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AIPLA 2012-2013

Annual Report Bigger and Better...for You

Vision + Mission VISION:


AIPLA will expand its role as an

We serve our members, fostering

works in keeping with the public

innovator, powerful advocate, and

their professional and leadership


visible global leader in intellectual

development, helping nurture

property through our commitment

and mentor them as they advance

to education, outreach, member

within our profession, keeping them

service, and advocacy.

informed in an ever-evolving legal environment, and enriching the diversity of the profession in which we practice, while responding to their personal and professional needs; We serve public policy leaders, whose mission is to develop, implement and maintain our intellectual property system, assisting them with objective and unbiased analysis, and helping establish and maintain fair and effective global laws and policies that stimulate and

We serve the public, providing education as to the daily value and benefits of a strong intellectual property system that fosters incentives for creativity & innovation, while balancing the public’s interest in healthy competition, reasonable costs and basic fairness; and We serve our association and its employees, providing sound management, financial stability, stable succession, and a vibrant, respectful and collaborative workplace environment, delivering oppor tunities and suppor t for all to lead, create and thrive.

reward innovation and creative

Strategic Goals ADVOCACY:



AIPLA will provide crucial leadership

AIPLA will support the professional

AIPLA will expand its influence to

and unbiased analysis leading

and intellectual growth of its members

the global community and provide

the way for world-class policy

through a flexible organizational

leadership and guidance for the

and decision-making, while

framework and innovative channels

development of sound global

attracting membership, ideas, and of communication, delivering

intellectual property standards,

resources as a highly sought after

outstanding services, cost-effective

laws and policies.

and respected thought leader.

programs and mentoring opportunities,

PUBLIC EDUCATION: AIPLA will educate the public about the daily value of intellectual property so that its importance is understood and appreciated.

2 • A I P L A 2012- 2013 Annua l Repor t

thereby ensuring that AIPLA remains the premier intellectual property association, and attracts IP professionals from around the world.

AIPLA 2012-2013

Annual Report

Table of Contents



27 31 35






AIP L A 20 1 2-20 1 3 A n nu al R epor t • 3



...I am overwhelmed by how much we have accomplished as an Association.

4 • A I P L A 201 2- 2013 Annua l Repor t

It is a cliché to say that the last 12 months—my year as AIPLA President—have flown by quickly, and yet they have. As I look back over this last year, I am overwhelmed by how much we have accomplished as an Association. In this annual report, you will read about our work on Capitol Hill, dealings with the government on regulatory issues, and amicus filings (because of course intellectual property stayed front and center at the US Supreme Court again this year) and activities on the domestic and global stages. While we have a lot of intellectual property issues to address domestically, I also had the opportunity to represent American IP interests around the world. I have visited more than a dozen countries on five continents in the last 12 months, and in each I have found uniform admiration and support for the American system. While traveling I am regualarly asked where the American IP system is going, because they too see the destructive nature of the current events in our country.

These international meetings have highlighted that there are many IP issues that transcend boundries and that are being experienced in each of these countries and globally. Here in the USA, it has become clear that there is a need to educate the public about IP, and so “Taking IP to the People” became a mantra for my year. One way to increase our communication was increasing the domestic observance of World IP Day, the annual celebration dedicated to intellectual property as a means of stimulating innovation and creativity. Traditionally, AIPLA participated in celebrations in the Washington, DC area—on Capitol Hill, at the Copyright Office, and at the US Patent and Trademark Office—but this year we expanded World IP Day celebrations to be around the US (and participated in two international events as well). Those celebrations still included Washington, DC, of course, but they also took place in Charlotte, NC; Dallas, TX; Denver, CO; Detroit, MI; San Jose, CA; and New York, NY;

Vietnam and Thailand. The events were as varied as the locations, with discussions of fashion law, trademarks, licensing, high technology and even song writing. I hope you will agree after reading this Annual Report that AIPLA had a remarkable year. And it is thanks to AIPLA’s Committees, Board of Directors, and professional staff. Each, individually and working together, is the lifeblood of our Association. They continue to amaze me at their hard work as well as the collective breadth of knowledge and creativity. I have been honored to work with people who truly are the best and brightest in our profession, and I thank you for the privilege of serving as AIPLA’s President and representing your interests.

Jeffrey I.D. Lewis AIPLA President 2012-2013 AIP L A 20 1 2-20 1 3 A n nu al R e po r t • 5

Advancing IP Issues

6 • A I P LA 201 2- 2013 Annua l Repor t


AIPLA members are proud of our work advancing the IP profession.


AIP L A 20 1 2-20 1 3 A n nu al R e po r t • 7

Advancing IP Issues

Each time we conduct a member survey, AIPLA’s advocacy efforts always rate high as an important member benefit. This involves work with Capitol Hill, the White House, the USPTO and government agencies. Here is a sampling of what we worked on this year:

8 • A I P LA 201 2- 2013 Annua l Repor t

O n Capit ol Hi l l

W i t h t h e G o v e r nm e nt

As the 112th Congress drew to a close, important

As the sequestration budget cuts made sweeping

intellectual property issues were addressed with the

impacts across the government, AIPLA continued

enactment of the Patent Law Treaties Implementation

to be a strong and vocal advocate for a fully funded

Act and America Invents Act Technical Corrections bill.

