Rock: A Litigator’s View of Inequitable Conduct -Karl Fink (Bio, Paper, Slides) Praxair In View of Star Scientific and Larson -Christopher J. Harnett (Bio, Paper, Slides) InFerring Intent: Ferring, Praxair and Their Progeny -Theodore J. Mlynar (Bio, Paper, Slides) Judicial View of Inequitable Conduct During Litigation (View from the Bench) -Chief Judge Paul R. Michel (Audio) THURSDAY AFTERNOON CONCURRENT TRACK #2 (2:00 PM – 3:30 PM) LITIGATING IN A WORLD WITHOUT BORDERS – MULTIPLE PARTIES, AND COURTS AND COUNTRIES Moderator: Ronald E. Myrick Current Trends in Recognizing Extra-Territorial Privilege -Chris Schlicht (Bio, Paper, Slides) Managing Communications with a Multi-National Team -Mark Rachlin (Bio, Paper, Slides) Multi-District Litigation: Getting In, Getting Out, and Dealing with the MDL Panel -David Schnorrenberg (Bio, Paper, Slides) Practice Points and Ethics Tips: Multiple Parties and Multiple Issues Joint Defense Agreements and Joint Representations -Buckmaster De Wolf (Bio, Paper) THURSDAY – AFTERNOON CONCURRENT TRACK #3 (2:00 – 3:30 PM) EFILING AND ALPHABET SOUP: BEST PRACTICES FOR TRADEMARK EFILING WITH THE USPTO AND TTAV USING TEAS AND ESTTA Moderator: Janet Marvel (Bio) Practitioner Pitfalls: Avoiding Common Mistakes Using the Trademark Electronic application System (TEAS) * -Craig Morris (Bio, Paper, Slides) Strategies for Successfully Navigating the TTAB Rules and Electronic System for Trademark Trials and Appeals (ESTTA) -Timothy M. Kenny (Bio, Paper, Slides) Best Practices for Trademark e-Commerce with the USPTO -Carl Oppedahl (Bio, Paper, Slides)
*Produced by the United States Patent & Trademark Office; no copyright is claimed in the United States in these presentations or associated materials.
COMMITTEE EDUCATIONAL SESSIONS (3:30 PM – 5:30 PM) ELECTRONIC & COMPUTER LAW AND EMERGING TECHNOLOGIES COMMITTEES International Green Technology Patenting Trends Including Litigation and Prosecution Perspectives and Tips Part 1 – Emerging Technologies Moderator: Robert O. Lindefjeld and Henry J. Behnke III (Paper, Slides) Green Technologies at NASA -Bryan A. Geurts (Slides) Part 2 – Patenting Trends Moderator: Manny Schecter (Bio, Paper, Slides, Slides – Agenda) Predicting the Future of Patents and Enforcement in the Renewable Energy Field -James Klaiber (Bio, Paper, Slides) Prosecuting Green Technologies Before the USPTO -Scott Stinebruner (Bio, Paper, Slides) The International Patent Landscape for Green Technologies -Matthew R. Bryan (Bio, Paper, Slides) THURSDAY COMMITTEE EDUCATIONAL SESSIONS (3:30 – 5:30PM) US BAR/EPO LIAISON COUNCIL AND IP PRACTICE IN EUROPE COMMITTEE Program Introduction and Committee Business -Jonathan M. Madsen Part 1: Prospects for Patent Law Harmonization and Patent Office Work Sharing Moderator: Naomi Abe Voegtli View from the EPO -Sylvie Strobel (Bio, Paper, Slides) View from the United States -Alan J. Kasper (Paper, Slides) Panel Discussion- Moderator and Speaker -Michael K. Kirk (Bio) Part 2: Quality Initiatives and Their Effects on EPO Applicants Moderator: James D. Carruth (Bio) Trilateral Quality Initiatives -Mark Guetlich (Bio, Slides) Suggestions for US Applicants in the EPO -Colin Philpott (Bio, Paper, Slides) An Applicant’s Views -Will Jones, II (Paper) THURSDAY COMMITTEE EDUCATIONAL SESSIONS (3:30 – 5:30 PM) SPECIAL COMMITTEE ON FDA LAW FDA Approval of Tradenames/Brands: Current and Future FDA Practice and Guidelines Moderator: Michael J. Lang -Susan M. Proulx (Paper, Slides) Medication Safety Issues FDA