2012 Spring Meeting eBulletin by AIPLA

BULLETIN American Intellectual Property Law Association

AIPLA 2012 Spring Meeting Austin, TX

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2012 Spring Meeting Issue

in this issue...

Board of Directors Meeting Dates................................................................................................................. 5 President’s Report....................................................................................................................................... 6 The 63rd Annual Intel International Science & Engineering Fair.................................................................. 12 The Giles Sutherland Rich Memorial Moot Court Competition.................................................................... 14 Copyright Office Affairs................................................................................................................................ 16 Upcoming Online Programs........................................................................................................................ 24 Future Meetings Calendar........................................................................................................................... 25 Thank You 2012 Spring Meeting Sponsors................................................................................................. 26 Austin Photo Pages..................................................................................................................................... 27 Association Activities .............................................................................................................................. 32 Member News ............................................................................................................................................ 32 Committee Reports:

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

2012 Spring Meeting Issue

Alternative Dispute Resolution............................... 35 Amicus.................................................................... 35 Anti-Counterfeiting and Anti-Piracy �� 36 Antitrust Law .......................................................... 36 Biotechnology ........................................................ 37 Chemical Practice .................................................. 37 Copyright Law ........................................................ 38 Corporate Practice.................................................. 39 Diversity in IP Law.................................................. 39 Education................................................................ 40 Electronic and Computer Law ............................... 41 Emerging Technologies.......................................... 44 Fellows ................................................................. 44 Food and Drug........................................................ 45 Industrial Designs .................................................. 45 International and Foreign Law................................ 46 International Education........................................... 46 International Trade Commission............................. 47 IP Law Associations................................................ 48 IP Practice in China ............................................... 49 IP Practice in Europe.............................................. 49 IP Practice in the Far East...................................... 50 IP Practice in Japan................................................ 51 IP Practice in Latin America ................................... 51 Law Practice Management..................................... 52 Law Students.......................................................... 53 Licensing and Management of IP Assets �� 53 Membership............................................................ 53 Mentoring................................................................ 53

Mergers and Acquisitions ...................................... 54 New Lawyers ......................................................... 55 Online Programs..................................................... 56 Patent Agents ........................................................ 56 Patent Cooperation Treaty Issues �� 57 Patent Law.............................................................. 57 Patent Litigation...................................................... 59 Patent-Relations with the USPTO.......................... 59 Professional Programs .......................................... 60 Professionalism and Ethics.................................... 60 Public Appointments............................................... 60 Public Education..................................................... 61 Special Committee on Genetic Resources, Traditional Knowledge and Folklore �� 61 Special Committee on IP Practice in Israel �� 61 Special Committee on Legislation.......................... 62 Special Committee on National IP Practitioner Associations Worldwide ........................................ 62 Special Committee on Standards and Open Source.......................................................... 63 Trade Secret Law .................................................. 63 Trademark Internet................................................. 64 Trademark Law....................................................... 65 Trademark Litigation............................................... 66 Trademark Treaties and International Law �� 67 Trademark-Relations with the USPTO �� 67 USPTO Inter Partes Patent Proceedings �� 67 Women in IP Law................................................. 68u

New Members..................................................................................................................................................69

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President William G. Barber PirkeyBarber, LLP 600 Congress Avenue, Suite 2120 Austin, TX 78701

Officers

Bulletin

Immediate Past President David W. Hill

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

901 New York Avenue, NW Washington, DC 20001-4413

President-Elect Jeffrey I.D. Lewis Patterson Belknap Webb & Tyler, LLP New York, NY 10036

Secretary Elizabeth Ann “Betty” Morgan The Morgan Law Firm 260 Peachtree Street, Suite 1601 Atlanta, GA 30303

First Vice President Wayne P. Sobon Rambus, Inc. 1050 Enterprise Way, Suite 700 Sunnyvale, CA 94089

Treasurer Georgann S. Grunebach Fox Legal Group 2121 Avenue of the Stars Los Angeles, CA 90067

Second Vice President Sharon A. Israel Mayer Brown LLP 700 Louisiana Street, Ste. 3400 Houston, TX 77002-2730

Board of Directors

term expires october 2012

Brian B. Darville Brocadiant, PLLC 211 North Union Street Suite 100 Alexandria, VA 22314

Philip T. Petti USG Corporation 550 West Adams Street Chicago, IL 60661

Mercedes K. Meyer Drinker Biddle & Reath, LLP 1500 K Street, NW, Suite 1100 Washington, DC 20005-1209

Michael W. Piper Conley Rose, PC 5601 Granite Parkway Suite 750 Plano, TX 75024

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term expires october 2013 Philip S. Johnson Johnson & Johnson One Johnson & Johnson Plaza New Brunswick, NJ 08933

Carl Oppedahl Oppedahl Patent Law Firm, LLC P O Box 5940 Dillon, CO 80435

Samson Helfgott Katten Muchin Rosenman, LLP 575 Madison Avenue New York, NY 10022-2585

Kimberly N. Van Voorhis Morrison & Foerster 755 Page Mill Road Palo Alto, CA 94304

term expires october 2014 Barbara A. Fiacco Foley Hoag LLP Seaport West 155 Seaport Boulevard Boston, MA 02210-2600

Kevin Tottis Law Offices of Kevin Tottis Suite 1200 211 West Wacker Drive Chicago, IL 60606

J. Michael Martinez de Andino Hunton and Williams Riverfront Plaza, East Tower 951 Byrd Street Richmond, VA 23219

Chen Wang E.I. du Pont de Nemours and Company Barley Mill Plaza 25/1208 4417 Lancaster Pike Wilmington, DE 19805

Executive Director Q. Todd Dickinson AIPLA 241 18th St. S Arlington, VA 22202

General Counsel Mark L. Whitaker Baker Botts, LLP 1299 Pennsylvania Avenue, NW Washington, DC 20004

2012 Board of Directors Meeting Dates Friday, September 14, 2012 Austin, TX

Saturday, October 27, 2012 Washington, DC

Thursday, October 25, 2012 Washington, DC

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5â&#x20AC;&#x192;

President’s Report by: William G. Barber, AIPLA President

Trilateral is a cooperative effort of the USPTO, European Patent Office (EPO), and Japan Patent Office (JPO) to coordinate and improve patent procedures and cooperation, while IP5 is a newer and similar effort among those same three offices, plus the Korean Intellectual Property Office (KIPO) and State Intellectual Property Office of China (SIPO). We and other associations provide input to the Trilateral and IP5 from an industry/users’ perspective.