US Patent and Trademark Office to secure the much

With the America Invents Act implemented, the 113th

needed improvements at the heart of the America

Congress turned its attention toward calls to address

Invents Act.

the problem of abusive patent litigation. AIPLA is actively

AIPLA remained active at the US Patent and Trademark

advocating on behalf of its members to ensure the

Office, providing comments and testimony on issues

proposals properly balance the interests of patent

including patent small claims, request for continuing

owners and users of technology.

examination practice, implementation of the Patent

The Register of Copyrights and House Judiciary

Law Treaty, genetic testing, and the quality of software

Committee have called for a comprehensive review


of US Copyright Law. AIPLA is actively monitoring

AIPLA also provided commentary to the US Copyright

the discussions with the goal of being an important

Office, Federal Trade Commission, Department of

and objective resource on these issues.

Justice, US International Trade Commission, and US

In the C ourt s

Intellectual Property Enforcement Coordinator on issues such as orphan works and mass digitization,

Intellectual property issues were front and center at

patent assertion entities, exclusion order enforcement,

the US Supreme Court during the past year. AIPLA

and trade secret theft.

maintained its commitment to appellate advocacy, filing six amicus briefs in Already, LLC v. Nike, Inc.,

Gunn v. Minton, Federal Trade Commission v. Actavis,

Inc., The Association for Molecular Pathology v. Myriad Genetics, Inc., Bowman v. Monsanto Co. and Static Control Components, Inc. v. Lexmark Int’l, Inc.

AIPLA also filed amicus briefs to the en banc Federal Circuit in CLS Bank International v. Alice

Corp. Pty. Ltd., and Lighting Ballast Control LLC v. Phillips Electronics North America Corp.

I n t h e I n t e r n a t i o n a l A r e na AIPLA’s advocacy on international intellectual property issues continues to grow. AIPLA provided comments on a number of legislative and regulatory proposals to the Internet Corporation for Assigned Names and Numbers (ICANN), World Intellectual Property Organization, European Patent Office, and the IP5, as well as the governments of the People’s Republic of China, India, and Japan.

View the Ful l Annua l Repor t O n li n e

AIP L A 20 1 2-20 1 3 A n nu al R e po r t • 9

Leading the Pack with Education

10 • A I P L A 201 2- 2013 Annua l Repor t


Members looked to AIPLA for their CLE and professional development needs in record numbers this year.


AIP L A 20 1 2-20 1 3 A n nu al R epor t • 1 1

Leading the Pack with Education You asked…we answered. We’ve been busy this year, developing broader, more accessible programming on the changes in the law due to the America Invents Act , and more. S i debar W eb i na r s Launched in 2013, the webinars provide an inside look

F r o nt & C e n t e r D i s c u ss i o n S e r i e s

into the oral arguments in cases where AIPLA has

The IP industry is not all laws, rules, and decisions.

participated as an Amici. We’ve been able to bring together the counsel representing both sides of issues to help provide our members some unique insight into what the court was asking, and the issues that were most contested. The cases that we covered include CLS Bank v. Alice Corp., FTC v. Actavis, Inc.,

Molecular Pathology, Inc. v. Myriad, and Lighting Ballast v. Universal Lighting. More than 1,000 members have taken advantage of these free programs.

In n ovat e & P r ot ect— O r G et Left Behi nd This year’s theme for the 2013 Mid-Winter Institute provided attendees with a unique opportunity to bring together business executives and IP professionals to learn how to work together to protect and maximize their IP; to learn why IP is so important to a company’s survival in the 21st Century and how to successfully integrate IP innovation and protection into a business strategy. The program also included an interactive, team-building session led by a leadership trainer, bringing people together to think through best practices and procedures to create a more collaborative and cooperative environment between business executives and in-house IP counsel and between in-house and outside IP counsel to maximize the extraction of value from your IP. This really was a unique program and is serving as a model for future Mid-Winter Institutes.

Front & Center is AIPLA’s new web-based discussion

series focusing on the other side of IP­­—the business, management, logistics and enforcement of IP. This interactive series is led by industry leaders. So far, we’ve brought AIPLA members an interested look with in-house counsel on budgets, discovery, IP management, and outside counsel from Chief IP counsels from HP and Medtronic. Future programming

will provide an inside look from a judicial perspective, and an inside look from an IP enforcement perspective.

D i v e r si t y Our mission at AIPLA is to lead and serve a diverse IP community by enhancing knowledge and shaping the future of IP law. AIPLA believes that diversity among its membership is essential to our ability to accomplish this mission. Diversity embodies all those differences that make us unique individuals and includes people of different race, ethnicity, culture, sexual orientation, gender, religion, age, personal style, appearance, and physical ability, as well as people of diverse opinions, perspectives, lifestyles, ideas, and thinking. Because diversity and individual uniqueness brings creativity and vitality to an organization, we recognize the importance of diversity to AIPLA. We are, therefore, committed to providing an environment of fairness and equitable treatment of everyone, regardless of gender, race, creed, age, sexual orientation, national origin, disability, or class.

12 • A I P L A 2012- 2013 Annua l Repor t

This year, we hosted LGBT Diversity Receptions during the Annual, Mid-Winter, and Spring Meetings. Additionally, we partnered with Microsoft Legal and

Corporate Affairs on the “2013 IP Law Diversity Summit” at Stanford University in California, as well as hosted our own program on Recruiting, Retention and Advancement of LGBT IP Professionals. Once again we worked with Microsoft, as well as our own Corporate Practice, Diversity in IP Law, and Law Practice Management Committees.