Concept Paper PDUFA IV Pilot Program FRIDAY – MORNING CONCURRENT TRACK #1 (8:45 – 11:45 AM) BEST PRACTICES FOR PATENT & TRADEMARK PROSECUTION AND PATENT OFFICE DATA THAT CAN IMPROVE YOUR PRACTICE Moderator: Roger Browdy Patent Best Practices Avoiding the RCE Merry-Go-Round: Best Practices for Conducting Prosecution from the Perspective of the USPTO, a Former Examiner and a Private Practitioner, Including Drafting, Examiner Interviewing and Other Prosecution Tactics and Strategies * -Brian Hanlon (Bio, Slides) -Jeff Lindeman (Bio, Paper, Slides) -W. Benjamin Glenn (Bio, Paper, Slides) Practical Tips for Increasing Chances of Success Before the Board Patent Appeals and Interferences During Ex Parte Patent Appeals * -Vice Chief Judge James Moore (Bio, Slides) Patent Office Data That Can Improve Your Practice -Bradley A. Forrest (Bio, Paper, Slides, Slides 2) -Manny Schecter (Bio, Paper, Slides, Slides Agenda)
Friday – morning concurrent track #1 continued Trademark Best Practices Tensions and Challenges in Extending Your Trademark and Domain Name Portfolio Internationally -Ellen B. Shankman (Bio, Paper, Slides) Successful Use of the Madrid Protocol -Lynn Sullivan (Bio, Paper, Slides) FRIDAY – MORNING CONCURRENT TRACK #2 (8:45 AM – 11:45 AM) PREPARING AGREEMENTS, CONSIDERING REPRESENTATIONS, WARRANTIES AND NEGOTIATING INTELLECTUAL PROPERTY ASPECTS, INCLUDING OWNERSHIP, SECURITY INTERESTS AND NOTICE FILING REQUIREMENTS Moderator: Douglas Sorensen (Bio) Due Diligence -Gael Diane Tisack (Bio, Paper, Slides) Representations and Warranties in Purchase and Sale Agreements -Deborah J. Peckham (Bio, Paper, Slides) Negotiating IP Aspects of Contracts -Michael M. Geoffrey (Bio, Paper, Slides) Bankruptcy Considerations -Baila H. Celedonia (Bio, Paper, Slides) Closing Conditions – Close the Door So It Can’t Be Reopened! -Nancy H. Lutz (Bio, Paper, Slides) Patent (Re)Think With Almost Every Aspect of the Patent System in Flux Today, Some Might Think We Need to Completely Rethink Our Approach; But it Turns Out None of the Hot Issues Today Are New and If We Heed Lessons From the Past, Our Changes Today Are in the Wrong Direction -F. Scott Kieff (Bio, Paper-1, Paper-2, Slides) FRIDAY – MORNING CONCURRENT TRACK #3 (8:45 AM – 11:45 AM) STRATEGIES FOR RESOLVING GLOBAL TRADEMARK DISPUTES IN A COST CONSCIOUS ECONOMY Cross-Border Trademark-Domain Name Disputes and Problems and Opportunities Arising from Generic Top-Level and Internationalized Domain Name Expansion Moderator: Joe Keeley Cross-Border Trademark-Domain Name Disputes -Tim Bourne (Bio, Paper, Slides) Problems and Opportunities Arising from Generic Top-Level and Internationalized Domain Name Expansion Trademark Owners, Business, and Consumers Perspective -Marc-Anthony Signorino (Paper, Slides) Registrar Operators and Registries Perspective -Jeffrey J. Neuman (Bio, Slides) ICANN Perspective -Margie Milam (Bio, Paper, Slides) How International Arbitration and Other ADR Strategies Can Be Used Effectively for Resolving Trademark Disputes Moderator: Rex B. Stratton (Bio) Should You Choose International Arbitration As Your Method for Dispute Resolution? 5 Reasons for Saying Yes and 5 Reasons for Saying No -Christopher J. Woods (Bio, Paper, Slides) Choosing the Place of Arbitration – Think Before You Take a Seat! -Claudia Ray (Bio, Slides) -P. Jean Baker (Bio, Paper 1, Paper 2, Slides)
*Produced by the United States Patent & Trademark Office; no copyright is claimed in the United States in these presentations or associated materials.