As I prepare my last President’s Report, it’s hard to believe that my term as President is rapidly coming to a close. I would like to begin by expressing what an honor and privilege it has been to serve as President of such an outstanding organization. It has been an amazing adventure, one I will cherish always. We have accomplished much so far this year in this everevolving world of IP. I would like to thank the many people who work so hard to make AIPLA the vibrant and successful organization that it is – from our talented staff, to our dedicated Executive Committee, Officers and Board of Directors, to our bright committee and task force leaders, to our creative meeting coordinators, moderators, and speakers, and to all of you members who have volunteered your time so generously. Thank you one and all.

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On April 15-20, the IP Practice in Japan Committee conducted its annual trip to Japan, this time visiting not only Tokyo but also, for the first time, Osaka. The delegation was led by Immediate Past President Dave Hill, Board members Mercedes Meyer and Kim Van Voorhis, and Committee Co-Chairs Paik Saber and Joe Calvaruso. As always, the trip was very successful, and this year included a Women in IP Law networking event that proved very popular among the Japanese participants. The delegation also met with the JPO, the Japan Trademark Association, the Licensing Executive Society of Japan, the Japan Patent Attorneys Association, AIPPI-Japan, the Japan Federal Bar Association, the Japan Intellectual Property Association, and the IP High Court of Japan.

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On April 15-17, Todd Dickinson and I attended the FICPI World Congress ExCo Meetings in Melbourne, Australia.

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On April 16-20, Special Committee Chair Tom Moga represented AIPLA at the WIPO Intergovernmental Meeting on Genetic Resources, Traditional Knowledge, and Folklore, in Geneva, Switzerland.

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On April 18-28, our IP Practice in the Far East Committee made its bi-annual trip, this time visiting Singapore, Taiwan, and Korea. The delegation was led by myself, Todd Dickinson (for the Singapore leg), Committee Chair Ken Cho, and Committee Vice Chair Hung Bui. While there, we met with and participated in educational programs with numerous agencies and associations, including the Intellectual Property Office of Singapore, the Taiwan Intellectual Property Office, KIPO, the Association of Singapore Patent Agents, the Taiwan Patent Attorneys Association, and the Korean Patent Attorneys Association, as well as the Taiwan IP Court, Taiwan Customs, and several leading research institutes and companies.

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On April 23-27, Jessie Roberts represented AIPLA at the Nice Union Committee of Experts Meeting at WIPO in Geneva.

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April 26 was World Intellectual Property Day. We co-

Global Outreach One of the cornerstones of our strategic plan is global outreach. This has proven to be an increasingly important part of our Association’s mission, as we continue to focus much of our time and activity on interacting with IP organizations and governmental authorities on a world scale. Collaboration with foreign governments and colleagues enables us to accomplish a number of objectives that we believe have considerable value and importance to our Association. For example, our outreach efforts give us the opportunity to teach others about the US IP system and learn about other countries’ systems; we can identify global trends and best practices, and work to harmonize and improve IP laws internationally; we can identify countries or regions that have problems or deficiencies in their IP protection or enforcement and educate our members about those issues; and of course, these activities help us spread the word about the value of IP, and the importance of obtaining quality IP rights through qualified professionals. In furtherance of these goals, AIPLA attended the following meetings in recent months: •

On April 3-4, our Executive Director Todd Dickinson attended a US Patent Reform Congress in Munich, Germany. This was the first major conference on the AIA following publication of the proposed rules packages. Under Secretary of Commerce for Intellectual Property and Director of the USPTO (and former AIPLA Board member) David Kappos was the primary presenter on the first day and referred to the meeting as the “First European USPTO AIA Road Show.” Todd addressed the question of International Harmonization post AIA.

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On April 12-13, Todd Dickinson, Past Presidents Dave Hill and Alan Kasper, IP Practice in Japan Committee CoChair Paik Saber, and I attended the Trilateral, Industry Trilateral, and Industry IP5 meetings in Tokyo, Japan. The 6

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sponsored an event with the USPTO and WIPO celebrating visionary innovators. The program included opening remarks from David Kappos and Department of Commerce General Counsel Cam Kerry, followed by a panel discussion moderated by Todd Dickinson and featuring Director Kappos, WIPO Deputy Director General (and AIPLA Past President) James Pooley, and Al Langer, inductee into the National Inventors Hall of Fame and inventor of the implantable defibrillator. We owe great thanks to Senator Patrick Leahy, Chairman of the Senate Judiciary Committee sponsoring the event in the Dirksen Senate Office Building. •

On April 30-May 4, Mark Guetlich represented AIPLA at the Committee on WIPO Standards Meeting in Geneva.

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On May 5-9, Todd Dickinson, our President-Elect Jeff Lewis, and I attended the INTA Annual Meeting in Washington DC.

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On May 15-17, Jeff Lewis attended the LES USA and Canada Spring Meeting in Boston.

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On May 21-25, our Deputy Executive Director for International and Regulatory Affairs Al Tramposch attended the WIPO Standing Committee on Patents Meeting in Geneva.

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On May 28-30, I, Todd Dickinson, and Board Member Chen Wang attended the United States-China Intellectual Property Adjudication Conference in Beijing, China. Following that conference, from May 30-June 8, our IP Practice in China Committee held its biannual trip to China, this time visiting Beijing, Shanghai, Nanjing, and Wenzhou. I, Chen, Todd, Committee Chair Skip Fisher, and Vice Chair Ying Tuo led the delegation. We met with a number of government agencies involved in IP registration and enforcement, including SIPO, the State Administration for Industry and Commerce (SAIC), the provincial level IP bureaus and AICs in Shanghai, Jiangsu Province, and Zhejiang Province, and the Intermediate People’s Courts (patent trial courts) in Beijing, Shanghai, and Nanjing. We also met with the China Intellectual Property Society, the All China Patent Attorneys Association, the Patent Protection Association of China, the China Trademark Association, and the All China Lawyers Association. Finally, we participated in a full day China-U.S. IP Protection Seminar in Wenzhou.

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On May 29-31, Brooke Schrumm represented AIPLA at the WIPO PCT Working Group Meeting in Geneva.

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On June 4-6, Todd Dickinson and Al Tramposch attended the IP5 Meeting in Corsica, France. This was a significant event as it was the first time that the five offices met with the newly formed “Industry IP5” group, which parallels the Industry Trilateral. In addition to AIPLA, IPO, BusinessEurope, and JIPA, the Industry IP5 includes an

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association from Korea (the Korea Intellectual Property Association) and one from China (the Patent Protection Association of China). •

On June 10-12, Board member Kevin Tottis represented AIPLA at the Copyright Society of the USA Annual Meeting in Hamburg, NJ.