Partner ing for I P E d uca t i on

CLE For New Lawyers The New Lawyers Committee spearheaded this special program designed specifically for new lawyers on topics such as “iPads for IP Lawyers” and “Ethics in Patent Prosecution.” These programs are held simultaneously through a video-conference to cities around the US. In 2013, we held these programs at 10 different law firms in seven cities.

W e bi n a r s AIPLA’s online education program has been in full

Members asked for broader, more accessible program

swing since 2004. In 2013, we offered more than 46

on the changes in the law due to the America Invents

webinars on a wide variety of IP topics, reaching

Act, and more. We delivered through our own programming,

members around the US and the globe.


On the Road

as well as through partnerships,

“ A Ne w W o r l d of Pat ent O p t i ons” with the

Association of University Technology Managers at Texas A&M University in College Station, TX. This program brought together USPTO representatives, and industry experts to help Technology Managers navigate the challenges presented with the AIA changes in the law.

“ A dv a n c e d P a t ent Pr ac t i c e Under t he Am erica I nve n t s Ac t ” with the Center for American and International Law in Dallas, TX. This program provided an interactive setting to hear how chief IP counsel of leading corporations are reacting to the implementation of the America Invents Act, and what leading lawyers in private practice are advising their clients about patenting, licensing and enforcement strategies in response to the AIA.

“ P at e nt L a w I ns t i t ut e” — AIPLA partnered with

the Duke University Law Center for Judicial Studies to provide a one-week intensive study program aimed at bringing people up to speed on the AIA on the Duke campus in Durham, NC.

“ I P a n d Na t i o n a l Innovat i on S t r at egi es in A sia - P a c i f i c ” with the University of Washington School of Law’s Center for Advanced Study and Research on Intellectual Property in Seattle, WA. As well as through our support of:

We offered traveling programs on the America

Invents Act in San Jose, Chicago, and Arlington, VA,

sponsored the Trademark Prosecution Bootcamp and

Patent Prosecution Bootcamp in Alexandria, VA, conducted Patent Cooperation Treaty Programs in Minneapolis,

MN and Alexandria, VA, a Chemical Patent Practice seminar in Wilmington, DE, and the Electronic and

Computer Patent Law Summit in San Jose, CA. We also continued our over 30-year tradition of partnering

with the USPTO to provide core IP training to Legal

Secretaries and Administrators with two programs, one in June and one in November. We did all of this, and still had record attendance at our Annual Meeting in Washington, DC, bringing

together more than 2000 IP professionals to address cutting-edge topics in IP law. At our Mid-Winter

Institute in Tampa, FL we brought together nearly 600 business executives and IP professionals, and at our Spring Meeting in Seattle, WA, where we had an

opportunity to host more than 650 IP professionals and hear from Congresswoman DelBene and Intellectual Ventures CEO, Nathan Myrvold.

“ 20 1 3 I P I n st i t u t e” at the USC Gould School of Law in Beverly Hills, CA, and “The S t at e IP O f fice of C hin a ( S I P O ) - Car doza” Program at the Benjamin N. Cardozo School of Law’s Intellectual Property & Information Law Program, in New York, NY.

View the Ful l Annua l Repor t O n li n e AIP L A 20 1 2-20 1 3 A n nu al R epor t • 1 3

Top - Notch Publications

14 • A I P L A 201 2- 2013 Annua l Repor t


Newsletters, surveys, journals, social media... AIPLA keeps you up- to - date on all things IP.


AIP L A 20 1 2-20 1 3 A n nu al R e po r t • 1 5

Top - Notch Publications From in - depth legal scholarship in the AIPLA Quarterly Journal , to a look at a day in the life of the AIPLA President, AIPLA’s publications continue to be sought - after and respected throughout the IP community. AIPLA Quarterly Journal

AIPLA Newsstand

The Journal celebrated its 40th

division of IP Media Group, helps

A partnership with Lexology, a AIPLA share on a daily basis

anniversary this year and we

breaking developments in IP as

re-published Judge Giles Rich’s

well as access to a number of

article from the inaugural issue.

articles on relevant IP topics. As

The Journal has expanded in the

intended, the AIPLA Newsstand

past few years to also include

arrives every day, but our members

Student Notes. This provides

have the ability to change their

us a greater opportunity to cover

subscription to a weekly or

diverse subject matter in each issue.

monthly digest if they prefer.

AIPLA Direct

AIPLA eBulletin

Written by former BNA Patent,

Published following each stated

Trademark, Copyright Journal

designed to be responsive to

tor of Legal Affairs, Jim Crowne,

comes out when news is relevant,

from the President, captures the

the Direct provides analysis and

but doesn’t clog up your inbox

activities of the meeting, and

unnecessarily. The archives of

provides our Committees the ability

portant IP legislative, regulatory,

all previous Directs, previously

to share their projects and

Editor, and current AIPLA Direc-

insight into some of the most imand judicial issues facing the IP bar. The AIPLA Direct is

16 • A I P L A 201 2- 2013 Annua l Repor t

the latest developments and

known as AIPLA Reports, are posted on AIPLA’s website

meeting, the Bulletin is an electronic

publication that provides an update

accomplishments with the broader AIPLA membership.