FRIDAY – AFTERNOON CONCURRENT TRACK #1 (2:00 PM- 3:00 PM) THE SUPREME COURT AND THE FEDERAL CIRCUIT: WHAT LIES AHEAD AND WHAT IS THE EFFECT ON PRACTITIONER Moderator: Gary R. Hoffman (Paper) Panelists: -Chief Judge Paul R. Michel (Audio) -Honorable Kathleen McDonald O’Malley (Audio) -Seth P. Waxman (Audio) -Paul D. Clement (Paper, Audio) FRIDAY – AFTERNOON CONCURRENT TRACK #2 (2:00 PM – 3:30 PM) DESIGN PROTECTION AND FUNCTIONALITY: EVER THE TWAIN SHALL MEET? PROTECTING THE VISUAL APPEARANCE OF AN OVERALL DESIGN THAT HAS FUNCTIONAL FEATURES – VIEWED THROUGH LENSES OF DESIGN PATENT, COPYRIGHT AND TRADE DRESS LAWS Moderator: Tomas Moga (Bio) Functionality & Design Patent Infringement: Jilted by Our Egyptian Goddess – The Design Patent Perspective -Perry J. Saidman (Bio, Paper, Slides, Audio) Separability: Breaking Up is Hard to Do – The Copyright Perspective -Robert E. Browne (Bio, Paper, Audio) The Emperor Has No Clothes – The Trade Un-Dress Perspective -Kenneth B. Germain (Paper, Audio) FRIDAY – AFTERNOON CONCURRENT TRACK #3 (2:00 PM – 3:30 PM) ETHICS: FRAUDULENT PROCUREMENT OF PATENTS, TRADEMARK AND COPYRIGHTS: A MINEFIELD FOR THE UNWARY PRACTITIONER Moderator: John G. Tolomei (Bio) Copyright and Copywrongs: The Perils and Consequences of Fraudulent Registrations with the Copyright Office - David Carson (Bio, Paper, Slides) Fraud Upon the Trademark Office: Is Medinol Going Too Far? -Susan Hightower (Bio, Paper, Slides) Patent Prosecution: Avoiding Pitfalls and Pratfalls That Can Lead to Inequitable Conduct Charges -Cameron K. Weiffenbach (Bio, Paper, Slides) FRIDAY COMMITTEE EDUCATIONAL SESSIONS (3:30 PM – 5:30 PM) COPYRIGHT LAW AND CORPORATE PRACTICE COMMITTEES INTELLECTUAL PROPERTY AND CYBER-INSURANCE – YOU HAVE FIRE INSURANCE FOR YOUR BUILDING, SHOULDN’T YOU HAVE INSURANCE FOR YOUR IP? Moderator: Georgann Grunebach (Bio, Paper, Slides) IP and Cyber-Insurance: An Overview of Legal Issues -Robert D. Chesler (Paper, Slides) IP Insurance from a Corporation’s Perspective -George Love (Slides) Current Marketplace and Trends in Cyber-Insurance -Christopher Keegan (Slides) Current Marketplace and Trends in IP Insurance -Kimberly Klein Cauthorn (Bio, Paper, Paper Appendix, Slides) FRIDAY COMMITTEE EDUCATIONAL SESSIONS (3:30 PM – 5:30 PM) Industrial Design Committee Current Issues in Design Law Moderator: Christopher V. Carani
The ITC and Design Patents: A New Frontier -Clint Gerdine (Bio, Paper 1, Paper 2, Paper 3, Slides) European Perspective: Who Is the Informer Observer? -Pedro Rodinger (Paper, Slides) -Etienne Sanz de Acedo (Slides) Design Prosecution: Multiple Embodiments, Dotted Lines and Surface Shading * -USPTO Representative Invited FRIDAY COMMITTEE EDUCATIONAL SESSIONS (3:30 PM – 5:30 PM) IP PRACTICE IN LATIN AMERICA AND THE LICENSING AND MANAGEMENT OF IP ASSETS COMMITTEES A Global Perspective of IP Licensing – A Comparative Discussion; Do’s and Don’ts; and How Recent Developments Have Changed Licensing Practices Around the World Moderator: Roberto Capriotti (Bio) A Perspective from Brazil: Philips Electronics vs. Brazilian Patent Trademark Office -Claudio Szabas (Paper, Slides) A Perspective from China -Shaojie Chi (Paper, Slides) A Perspective from Japan -Yuichi Ide (Bio, Paper, Slides) Report on United Nations Commission on International Trade Law (UNCITRAL) -Robert M. Bauer (Slides) -Stephen Y. Chow (Bio, Paper, Slides) SATURDAY PLENARY ANNUAL REVIEW & THE NATIONAL MODEL PATENT JURY INSTRUCTIONS Annual Review Moderator: Rochelle Seide Patents -John F. Duffy (Slides) Trademarks -Jonathan Hudis (Bio, Paper, Slides) Copyrights -Brian D. Ledahl (Bio, Paper, Slides) Trade Secrets -Vitoria A. Cundiff (Bio, Paper) Ethics -Michael Davitz & Jeremy Lowe (Bio, Paper, Slides) Jury Instructions: A View From the Bench Moderator: Edward R. Reines (Bio) -Honorable T. John Ward (Bio, Audio) -Honorable Patti B Saris (Audio) -Honorable Ronald M. Whyte (Audio) -Roderick R. McKelvie (Audio)
*Produced by the United States Patent & Trademark Office; no copyright is claimed in the United States in these presentations or associated materials.