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On June 20-23, I attended the ECTA Annual Meeting in Palermo, Italy.

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On June 20-26, our Secretary Betty Morgan and member David Case represented AIPLA at the Diplomatic Conference on the Protection of Audiovisual Performances in Beijing, China. The conference was a great success—after 12 years of negotiation, the new Beijing Treaty on Audiovisual Performances was finalized and signed by WIPO member states.

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On June 24-26, Todd Dickinson and I attended the IP Business Congress in Cascais, Portugal. I had the pleasure of witnessing Todd’s induction into the IP Hall of Fame at a magnificent Gala Dinner at the event. Congratulations Todd!

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On June 25-27, Jeff Lewis attended the Association of Corporate Patent Counsel Summer Meeting in Beaver Creek, CO.

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On July 2-6, Jody Drake represented AIPLA at the WIPO Madrid Working Group Meeting in Geneva.

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On July 9-13, Caleb Gabriel represented AIPLA at the WIPO Intergovernmental Meeting on Genetic Resources, Traditional Knowledge, and Folklore, in Geneva.

As I look ahead on the calendar, we will of course be attending a number of similar meetings for the remainder of my presidential year, and I would like to highlight a few of them. In late August, our IP Practice in Latin America Committee will travel to Brazil, where we will attend the ABPI Annual Meeting and meet with various organizations and government agencies. On September 20-21, we will be cosponsoring a colloquium on patent application quality with FICPI, in Warsaw, Poland. In October, we will be attending the Global Network of National IP Practitioner Associations meeting and AIPPI World Congress in Seoul, Korea. Advocacy Another cornerstone of our strategic plan is advocacy. Recent efforts in this area include the following. 1. Amicus Briefs •

Viacom Int’l, Inc. v. YouTube, Inc. Consistent with the positions we advocated in our amicus brief, the Second Circuit held on April 5 that an Internet service provider is entitled to the DMCA safe harbor unless it has knowledge or awareness of facts or circumstances indicating specific and identifiable instances of aipla bulletin

infringement. However, the willful blindness doctrine may be applied, in appropriate circumstances, to demonstrate such knowledge or awareness. •

Kappos v. Hyatt. This case related to whether, in a district court action under 35 U.S.C. § 145 challenging the USPTO’s rejection of a patent application, the applicant can introduce new evidence not presented to the USPTO. In a decision generally consistent with the positions we advocated in our amicus brief, the Supreme Court held on April 18 that there are no limits on presenting new evidence in these cases beyond those imposed in the Federal Rules of Evidence and Federal Rules of Civil Procedure. Further, the district court should apply a de novo review to any such new evidence. However the court, in its discretion, may consider the proceedings and findings in the USPTO in deciding what weight to give to an applicant’s newly proffered evidence. In addition, the court has equitable authority to exclude evidence deliberately suppressed or otherwise withheld in bad faith from the USPTO, according to a concurring opinion from Justices Sotomayor and Bryson.

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Beer v. United States. In this long-running dispute relating to judicial pay, we joined with several other associations to file an amicus brief urging the Federal Circuit to rehear this case en banc. On May 18, the court granted the petition for rehearing. We expect to join in another amicus brief on the merits, arguing as in our previous briefs that the 1990s legislation blocking federal cost-of-living adjustments for federal judges constituted a reduction of pay violating the Compensation Clause of the Constitution.

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Association for Molecular Pathology v. Myriad Genetics, Inc. Following the Supreme Court’s remand to the Federal Circuit, we argued in our amicus brief filed June 15 that the Supreme Court’s Prometheus decision does not require the Federal Circuit to change its earlier decision in Myriad. In particular, the Prometheus decision and similar precedents that preclude patentability for “laws of nature” do not apply to claims to isolated DNA inventions that are produced through human ingenuity and differ markedly from native DNA. Nor does Prometheus preclude patent eligibility for method claims directed to screening for cancer therapeutics, since the claims at issue recite substantial and meaningful steps for identifying new and potentially life-saving cancer drugs. Thus, the claims involved in this case no not simply recite a law of nature with a mere instructions to “apply it,” as was found in Prometheus.

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Kirtsaeng v. John Wiley and Sons Inc. As urged in our amicus brief, the U.S. Supreme Court has granted certiorari in this case to resolve under what circumstances copyright law’s first sale doctrine applies to copies of works manufactured abroad and imported into the U.S. We are now in the process of drafting an amicus brief on the merits. Stay tuned! 8

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2. AIA Implementation/Rules •

As discussed in my previous President’s Reports, we are closely monitoring and commenting on the USPTO’s proposed rules to implement the AIA. We continue to owe a huge debt of gratitude to our Special Task Force on AIA Rulemaking (chaired by Alan Kasper and sub-chaired by Greg Allen, Herb Hart, and Mike Kirk), and to our representatives on the so-called Committee of Six Experts (“COSE”) Ken Nigon and Herb Hart, for their tireless efforts in reviewing and preparing comments on these extensive rules packages. Comments submitted since my last report include the following.

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On March 28, we submitted preliminary observations and suggestions regarding revisions to the USPTO’s rules and procedures that will be necessary to implement the first-inventor-to-file (“FITF”) system. We encouraged the USPTO to create broad, inclusive, and easily accessible guidance documents that incorporate legal analyses, policies, procedural changes, transitional practices, and training examples that can be used by both examiners and applicants. We suggested a number of issues that the guidance documents should address, including how the USPTO will determine whether FITF applies to particular applications (including continuing applications) based on their time and method of filing, a reference glossary of new legislative terms in the AIA and their interpretations, presentation and consideration of non-English language prior art, and procedures for and consideration of thirdparty submissions of prior art. We also suggested including a list of exemplary fact patterns to determine patent priority among conflicting applications.

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On April 5, we submitted supplemental comments regarding the USPTO’s Section 27 Genetic Diagnostic Testing Study following the Supreme Court’s Prometheus decision and Myriad GVR. Consistent with our previous comments and testimony on this topic, we indicated that we see no evidence that patents prevent access to confirmatory genetic testing in practice, and that we do not believe the Prometheus decision will increase access to confirmatory genetic testing even if applied widely to invalidate genetic patent claims. To the contrary, denying patents to protect innovation and investment in new diagnostic tests will likely decrease the number and variety of genetic tests available.