Books c o - p u bl i sh e d M o de l P a t e n t Jury w i t h Bl o o m be r g BN A I n st r u c t i o n s

AIPLA Report of the Economic Survey This report provides an in-depth look at the IP market, from being

AIPLA collaborated with BNA

Originally developed in 1997, the

Bloomberg to release updates

Model Patent Jury Instructions

to the “Electronic and Software

are widely respected and used

Patents: Law and Practice,” third

throughout the US. The 2012

edition: a strategy guide that

edition was distributed to district

helps practitioners deal with

court judges around the country,

technological developments,

and is available on the AIPLA

changes in USPTO policy, and

website. The instructions provide

pivotal court rulings; and, the

a model set of jury instructions

“Intellectual Property Law in

that are not biased in favor of

Cyberspace,” second edition; a

either the patent owner or the

critical resource practitioners

accused infringer and address

need to protect and enforce

issues that most typically arise

clients’ IP rights as they relate to

in patent litigation and that have

the Internet. More collaboration

clear precedential support.

is planned in the future, and all of these products are available

E du c a t i o n a l M ate rials

compares in the marketplace,

to members at a discounted rate.

AIPLA maintains several years

to comparing your pricing and

The Bl o g

able to see where your compensation

billing rates against your peers.

of educational papers and slide presentations that are prepared

The Report, published every

AIPLA President Jeffrey I.D. Lewis

and presented at AIPLA’s conferences

launched a blog through a part-

and seminars throughout the year.

of 2013, and for the first time,

nership with

If you’re looking for a paper

With this blog, he was able to

written on an obscure IP topic,

share the details of his experiences as

chances are you’ll find it on

he traveled the US and around

AIPLA’s website in our Library.

Report analyzes some specific

the world representing the As-

A search on the AIPLA website

sociation and in many cases,

for “obviousness,” for example,

the relative cost of NPE litigation.

he learned more than he shared,

yields over 350 results.

other year, was released in July provided a greater breakdown of “at-risk” categories for varying types of IP litigation, and, the types of patent litigation, including

bringing his insights back to the Association.

AIP L A 20 1 2-20 1 3 A n nu al R epor t • 1 7

One - on - One with IP Professionals

18 •• AAI PI PLA 18 L A 2012 201 2-A2013 n n u al Annua Repor lt Repor t


Opportunities to network continue to rank as one of AIPLA’s highest benefits.


AIP L A 20 1 2-20 1 3 A n nu al R e po r t • 1 9



Over 6,600 members participated in one or more Committees—the best way to get involved in AIPLA—this year.

20 • A I P LA 201 2- 2013 Annua l Repor t

Meeting with other IP professionals i n similar practice areas continued to be a huge benefit this year. Much of this networking was made possible through AIPLA’s nearly 50 committees.  – r ea  L ea r ni ng Pract ice–A

F o o d a nd F u n

Most Committees offer educational sessions

In addition to the networking breakfasts at the

during the Spring, Mid-Winter and Annual Meetings,

Spring, Mid-Winter and Annual Meetings, the Women

providing members with the perfect opportunity to

in IP Law Commitee hosted dinners in dozens of cities

meet one-on-one with others engaged in the same

across the country.

subject matter. Several also hosted webinars featuring

The New Lawyers Committee held its annual retreat

experts on topics specific to their practice areas.

this summer and hosted happy hours in over twelve cities providing attorneys the opportunity to share

S o cial M edi a AIPLA’s Committees have expanded their use of

ideas with others new to the profession.

social media. In addition to the AIPLA Facebook, Twitter and LinkedIn pages, many Committees have their own LinkedIn pages and regularly participate in discussions via electronic mailing lists.

N e wslet t er s Five Committees currently have their own newsletters, and several others are currently in the development process. The Food & Drug Committee just launched “FDA Flash,” the New Lawyers produce

V i si t i n g O t h e r C o u nt r i e s

“Antitrust Newsletter,” the Patent Law Committee offers

trips to other countries to meet with foreign governments

“Business Casual,” the Antitrust Law Committee has

Many of our international Commitees frequently host

members the “Teachings and Suggestions” newsletter

and counterparts. The IP Practice in Europe, IP

and the Biotechnology Committee’s newsletter is

Practice in Japan, IP Practice in the Far East, IP

called “Biotech Buzz.”

Practice in Latin America, and for the first time, the Special Committee on IP Practice in Israel, all hosted successful trips this year.

View the Ful l Annua l Repor t O n li n e AIP L A 20 1 2-20 1 3 A n nu al R epor t • 21

Here We Grow Again


AIPLA membership continued to grow this past year as we added four new member categories.


AIP L A 20 1 2-20 1 3 An nu al R epor t • 23

Here We Grow Again

IP Professional Affiliate

Government Affiliate

IP Advisor/ Technical Advisor Affiliate


24 • A I P LA 201 2- 2013 Annua l Repor t

Expanding our membership categories to new groups makes us a stronger association, and brings different views into the conversation. AIPLA membership continued to grow this past year, exceeding our budget projections by two percent. We added four new member categories in total:

Two catyear, egor i es we w er e added a d d e d f o r two W e anew l so a dde d t w o new This membership th ose not qua l i fi ed for r eg ul a r , c a t e g o r i e s f o r o t he r g r o ups: j unior , pat e nt a gent ei g n o r not qualified for categories for, forthose USPT O p r ofessi ona l a ffi l i a t e . Government Affiliate regular, junior, patent agent, foreign or IP Pr of essi ona l Affi l i a t e USPTO professional affiliate:

For those qualified for patent agent or foreign affiliate membership who are full-time employees

For those engaged in the field who negotiate and manage licensing, transactions, and technology transfer of IP assets; perform IP surveying, map or analyze IP portfolios, or have responsibilities

of a government, or persons who are not qualified for membership but are full-time professional

employees of a government and whose role or department has responsibilities with respect to IP.

with respect to IP for a business entity.