2009 ANNUAL MEETING – WASHINGTON, DC CD-DVD ORDER FORM *Please note the CD-DVD features audio and all speaker materials submitted to AIPLA. Total cost for the 2009 Annual Meeting CD-DVD (please check Member or Non-Member):
Member: $195 plus $5 shipping (via UPS Ground) and handling for each CD-DVD
Non-Member: $295 plus $5 shipping (via UPS Ground) and handling for each CD-DVD
Overseas orders will not be charged the $5 shipping and handling charge; however, they will be invoiced at cost. To ensure safe delivery, all orders will be shipped via United Parcel Service. Be sure to include full street address, suite or apartment number, zip code, and contact phone number. No P.O. Box Numbers. Please indicate if RUSH delivery is needed. Additional fees for rushed orders will added to total charges.
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Name on Card: Signature: If paying by check, make checks payable to: AIPLA All order forms and payments should be sent to: AIPLA, 241 18th St. South, Suite 700, Arlington, VA, 22202 703-415-0786 (Fax) For Credit Card Orders Only. PLEASE Contact us at 703-415-0780 with any questions.
*Produced by the United States Patent & Trademark Office; no copyright is claimed in the United States in these presentations or associated materials.
» OVER 1 MILLION SCIENTIFIC DOCUMENTS EASILY WITHIN REACH, FROM IEEE The IEEE Xplore® digital library opens the door to scientific/technical information you need — easily searchable and instantly accessible. Any new patent application or existing patent defense must be built on a foundation of solid research — and demands comprehensive access to scientific and technical literature. IEEE is cited 7 times more frequently than any other publisher in this realm. And the IEEE Xplore® digital library puts it all at your fingertips: » Magazine and journal articles » Conference papers » Standards » ...for a wide range of technologies including electronics, computer hardware/software, semiconductors, aerospace and defense, telecommunications, medical devices, optics and photonics, and others You get instant access to high-quality, full-text documents. Free keyword searching and unlimited viewing of basic abstracts help you hone in on exactly what you need. Then, purchase the documents you need immediately online, via credit card. Or, subscribe to IEEE Enterprise, a prepurchase plan offering 3 different subscription levels based on your usage.
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career center
Have you seen our online Career Center? AIPLA | Professional Development - Career Center
The AIPLA Career Center helps job seekers in the intellectual property law industry find new employment opportunities. The job board allows members of the association, and site users, a place to post their resumes for free. Along with a resume bank, the site offers listings of career opportunities. To get started you need to first set up an account.
Search
Professional Development AIPLA Career Center Online CLE
There is a “Job Alert” system that notifies job seekers by email of new job opportunities that match their search criteria and an anonymous resume feature that enables job seekers to list their experience and qualifications in a protected environment. By giving both active and passive job seekers the ability to anonymously post their resumes, the Career Center allows job seekers to stay connected to the employment market while maintaining full control of their confidential information.
Young Lawyers Women Lawyers Mentoring Corporate Lawyers Diverse Lawyers How To . . . Manuals Alternative Dispute Resolution Registry Law Practice Management Ethics & Professionalism Liaison Program
Home > Professional Development > Career Center
Professional Development Career Center This area was constructed to help connect our members with new employment opportunities. Use the links below to guide you as you begin your job search. Employers and recruiters: You now have access to our specialized niche. In addition to our Career Center, AIPLA is supporting the USPTO in their Examiner Recruiting efforts. Click on the link to learn more about career opportunities at the U.S. Patent and Trademark Office. Job Seekers
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search. Create and manage job alerts and view job account. Post jobs to our site and browse Employers can easily post job offers from Employers. candidates interested in your positions. opportunities and review resumes. Questions/Feedback If you need assistance or have feedback about this service contact customer service Once you set up an account, you can: gain access to active and passive job About AIPLA IP Issues & Advocacy IP Practice Areas Professional Development Educational Materials Meetings & Events Join Site Map Login Logout Related Links Help (FAQ) Home seekers; search resumes for FREE and only pay for the candidates we connect with you; and you can purchase a single job posting or a package and give our job seekers access to view your posting. Your job will also be emailed out to our job seekers through our Job Alert system. To view resumes you need to go through a one-time verification process that takes just a few minutes. http://careers.aipla.org/home/index.cfm?site_id=714 (1 of 2) [8/15/2007 12:26:34 PM]
Visit http://careers.aipla.org to view this service.
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