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On April 2 and 5, we submitted comments on the USPTO’s proposed rules to implement the transitional program for covered business method patents (“CBMP”), and on the proposed definition of “technological invention” for purposes of exclusion from the CBMP program. In particular, we opposed the USPTO’s proposed definition of “technological invention” because it is vague and conflates subject matter eligibility with novelty and nonobviousness, essentially implementing the EPO standard 2012 Spring Meeting Issue

of “technological” into U.S. patent law. We proposed instead using the existing standards of patent subject matter eligibility under Section 101 and U.S. case law to determine whether an invention is “technological” under the CBMP program. Specifically, we proposed that a petitioner for Section 18 transitional review must show that it is more likely than not that at least one claim in the challenged patent is directed to patent-ineligible subject matter under 35 U.S.C. § 101. We also suggested certain clarifications and revisions to the proposed rules, in addition to incorporating our other comments on PGR proceedings and procedures (see discussion below). •

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Also on April 5, we submitted comments on the USPTO’s proposed rules to implement derivation proceedings. While generally supporting the proposed rules, we suggested certain clarifications and additions to bring them into closer conformity with the AIA. On April 6, we submitted comments on the USPTO’s proposed Practice Guide for Proposed Trial Rules. The issues on which we provided comments and suggestions included scheduling orders and initial conferences, designation of lead and back-up counsel, pro hac vice recognition, electronic filing, confidential submission of invention dates in a derivation proceedings, page limits, substitute claims, motions, standing protective orders, and additional discovery. On April 9-10, we filed comments on the USPTO’s proposed rules regarding the new Patent Trial and Appeal Board (“PTAB”) trials and procedures, including Post-Grant Review (“PGR”), Inter Partes Review (“IPR”), and Rules of Practice for Trials Before the PTAB and Judicial Review of PTAB Decisions. In addition, we joined comments prepared by COSE (the committee of experts formed by the AIPLA, ABA-IPL Section, and IPO). In general, we commended the USPTO for incorporating into its proposed rules a number of aspects consistent with AIPLA’s and COSE’s prior proposals. However, we also pointed out the significant differences between the proposals, and requested that the USPTO’s proposed rules be modified in these areas. For example, we continued to express concern about the high fees proposed for filing PGR and IPR proceedings, and a related concern that the proposed procedures may be inefficient and cost intensive. In contrast, we proposed procedures which we believe streamline the procedures and reduce USPTO costs by minimizing involvement of PTAB judges. We also opposed the USPTO’s proposed rules to give claims their “broadest reasonable construction” in PGR and IPR proceedings, pointing out that defining a claim construction standard is a substantive matter properly left to the courts. Our comments addressed many other issues, including appointment of counsel, recognition of attorneys pro hac

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vice admission, the duty of candor in PTAB proceedings, estoppel, page limits, contents of petitions, motions, oppositions, and replies, discovery procedures and limits, amendment of claims, and many other details. The final rules on these matters will be issued no later than August 16, and will become effective September 16, 2012. We anticipate filing comments in late July on the USPTO’s proposed rules to implement the micro entity provisions for paying patent fees under the AIA. These provisions will reduce certain patent fees for applicants qualifying as micro entities by 75%. 3. New gTLD Program As has been widely publicized, ICANN is in the midst of implementing a new program to introduce a large number of new gTLDs. The first window for applying for new gTLDs closed on May 30, and ICANN revealed the list of nearly 2,000 applications filed on June 13. Members of the public now have until August 12 to comment on the applications and review process, and trademark owners can file objections to any of the proposed gTLDs through January 13, 2013. AIPLA has closely monitored this program since it was first proposed, including submitting comments to both ICANN and the U.S. government when possible to express concerns about how these new gTLDs may adversely impact trademark owners. Most recently, Al Tramposch and Trademark Internet Committee Chair Mark Partridge participated in a U.S. Brand Owner Summit on June 11. The primary purpose of the meeting was to develop consensus among U.S. brand owners on additional IP rights protection mechanisms for second-level domain names in the new gTLDs, which can then be communicated to both ICANN and the U.S. government in its role with the GAC. AIPLA will remain engaged in this process and similar efforts to protect trademark rights against abuse in the new gTLD program. 4. Other Advocacy Efforts •

On May 9, Food and Drug Committee Vice Chair Steve Parker attended the USPTO’s Second Annual Medical Device Partnership Meeting.

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On May 24, we submitted comments to the FDA regarding its Draft Guidance for Industry on Biosimilars. We expressed concern that certain proposed interpretations in the definition of “biological product” would arbitrarily exclude certain alpha amino polymer acids from qualifying for protection under the Public Health Services Act, which would adversely impact their development and commercialization potential. We also suggested that the FDA provide greater specificity on permissible modifications for a biosimilar product, and include greater guidance for subsection (k) applicants who intend to deliberately modify a primary amino acid aipla bulletin

supporting passage of the Foreign Counterfeit Prevention Act (H.R. 4216) or similar legislation, which provides that it is not a violation of the Trade Secrets Act for CBP officers to provide information and samples of suspected infringing, counterfeit, or otherwise pirated goods and circumvention devices to IP rights holders for inspection and evaluation. Many thanks to Anti-Counterfeiting and Anti-Piracy Committee Chair Jonathan Hudis and Vice Chair Crystal Gothard for preparing these comments and resolution.

sequence to avoid patent rights. Finally, we recommended that the FDA publish the dates that the FDA may license a product that is biosimilar to or interchangeable with a reference product, which would improve certainty for both reference product sponsors and subsection (k) applicants, thereby fostering investment and innovation. Thanks to Biotechnology Committee Chair Jim Kelley and Food and Drug Committee Chair Denise Kettelberger for their assistance in preparing these comments. •

On June 6, we submitted comments to the USPTO on its proposed CPI Adjustment of Patent Fees for Fiscal Year 2013. While generally supporting the proposal as an interim measure to bridge over until the USPTO exercises its fee-setting authority under Section 10 of the AIA, we stressed that there should be no more than a single fee adjustment annually in normal years given the administrative burdens on corporations and law firms in adjusting payment systems and advising clients about fee increases. We also expressed general concern about the overall escalation of fees imposed by another across-theboard increase following the recent 15% surcharge on all patent fees authorized by the AIA, as well as the significant overhaul of fee changes expected in the coming months when the Office adjusts fees under Section 10 of the AIA. Thanks to our AIA Task Force (particularly Greg Allen, Nick Godici, Mike Kirk, and Alan Kasper) for their assistance in preparing these comments.

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On June 19, we submitted comments to the USPTO opposing the use of economic factors to place patents under a secrecy order. Thanks to Patent-Relations with the USPTO Committee Chair Greg Allen and Vice Chair Nick Godici for their assistance in preparing these comments.