IP Par ale ga l / Technica l Ad vi sor Affi l i a t e For those who substantively support the efforts of a person qualified for membership; specifically

J udi c i a l For those employed full-time as a judge in any court, agency, or office of the US or of any state or territory thereof or the District of Columbia who have an interest in IP law.

including technical advisors who assist with drafting patent applications and IP paralegals who assist with preparation of formal filing and litigation documents.

View the Ful l Annua l R epor t O n li n e

AIP L A 20 1 2-20 1 3 Annu al R e po r t • 25

Opening New Markets



Jeff Lewis and Todd Dickinson lead the first AIPLA Committee trip to Israel.

26 • A I P L A 2012- 2013 Annua l Repor t



Participating on the global stage provides a great opportunity to work on international norms and harmonization.

AIP L A 20 1 2-20 1 3 An nu al R epor t • 27

Opening New Markets

Working with international counterparts helps AIPLA members and clients in every country. Here are just a few of the ways AIPLA is making progress on our global initiatives. A IPLA Acqu i r es A IPPI-US

Office (EPO), Japanese Patent

Office (JPO), and the State Intellectual

Office (JPO), the State Intellectual

Property Office of China (SIPO)

AIPLA’s international reach was

Property Office of China (SIPO)

to discuss intellectual property

and the Korean Intellectual Patent

issues with officials of the patent

Office (KIPO)—on harmonization and

offices and delegates from other

the improvement of patent law and

national and local IP associations.

broadened this year through the acquisition of the US group of the International Association for the Protection of Intellectual Property

procedures. We participated in other global cooperation meetings and the Trademark Trilateral.

I n t e r na t i o na l C o m m i t t e e s Unite

This year, the AIPPI-US Division

Additionally, AIPLA is active in the

This year, AIPLA undertook a

submitted reports to AIPPI on

Global Dossier Task Force, working

reorganization of the various

grace period, well-known marks,

with the IP5 offices, industry IP5

international Committees into one

term of copyright protection, and

organziations, and the World

Global Sector and held the first

relief in IP proceedings. AIPLA

Intellectural Property Organization.

Global Sector Pre-meeting at the

representatives presented these

AIPLA stayed active in US Bar

2013 AIPLA Spring Meeting to

(AIPPI), now known as the AIPPIUS Division.

reports for consideration at the 2013 AIPPI Forum and Exco meeting in Helsinki, Finland.

such as the Trilateral, Industry Trilateral,

Liaison Council meetings, sending representatives to the annual meetings with the European Patent Office (EPO), Japanese Patent

encourage coordination among these Committees. These efforts resulted in the creation of the Patent Treaties and International

A Global Lea d er

Policy Committee to help

AIPLA worked hard to establish

spots within the Global

itself as a global leader for intellectual property, taking on a leadership role in the Industry IP5, which advises the five major patent offices—the USPTO, European Patent

28 • A I P L A 2012- 2013 Annua l Repor t

cover substantive blind Sector, as well as development of the Global IP section of the AIPLA website to foster communication.

meetings including the

in private practice) co-hosted

Intergovernmental Committee on

a Colloquium on the Protection

Intellectual Property and Genetic

of Confidentiality in IP Advice in

Resources, Traditional Knowledge,

Paris, France. Additionally, AIPLA

and Folklore, the Director General

hosted meetings with international

meeting with Non-Governmental

delegations including the EPO-US

Organizations, Standing Committee

Bar Patent Quality Meeting, and

on Copyright, and the Diplomatic

delegations from China and Korea.

Conference to Conclude a Treaty

AIPLA served as co-host with the

to Facilitate Access to Published

Intellectual Property Owners

Works by Visually Impaired

Association for meetings of the

Persons and Persons with Print

Industry IP5.


A IPLA at In te r nat ional M eet i ngs AIPLA was represented by leadership at a number of international events including the annual meeting of AIPPI, the Global Network of National IP Practitioners Association Summit, the Brazilian Association

AIPLA continued to monitor intellectual property issues at the World Trade Organization (WTO),

Our international practice

the World Health Organization (WHO), the United Nations Framework Convention on Climate Change

and the World Intellectual Property Organization Diplomatic Conferences and Annual Assemblies meeting. Throughout the year, AIPLA was represented at multiple WIPO

Committees continued to strengthen AIPLA’s international presence, organizing delegation trips to

(UNFCCC), and the International

Europe, Japan, the Far East, Latin

Corporation for Assigned Names

America, and for the first time

and Numbers (ICANN).