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On June 25, we submitted comments to the U.S. Customs and Border Protection regarding a proposal to allow CBP to disclose to IP rights holders certain information appearing on merchandise packaging to determine whether the merchandise bears a counterfeit mark. Although we expressed general support for CBP disclosing more information to IP rights holders, we suggested that the proposed rule does not go far enough. In particular, the rule does not address other forms of IP violations (such as copyright piracy or illegal importation of circumvention devices in violation of the DMCA), and the limitations on the information permitted to be disclosed may restrict trademark owners from the ability to determine whether the products are indeed counterfeit. We also expressed concern that providing the suspected importer with seven days notice before the information is released may provide sophisticated counterfeiters with the opportunity to falsify documents or other proof in an attempt to bypass giving IP rights holders a fair opportunity to inspect the suspected merchandise. These comments complement a resolution adopted by the Board of Directors at our Spring Meeting 10

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On July 16, we submitted comments to the USPTO regarding a proposal by the WIPO Committee on Standards to revise the standard for the presentation of nucleotide and/or amino acid sequences to require use of XML format.

Meetings/Programs Spring Meeting – We had an outstanding (albeit rainy!) Spring Meeting in my hometown of Austin May 10-12. The meeting was well attended, and included an excellent mix of educational sessions and social events. Among the highlights was a keynote luncheon address by U.S. Representative Lamar Smith of Texas, Chair of the House Judiciary Committee and of course one of the named sponsors of the Leahy-Smith America Invents Act. At the other luncheon, Todd Dickinson moderated a panel discussion with officials from the USPTO – including Patent Reform Coordinator Janet Gongola, Chief Judge James Smith and Judge Michael Tierney from the Board of Patent Appeals and Interferences – and Bob Armitage, Chair of the ABA IPL Section (and Past President of AIPLA), to address the issues and challenges confronting the USPTO in implementing the AIA. Our entertainment featured the opportunity for attendees to “scoot their boots” to the legendary music of Grammy Award winning band Asleep at the Wheel. Many thanks to officer-incharge Wayne Sobon, the Professional Programs Committee, and all of the coordinators, moderators, speakers, and staff for making this such a successful meeting. 2012 USPTO Design Day — On April 10, we co-sponsored this free seminar relating to proper graphic descriptions of design patent claims. Women in IP Law Committee Networking Event – This year’s edition of this popular event occurred on May 2 and was a huge success, with over 25 cities participating. I, along with Committee Chair Alyson Barker, Vice Chair Hathaway Russell, and organizer Carine Doyle, had the privilege of addressing the participants on the nationwide call during the event. New Lawyers Committee Events – Our New Lawyers Committee has been quite busy these days. On May 30, the committee co-sponsored a one-hour pilot CLE webinar entitled “Examiner Interviews 101,” focusing on strategies and best practices for examiner interviews at the USPTO. The program was videocast from Washington DC (in the offices of Dickstein Shapiro), and simulcast to Boston (hosted by Dickstein Shapiro), Chicago (Foley & Lardner), and New 2012 Spring Meeting Issue

York (Fish & Richardson). This pilot was quite successful, with approximately 135 participants among the four cities. Congratulations to the coordinators, speakers, and sponsors for making this such a great event. In addition, the NLC will hold its Second Annual Retreat Weekend in New York August 10-12. 2012 Legal Secretaries and Administrators Conference – On June 7-8, we again co-sponsored this annual conference at the USPTO, designed to provide training to legal secretaries and administrators on USPTO operations, services, and procedures. Fourth Annual Trademark Bootcamp – On June 22, we hosted this annual day-long program, which provides a complete overview of the trademark prosecution process at the USPTO. 16th Annual Patent Cooperation Treaty Seminar – On July 23-24, we will host this popular 2-day program, which covers in detail PCT procedures, policies, and recent developments. The program will be held at the Westin in Alexandria, Virginia. Practical Patent Prosecution Training for New Lawyers – On August 23-24, we will host this annual 2-day “bootcamp,” designed to teach new practitioners and others the basics of patent application preparation and prosecution. The seminar will be held at the Westin in Alexandria, Virginia. AIPLA-AUTM Program — On September 12, we are cosponsoring a symposium with the Association of University Technology Managers (AUTM) on the America Invents Act, in College Station, Texas. Webinars – Our Online Programs Committee continues to coordinate an outstanding and wide ranging array of webinars for our members. These include monthly programs on timely patent, trademark, and copyright issues, as well as free career and practice management programs. Please visit our website for the latest schedule of upcoming webinars and an archive of previous webinar recordings/materials available for purchase. Annual Meeting – Don’t forget to sign up for our upcoming Annual Meeting October 25-27 at the Marriott Wardman Park in Washington DC. As always, this will be our biggest meeting of the year and will be packed with top-notch CLE programs, including an entire two-day track dedicated to examining the impact of the AIA implementation on your practice, and networking events. The Honorable Kathleen O’Malley from the Federal Circuit will be one of our keynote luncheon speakers. I hope to see you there!

national finals of the AIPLA 38th Annual Giles Sutherland Rich Memorial Moot Court Competition. See the full article on this year’s Moot Court on page 14. AIPLA also sponsored four awards during the 63rd annual Intel International Science and Engineering Fair, May 13-18 in Pittsburgh, PA. Two AIPLA members also participated as judges. See the full article on this year’s winners on pages 14–17. We have received 32 entries for the Robert C. Watson Award recognizing a full-time law student for an article on a subject relating to the protection of intellectual property. The award will be presented at the Annual Meeting. AIPLA and the ABA Intellectual Property Law Section support the American Intellectual Property Law Education Foundation, with a mission to promote diversity in the IP Bar. The Foundation supports two awards: the Jan Jancin Awards Competition and the Sidney B. Williams, Jr. IP Law Scholarship. Over the past 10 years, the Foundation has awarded over $1 million in scholarships to more than 50 minority law students. The Jan Jancin Awards Competition offers three awards to law students nominated by their schools who have excelled in the study of IP Law. The deadline was July 5, and we received 17 nominations. The winner receives $5,000 and travel expenses to the Annual Meeting. The second award was established by the IP Law Section of the Virginia State Bar and includes a $4,000 cash award. The third award was created by the AIPLA Past Presidents, and the winner receives a cash award up to $2,500 and is invited to attend the Annual Meeting. Coming up, AIPLA is accepting applications for the 2012 Maurice Klitzman Award, created to help young corporate patent attorneys continue their learning, by providing complimentary registration to the AIPLA Annual Meeting and access to an AIPLA mentor. The deadline for entries is August 24. Farewell In closing, let me again say what an honor it has been to serve as your President. We have had an extraordinarily busy and successful year, and I thank all of you for your participation and support. I wish my successor Jeff Lewis all the success in the world, and I’m quite confident that he and his successors will take our organization to ever greater heights in the future. I look forward to continuing to serve AIPLA for many years to come.