Israel. On each trip, the delegates

of Intellectual Property Annual Meeting, the Business of IP Forum,

M e e t i n g I n t e r natio nal Counterparts

AI P L A - ho s t e d E v e n t s AIPLA, along with AIPPI and FICPI, (the Fédération Internationale des Conseils en Propriété Industrielle, a non-political world-wide association

were given the opportunity to both network with and learn from representatives of national and local intellectual property offices, associations, industry groups, and businesses .

of intellectual property attorneys

View the Ful l Annua l Repor t O n li n e

AIP L A 20 1 2-20 1 3 Annu al R e po r t • 29

Informing the Public

3 0 • A I P L A 201 2- 2013 Annua l Repor t


AIPLA tells our story to the public in a variety of ways.


AIP L A 20 1 2-20 1 3 A n nu al R epor t • 3 1

Informing the Public IP is protected by a set of legal rights with both

We are concerned negative perceptions and

constitutional and common law origins.

misperceptions about the intellectual property

A goal of these rights is to both

system are becoming more widespread in the public at

incentivize and protect

large and that these misperceptions are in

creative and inventive

large part based on a lack of understanding of

works ... to

the system itself and of its historic

encourage and

origins and current real world value. Our

reward the

goal with is to educate the public and its

original work

representatives on IP and its value.

in planting and nurturing the seeds and hopefully to allow them the time and opportunity to reach their full maturity and potential and bear fruit for their creators and the community as a whole. We believe that IP has been a major engine in the economic and artistic flowering of our country. We believe it is a resilient system that has been and should be able to adapt over time to changing technologies and economic pace and environment. We believe that historically and globally, the most robust innovation and energetic research as well as most active artistic communities have been fostered in countries and periods with the most reliable protection of intellectual property.

3 2 • A I P L A 2012- 2013 Annua l Repor t

In Charlotte, NC through a partnership with the Licensing Executives Society.

Recognizing that appreciation for the value of IP starts at a young

In Detroit, MI partnering with TechShop Detroit, focusing on automotive and other high-tech

AIPLA has been involved in sponsoring programs celebrating World IP Day for a number of years. This year, we took on the challenge of significantly expanding

In Dallas, TX, partnering with

pre-college competition recognizing

70 countries participated in the

T r a de m a r k E x p o

In San Jose, in collaboration

AIPLA continued to support this

Art Museum.

individual volunteers, the Day was

Alexandria, VA, in conjunction

AIPLA continued its support,

with the World Intellectual

sponsoring scholarship to Invent

Property Organization (WIPO) highlight on STEAM (Science and Technology, interpreted through Engineering and the Arts, all based on Mathematical elements, and including a focus on the changes brought to the system by 3D printing technology. •

In New York, NY at the Fashion Law Institute in conjunction with the NY IP Law Association.

education people on the value of

Camp & Club Invention

On Capitol Hill, and in

and the USPTO, with a special

program open to the public to brand names and other trademarks.

celebrated: •

achievement of young researchers.

with the Colorado Bar IP Section.

Association and the San Jose

with local IP law associations and

the innovation and scientific

In Denver, CO in conjunction

with the Silicon Valley IP Law

our celebrations, through a partnership

at this annual competition. Over 1,500 high school students from

Institute for Policy Innovation. •

age, we continue to present awards

industries. the local Chambers and the

World IP Day

Intel® International Science a n d E n g i n e e r i ng F a i r

Now’s Camp and Club Invention

AIPLA also co-sponsored two

Programs. The camps are one-

international programs, the

week summer day camps for

first in conjunction with the Intellectual Property Association of Ho Chi Minh City, Vietnam and the second in conjunction with the United States Embassy American Chamber of Commerce in Thailand.

elementary school children, designed to help students discover their own innate creativity and inventiveness through hands-on science, technology, engineering, and mathematics (STEM) content. Last year, the program impacted over 76,000 children in 49 states.

View the Ful l Annua l Repor t O n li n e

AIP L A 20 1 2-20 1 3 Annu al R e po r t • 3 3

Awarding the Best

3 4 • A I P LA 201 2 2-A 2013 n n ua l Annua Reporl t Repor t


2012 Board of Director’s Excellence Award Recipient, The Honorable Pauline Newman



Our award winners were nothing short of O UTSTANDING.


AIP L A 20 1 2-20 1 3 An nu al R epor t • 3 5

Awarding the Best

Boar d of Di r ec t or s’ E xc ellenc e Aw ar d The Honorable Pauline Newman, Court of Appeals for the Federal Circuit , W ashington, DC

F or her extr aor dinar y leader ship and ser vice to the IP Com m unity, which is repr esentative of a distinguished car eer m ar ked by intellect, integr ity, and an u nwaver ing com m itm ent to the a dm inistr ation of justice.

President’s Outstanding Service Award Ma r g a r e t A. B o u l w a re, B o u l w a r e & Val oi r, H o u sto n , T X For her years of service to AIPLA, as President, Board member and Committee leader, and for her work in developing the Women’s Retention Survey.

3 6 • A I P L A 2012- 2013 Annua l Repor t

Project Awards for Service to AIPLA Gregory D. Allen, 3M Innovative Properties, St. Paul, MN

Past Presidents Award Darran Smith, Fulbright & Jaworski, LLP, Houston, TX

The Robert C. Watson Award recognizes law students for original and creative articles which contribute to the knowledge of intellectual

For his leadership as Chair of the Patent Office Practice Issues Group of the Special Task Force on the America Invents Act Rulemaking.

Mentor of the Year Tracy Corneau, Borden Ladner & Gervais, LLP, Ottowa, Ontario, Canada

Samantak Ghosh of the University of California, Berkeley School of Law.

Herbert D. Hart, McAndrews Held & Malloy, Ltd., Chicago, IL

The AIPLA Giles Sutherland Rich Moot Court Competition

The Jan Jancin Competition,

celebrated its 40th anniversary,

Intellectual Property Law Education

For his leadership as Chair of the Post-Grant Review Group of the Special Task Force on the America Invents Act Rulemaking.

with four regional competitions followed by a national competition

property. The 2012 winner was

administered by the American Foundation (AIPLEF), in collaboration with the ABA-IPL section, includes two separate awards offered to

Alan J. Kasper, Sughrue Mion, PLLC, Washington, DC

for the top two teams from each

For his leadership as Chair of the Special Task Force on the America Invents Act Rulemaking.

opportunity to argue their cases.

study of IP law.

The team from the University of

Sarah Fink from St. John’s University School of Law was the 2012 winner.

Michael K. Kirk, Santee, SC For his outstanding service to the American Intellectual Property Law Association, particularly in his leadership as Chair of the Special Task Force on the America Invents Act Rulemaking. Kenneth N. Nigon, RatnerPrestia, Valley Forge, PA For his service on the America Invents Act Committee of Experts.

region. During the finals, students from eight law schools earned the

Texas took home the top prize. The late Judge Rich was a judge

law students nominated by their schools who have excelled in the

of the US Court of Appeals for the Federal Circuit, and one of the

Maurice Klitzman Award

field of patent law in the world.

AIPLA continues to support young

most distinguished jurists in the

IP professionals with this award allowing a junior corporate attorney or corporate patent agent the opportunity to attend the AIPLA Annual Meeting. Jason Sosa, of IBM in Endicott, NY attended the 2012 Annual Meeting.

AIP L A 20 1 2-20 1 3 An nu al R epor t • 3 7

A Message from AIPLA’s Executive Director The IP Landcape—A Look Ahead Legislation & Regulation There is no doubt that the America Invents Act accomplished a sea change in many areas that will go a long way towards establishing a set of laws and procedures that reflect best practices that can be relied on in a world economy. However, even before we see how the proposed system will work in practice, there are potential statutory and regulatory changes to the AIA currently under discussion, particularly relating to the issue of patent assertion

their authorities to administer and

which deal with IP. How this will

interpret the AIA, we anticipate that

play out remains to be seen, but

some of these legislative initiatives

please be assured that we maintain

will be taken up by the Congress

this at the top of our list of priorities

this term or next. As we always do

in our work with both Congress and

on behalf of both our members and

the Administration, as we always

the best long-term interests of the

will. Finally, we make it our business

IP system, AIPLA has taken

to make sure that we keep our

significant steps towards developing

members informed on the outcome

our positions and rationales on the

of this, the PAE proposals, and all

various proposals so far, and have

legislation that impact on our

begun to communicate them

profession and our members and

effectively to Congress, both

their clients.

individually and in coalition.

On the regulatory side, we also

entities (PAEs). PAEs have been

A second major, and perhaps

anticipate that additional issues

featured in the media lately, and

more important, issue for our

regarding the implementation

have received rather extraordinary

members concerns the funding

of the AIA and related matters,

attention from Congress and at the

for the US Patent and Trademark

such as how the USPTO and the

White House. Congress may con-

Office (USPTO). There was hope

courts develop precedents that will

sider a variety of individual proposals

that questions about funding had

govern the day-to-day reality, will

that return to matters debated during

been resolved by the AIA, but now

continue to be of concern to our

the AIA effort.

the Office finds itself ensnared by

members and clients. This may be

government budget cuts known as

particularly true as we see how the

sequestration, and the continued

Obama Administration deals with

inability of the Congress to pass

the numerous IP vacancies in the

budgets for the various departments

USPTO and elsewhere.

While our Board takes the general view that it would be best to allow the Courts and the USPTO to exercise

Q. Todd Dickinson AIPLA Executive Director 3 8 • A I P L A 2012- 2013 Annua l Repor t

See A L OOK A HEAD , Page 45



I encourage you to get involved in a Committee of interest to you.

AIP L A 20 1 2-20 1 3 Annu al R e po r t • 3 9


AIPLA leaders meet with US Ambassador John Roos during our annual Committee trip to Japan.

4 0 • A I P LA 2012- 2013 Annua l Repor t


The IP Landcape—A Look Ahead (cont’d) In other areas of IP, the Congress,

would establish online access to

proposals for “road shows” next

and the Judiciary Committees in

related application information in

year on a variety of topics, and

particular, have shown an increased

multiple offices, as well as cross-filing

those are currently under

interest in the interface between

and streamlined online processing


IP and antitrust, especially the

in those offices.

area of “reserve payments,” and standards-essential patents. Other parts of the government, in particular the Federal Trade Commission, have also shown interest in these topics, as well as the competitive effects of NPEs. Finally, there is also the idea of a “review” of the Copyright Act, which was initially proposed by the new Register of Copyrights.