Law Students Receive AIPLA Awards As you’ll see detailed in articles in the Bulletin, in April in Washington, DC, students from eight law schools earned the opportunity to argue in the Court of Appeals for the Federal Circuit, and four students took home cash awards during the 2012 Spring Meeting Issue

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The 63rd Annual Intel International Science and Engineering Fair by: Kristin Biedinger and Lee Kim The Intel® International Science and Engineering Fair® (ISEF) is the world’s largest international pre-college science competition, providing an annual forum for more than 1,500 high school students from 65 countries, regions, and territories to showcase their independent research. The 2012 Fair was held May 13-18 in Pittsburgh, PA, and once again AIPLA participated in the judging, and sponsored four awards recognizing the innovation and scientific achievement of young researchers.

Shyamsunder Raghavan of The Woodlands, TX. The title of their project was “A Study of Solar Paint,” with the objective of creating a solar-energy harvesting paint. The project entailed the fabrication of three paints in accordance with the structure of a thin-film solar cell which comprised of a back lead, p-type, n-type, and front lead with a wire connecting the back lead to the front lead. Aluminum formed the back lead, the semiconductor CIGS formed the p-type, and ZnO:Al formed the n-type and front lead. The paint was applied to a concrete substrate. A sensor was used to measure the voltage, current, and power output of each concentration. For the preliminary trials, the least concentration of ZnO:Al yielded the greatest power due to the formation of undesirable ligands. The greatest concentration of CIGS yielded the greatest power.

Students are able to compete in the competition after winning a top prize from one of 446 affiliate fairs in approximately 70 countries, regions and territories. At this year’s Fair, there were 1,549 student finalists. Grand Awards were presented in various scientific categories and included scholarships, tuition grants and scientific field trips. AIPLA sponsored four Special Awards: two “First Awards” of $1,000 each and two “Second Awards” of $250 each. Judging on behalf of AIPLA this year were Kristin Biedinger of ChemImage Corporation and Lee Kim from Tucker Arensberg, PC, Pictured from left to right: Daniel White, Shyamsunder Raghavan, Allison Martin, Toluwani Soares, AIPLA Judge – Lee Kim, AIPLA Judge - Kristin Biedinger, William both based in Pittsburgh. Shipley and Jack Andraka One AIPLA First Award was presented to Jack Andraka of Crownsville, MD. The title of his project was “A Novel Paper Sensor for the Detection of Pancreatic Cancer,” which involved a new method to detect pancreatic cancer. Based on diabetic test paper, Jack created a simple dip-stick sensor to test blood or urine to determine whether or not a patient has early-stage pancreatic cancer. His study resulted in over 90% accuracy and showed his patent-pending sensor to be 28 times faster, 28 times less expensive and over 100 times more sensitive than current tests. After initially conceiving of his idea, Jack began collaborating with a researcher at Johns Hopkins University in Baltimore, MD to further his research. In addition to the AIPLA First Award, Jack also received the Gordon E. Moore Award which was the top prize in the competition. The other AIPLA First Award was presented to the team of Allison Rose Martin, Toluwani Temilouwa Soares, and 12

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One of the AIPLA Second Awards was presented to Daniel David White of Somerset, MA. The title of his project was “Diagnosing Premature Cancer Mathematically Utilizing Minkowski Dimension.” The Minkowski dimension characterizes the structure of the cell membrane to differentiate between normal and cancerous cells. David’s project was to detect if a cell

Pictured from left to right, back to front: AIPLA Judge – Lee Kim, Jack Andraka, Willliam Shipley, Shyamsunder Raghavan, AIPLA judge – Kristin Biedinger, Toluwani Soares, Daniel White and Allison Martin

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is cancerous based on the Minkowski dimension. An original computer program was designed to determine relative Minkowski dimensions of cells. A digital microscope captured images from two different views of the same slide. Two slides were analyzed: one of normal skin cells and the other of basal cell carcinoma (a form of skin cancer). The program mapped two-dimensional cell images to three-dimensional space, and calculated their relative Minkowski dimensions. Possible applications include the use of biological agents and/or nanobots to provide for diagnosis of cancerous cells and their eradication at a premature state. The other AIPLA Second Award was presented to William Randall Shipley of Garland, UT. His project, “Quaternary Computing,” created the framework for a new computer

processor to replace current binary implementations. His solution entailed the creation of a completely redesigned simulator incorporating a binary-quaternary converter, a quaternary-binary converter, and a quaternary-Schmidt trigger. His solution is backwards compatible with current binary implementations. AIPLA is proud to be a part of the Intel Science and Engineering Fair to recognize these outstanding students for their innovations. If you would like to read more about the awards and winners, visit: www.societyforscience.org/intelisef2012.

P.C. C

CMY

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The Giles Sutherland Rich Moot Court Competition Presenting Problems in Intellectual Property Law

by: Christopher Agrawal AIPLA is proud to sponsor this annual competition that Texas College of Law, University of Pennsylvania School of brings together the best of the best. Students from eight Law, and University of San Francisco School of Law. law schools earned the opportunity to argue in the Court The competition opened with an AIPLA-sponsored breakfast. of Appeals for the Federal Christopher Agrawal, the Circuit, and four students acting national director of took home cash awards the competition, and Lindsay during the national finals Nalevanko, meeting planner of the 38th Annual Giles for AIPLA, welcomed the Sutherland Rich Memorial contestants, and Mr. Agrawal Moot Court Competition. The presented the students with competition, sponsored by certificates recognizing their AIPLA, took place April 18achievements in the regional 20 at the Howard T. Markey competitions. National Courts Building in Distinguished Judges Washington, DC Suzanne Fitzgerald and Bradley The student appellate Snyder of Loyola University litigators participated in Chicago School of Law Winners Suzanne Fitzgerald & Bradley Snyder with the Competition Judges, quarter-finals, a semiwere awarded the first place Donnald Dunner, Judges Jimmie Reyna and Sharon Prost. final, and a final round AIPLA Giles Sutherland Rich of competition, facing a prestigious panel of judges and Memorial Award of $2,000. Nicholas Restauri and Rachel experienced attorneys from the federal government and the Schweers of DePaul University College of Law took runner- private sector. up honors and received the Irving Marcus Award of $1,000, sponsored by Oblon Spivak McClelland Maier & Neustadt, The quarter-final judges included Associate Solicitors Sydney Johnson, Jr. and Lynne Pettigrew of the USPTO PC. Solicitor’s Office; Judges Andrew Metz, Michael Astorino, Teams from leading law schools participated after winning Jennifer Bisk, and Jeffrey Fredman of the USPTO Board of regional competitions in March in Boston, Chicago, Houston, Patent Appeals and Interferences; Joseph Vardner of the US and the San Francisco Bay Area. Schools included: Brooklyn Department of Justice; Tara Hutchings of Accenture; Jason Law School, University of Minnesota Law School, DePaul Melvin of Finnegan Henderson Farabow Garrett & Dunner, University College of Law, Loyola University Chicago School LLP; William Jenks of Gibson Dunn & Crutcher; Joseph Edell of Law, Drexel University Earle Mack School of Law, South of Kirkland & Ellis; Antigone Peyton of Cloudigy Law; and Aaron Maurer of Williams & Connolly. The semi-final judges included Associate Solicitors William LaMarca and Scott Weidenfeller of the Solicitor’s Office; Daniel H. Shulman of Reynolds Holdings; Rama Elluru of Steptoe & Johnson LLP; and David Swenson of Robins Kaplan Miller & Ciresi, LLP. Federal Circuit clerks Jennifer Nock, Andrew Dufresne, Anna Mayergoyz, Ben Hickman, Amy Greywitt, and Jason Weil served as bailiffs for the quarter-final and semi-final rounds.

AIPLA Deputy Executive Director Vince Garlock congratulates the winners.

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Federal Circuit Judges Sharon Prost and Jimmie Reyna, and appellate lawyer Donald Dunner judged the final round of the competition. Federal Circuit Judge Richard Linn sponsored the event, and Federal Circuit clerk Amanda Murphy served as the bailiff. The competition concluded with award presentations and a reception at the Dolley Madison House. 2012 Spring Meeting Issue

Other Participants The Regional Directors involved in the competition included: Elizabeth R. Burkhard, Esq. of Holland & Knight; Kevin E. Noonan of McDonnell Boehnen Hulbert & Berghoff; William P. Ramey, III of Ramey & Browning, PLLC; and Roman Swoopes and Stefan Szpajda of Morrison & Foerster. The problem was prepared by Yelena Morozova of Cowan, Liebowitz & Latman, P.C., with assistance by David Gosse, Jason Croft, Erick Lee, Ida Wahlquist-Ortiz and Ryan Schermerhorn. The bench memorandum was prepared by David Gosse of Fitch Even Tabin & Flannery LLP, Yelena Morozova of Cowan, Liebowitz & Latman, P.C., and Chad Pannell of King & Spalding, LLP.

Loyola University Chicago School of Law’s Bradley Snyder and Suzanne Fitzgerald; DePaul

AIPLA congratulates all of the participants in this University College of Law’s Nicholas Restauri and Rachel Schweers. year’s competition and thanks everyone involved for their time and effort in helping to make this competition a success.

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Copyright Office Proposes New Fee Schedule As a result of its recent study of the costs of providing its services to the public, the Copyright Office on March 28, 2012, published for public comment a new fee schedule that would more accurately reflect the business costs of the Office. Certain fee changes are subject to review by Congress. The fees reviewed by Congress are the “statutory fees,” those covering services enumerated in the Copyright Act, such as the cost of registering a claim to copyright. The new fees would become effective 120 days after Congress receives the proposed fees together with the economic analysis unless Congress passes a law stating that it does not approve. Other service fees, including the cost of preparing copies of Copyright Office records, may be set by regulation without congressional review. The Office last conducted a study of its fees in 2008, and the recommendations were implemented in 2009. The new fee study was begun in October 2011 as one of the Register’s priority projects. The updated fee schedule would be implemented early in fiscal 2013. In setting all fees, including those for basic registration, the Office examined its costs to provide the service. In fiscal 2011, the Office recovered only 64 percent of its cost to process an online registration and 58 percent of the cost to process paper applications. With the elimination of Form CO in summer 2012, the Office proposed to offer two options for registering a copyright: online registration and the traditional paper application. To recover its costs, the Office proposed to increase the fee for online registration from $35 to $65 and the fee for paper applications from $65 to $100. In its desire to maintain an affordable copyright registration system that encourages the establishment of the public record and the availability of the legal remedies in the Copyright Act, the Office proposed to offer a new fee of $45 to individual authors who register a single work online that is not made for hire. Some fees, including those for registering a renewal claim and making a CD or DVD copy of Copyright Office records by

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staff, would decrease. A number of fees for special services, such as a request for reconsideration of a refusal to register a claim, would remain the same. In addition, the Office proposed to restructure the fees for Freedom of Information Act requests based on whether an administrative staff member or a professional staff member provides the service. In an earlier request for comments on fee changes published in the January 24, 2012 Federal Register, the Office sought comment from the public on two specific issues: whether special consideration should be granted to individual authors registering a single work and whether the Office should offer new or expanded special services. The proposed fee schedule reflects the public’s comments. While the Office received many additional proposals, it did not address them in the announcement of the proposed new fee schedule, but will continue to consider them in the context of other ongoing technical or legal projects. For additional information on the Office’s schedule of proposed fee, go to www.copyright.gov/fedreg/2012/77fr18742.pdf and www.copyright.gov/laws/rulemaking.html#fees. Office Discontinues Use of Form CO The Copyright Office announced in the Federal Register that it will discontinue the use of Form CO effective July 1, 2012. Form CO has been in use since 2008 as an optional means of applying for copyright registration. The Office introduced Form CO as a middle ground between filing a claim for registration online through the electronic Copyright Office and filing an application on a paper form. Form CO was filled out on a computer, printed, and mailed to the Office together with the fee and deposit(s). As the applicant filled in the fields on the computer screen, barcodes were created that contained the information keyed in by the applicant. As properly completed Form CO applications were scanned by Office staff, software extracted the information contained in the barcodes and populated corresponding data fields in an electronic record. However, the Office discovered that many applicants added handwritten notations to printed Form CO applications. These emendations and additions, together

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with damage to the forms from the mail screening process and problems with printing, such as distorted barcodes, resulted in the use of significant staff time to process the Form CO applications. Although applications using Form CO represented only two percent of the submissions submitted since January 2011, it required a disproportionate amount of time to process. According to the Federal Register, “the key benefit gained in eliminating Form CO is the savings in resources which the Office now spends on reviewing each Form CO to ensure the accuracy of the Form CO information embedded in the barcode.” With the discontinuance of Form CO, applicants may either register online, a method currently used by 87 percent of remitters, or they may submit applications using paper application forms.

by a federal court of a class-action settlement in the highly publicized Google book-scanning case, Authors Guild v. Google Inc. “The Google project made it clear that mass digitization is possible, exciting, and here to stay,” she said. She noted that the mass digitization document explores several licensing models that have been proposed to clear rights in projects scanning copyright works, including orphan works, which are works whose owners cannot be identified or found for the purpose of requesting permission. “It’s pretty clear that there is going to be some kind of licensing needed,” she said. Besides licensing options, the report considers what aspects of digitization are or should be covered by fair use or library exceptions under copyright law, she said.