International In the international arena, multilateral progress remains a challenge. Nonetheless, there are efforts of smaller groups of like-minded countries and patent offices, including the so-called IP5 Offices— the USPTO, European Patent Office (EPO), Japanese Patent Office (JPO), the State Intellectual Property Office of China (SIPO) and the Korean Intellectual Patent Office (KIPO)—and the Trilateral Offices (US, EPO, and JPO). AIPLA has taken an active leadership role in the industry groups that advise the IP5 and Trilateral, and is currently making significant contributions to two key projects: international talks on substantive patent law harmonization, and the Global Dossier, which

Keeping members engaged

We also co-hosted a meeting with

through their work on Committees

representatives from 22 countries

is extremely important, and many

to discuss issues of international

Committees are planning to host

client confidentiality, or attorney-

meetings and happy hours across

client privilege; a major problem

the US to connect with members

for multi-nationals and those pursuing

at the local level. I encourage you

international IP protection. A joint

to get involved in a Committee of

proposal has been developed and

interest to you. Many have newsletters,

work is moving forward to develop

LinkedIn and Facebook pages,

an international agreement.

and they are all a tremendous

Member Services

resource for information, as well as an exclusive member benefit.

As mentioned earlier, AIPLA added four new membership categories

Our 2014 Mid-Winter Institute is in

this year. The challenge now is

Phoenix, AZ and our 2014 Spring

to make sure we have products

Meeting is in Philadelphia, PA,

and services to meet the needs of

and hopefully these interesting and

these new members, and at the

accessible locations will make it

same time continue to meet the

easier for AIPLA members outside

needs of current members. Providing

the Washington, DC area to par-

access to cutting-edge information

ticipate, network and learn from

through communications,

experts in our profession.

publications, and educational

I encourage you to attend.

programming will remain a priority for the Association.

In looking ahead to 2014, with a truly talented Board of Directors,

AIPLA is already a leading provider

Committee leadership and staff,

of CLE and we will expand that in

I am confident we will be able to

the coming year and start to offer

meet the challenges ahead, and

programs to the international

continue to provide the best value

community. We will continue to

in IP to our members.

offer top-notch CLE during our three major meetings, seminars and monthly webinars. Many Committees have developed

AIP L A 20 1 2-20 1 3 A n nu al R e po r t • 41

AIPLA Leadership

2012-2013 Board of Directors (B ack ro w f r o m l e f t t o r i ght ) :

Carl Oppedahl, Oppedahl Patent Law Firm, LLC; Aimee Peele Carter, Faegre Baker Daniels, LLP; W. Todd Baker, Oblon, Spivak, McClelland, Maier and Nuestadt, LLP; Samson Helfgott, Katten Muchin Rosenman, LLP; Georgann S. Grunebach, Treasurer, Fox Legal Group.

(T hird r o w, L - R ) :

Mercedes K. Meyer, Drinker Biddle & Reath, LLP; Bradley A. Forrest, Schwegman, Lundberg & Woessner, PA; Barbara A. Fiacco, Foley Hoag, LLP; Kevin H. Rhodes, 3M Innovative Properties Company; Philip S. Johnson, Johnson & Johnson.

(Se co n d r o w, L - R ) :

J. Michael Martinez de Andino, Hunton and Williams; Kimberly N. Van Voorhis, Morrison & Foerster; Kevin Tottis, Law Offices of Kevin Tottis; Mark L. Whitaker, AIPLA General Counsel, Baker Botts, LLP.

(Fro nt row, L - R ) :

William G. Barber, Immediate Past-President, Pirkey Barber, LLP; Sharon A. Israel, First Vice President, Mayer Brown, LLP; Wayne P. Sobon, President-Elect, Inventergy; Jeffrey I.D. Lewis, President, Patterson Belknap Webb & Tyler, LLP; Denise W. DeFranco, Second Vice President, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Q. Todd Dickinson, AIPLA Executive Director.

No t sh o wn :

Chen Wang, E.I. du Pont de Nemours and Company

4 2 • A I P LA 201 2- 2013 Annua l Repor t

AIPLA Executive Staff

(Fro m l e f t t o r i ght ) :

Pa-A.S. Jallow, Director of Finance & Accounting; James D. Crowne, Director of Legal Affairs; Claire Lauchner, Assistant to the Deputy Executive Directors; Cathleen Clime, Director of Meetings & Events; Albert Tramposch, Deputy Executive Director for International and Regulatory Affairs: Lorri Ragan, Director of Marketing and Communications; Q. Todd Dickinson, Executive Director; Judy Curvan, Excutive Assistant to the Executive Director, Meghan Donohoe, Chief Operating Offier, Molly Weisblatt, Assistant to the Chief Operating Officer, and Vincent Garlock, Deputy Executive Director.

W e we r e a b l e t o snap t he above p i c t ur e a t the Septem ber Boa rd Meeting, but we’d l ike t o intro d uc e y o u t o t he r est of t he AIPL A tea m , not pictured: Raquel Alleyne, Continuing Legal Education Coordinator; Paige Barfield, Marketing, Communications & Web Assistant; Laura Debrow, Accountant/Accounts Receivable; Bill Durante, Member Services Manager; Morgan Greenfield, Assistant to the Director of Meetings & Events; Heather Haney, Benefits & Facilities Manager; Iris Howell, Meeting Planner; Megan Impala, Continuing Legal Education Associate; Shelba Murphy, Member Services Assistant; Lindsay Nalevanko, Meeting Planner; Joyelle Ogilvie,Accountant/Accounts Payable; Randy Sagara, Web Master/IT Manager; Erin Sheehan, Policy Counsel.

AIP L A 20 1 2-20 1 3 An nu al R e po r t • 43

2013 Annual Report  
2013 Annual Report