The report is available massdigitization.

The American Bar Association Committee that tracks Copyright Office affairs came to the Office on March 2, 2012, for its annual meeting with senior staff.

Registration

Maria A. Pallante, Register of Copyrights, opened the meeting, highlighting goals set forth in Priorities and Special Projects of the United States Copyright Office, published in October 2011 and available at www.copyright.gov/docs/ priorities.pdf. “We aim to accomplish these goals by October 2013,” the Register stated. “We’re looking for innovative ways to do so within a tight budget and with limited staffing.” Priorities and Special Projects The Office’s general counsel reported on a forthcoming study of ways to resolve small copyright claims outside federal courts. Congress directed the Office to conduct the study because the high cost of federal court action prohibits copyright owners with limited resources from pursuing infringement claims likely to involve small monetary awards. He said the Office is reviewing comments received in response to a notice of inquiry published in the Federal Register last October and will do further public outreach in coming months. The report is due to Congress in October 2013.

www.copyright.gov/docs/

The Office’s Associate Register for Registration and its registration program manager reported on claims processing. They said the Office is processing most electronic claims within three months and ingested paper claims within ten months. The number of workable claims on hand awaiting processing is at a normal level, they noted. “Although some older paper claims remain from when the Office was transitioning to electronic registration, we have no real backlog at this point, thanks to a great staff that works hard every day,” said the program manager. The Associate Register cited as challenges the receipt of claims for works for which the Office needs to update its registration practices, including websites and databases. “Once a new compendium is in place, we will have guidelines to help us deal with such material,” she noted. See “Compendium of Copyright Office Practices” below. In addition, the Associate Register noted that the Registration Program had lost 15 percent of its staff in the Library of Congress buyout offered late last year, increasing the workloads of remaining staff. Electronic Copyright Office System

The Office’s Associate Register for Policy and International Affairs spoke about the Office’s October 2011 discussion document on mass book digitization.

The director of the Copyright Technology Office (CTO) reported on outreach related to upgrading the Office’s electronic registration and recordation systems.

She explained that the document seeks to establish a framework for analyzing issues raised by projects that involve scanning large quantities of copyrighted works. She said it does so in the context of the March 2011 rejection

He said that CTO has received valuable feedback from initial meetings with business and information technology experts and others. Among other technical issues, CTO is exploring

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an optimal interface for website registrants, what details from applications to make searchable, and repository standards for acquiring and migrating electronic deposits, he said. He said CTO will hold a symposium soon to invite further comment. At the end of its inquiry, CTO will present findings and recommendations to the Register. Recordation The chief of the Information and Records Division updated the Committee on the status of reengineering of the division’s Recordation Section. He noted that the section was not part of the 2007 reengineering effort that implemented electronic copyright registration. “Recordation is still paper-driven,” he said. “Our goal is to introduce automation into the recordation process so that we can realize the kinds of efficiencies we’ve seen with electronic registration.”

explained. The Copyright Office provided technical support and advice to Congress as members developed the legislation, she said. “Enforcement in the online world has to be subject to careful deliberation if we’re going to have a meaningful copyright law,” the Register added. “The Copyright Office will continue to work with Congress, content aggregators, content providers, and others to achieve balance between the exclusive rights of copyright owners and the public interest. It may take some time, but it’s better to get it right,” she said. Compendium of Copyright Office Practices The Register announced in September 2011 a project to revise the Compendium of Copyright Office Practices, stating that she expects to publish a revised volume in October 2013. The compendium is the official source of Copyright Office registration and recordation practices.

He said staff will consult stakeholders, including business and technology experts. Issues under consideration include user expectations regarding records searches, ways for filers to update recorded information, and the implications of connecting to privately held records and databases.

To manage the project, the Register contracted with Mary Rasenberger, an expert in copyright law and practice and a former Copyright Office and Library of Congress staff member. Rasenberger updated the Committee about the status of the revision project.

He said the Office will host roundtables to explore these issues.

She said a “fabulous team” has been assembled to assist her, including members of the Office’s legal and registration staff.

Domestic Legislation An Office senior counsel for policy and international affairs reported on legislation introduced in 2011 to give the government new tools to act against foreign websites that distribute copyrighted works to US consumers without authorization from copyright owners. The bills also apply to counterfeit goods and medication. The Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011, otherwise known as PIPA, was introduced in the Senate in May 2011; the Stop Online Piracy Act, or SOPA, was introduced in the House in October 2011. Both bills have generated heated public debate; technology firms in particular object to remedies they provide against online piracy. The Online Protection and Enforcement of Digital Trade Act, called the OPEN Act, was introduced in the Senate in December 2011 and in the House in January 2012 as a more narrowly focused alternative to PIPA and SOPA. “The bills attempt to close gaps within existing law in terms of intellectual property enforcement,” the senior counsel

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“Although the compendium does not have the force of regulation, courts and the public rely on it as the official statement and interpretation of Copyright Office practices,” she said. “Making it current will increase its importance.” Much content must be updated, she explained, because the most recent major revision of the compendium occurred in the 1980s. In addition, new content must be developed. Rasenberger noted that the United States had signed the Berne Convention for Protection of Literary and Artistic Works since the last revision, and new categories of works—vessel hulls, mask works, and architectural works—have come under copyright protection. Digital works raise especially complicated issues, Rasenberger said. “Websites can be updated hourly, so when is a website published? When is an online work published?” She said she is aiming for an accessible writing style, despite the fact that some terminology the Office uses is unique to copyright. “In particular, sections directed at the public, such as an

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overview of the registration process, need to be in plain English.” Rasenberger said that she will be soliciting feedback from the copyright community and the public. Rulemakings and Litigation An attorney-advisor in the General Counsel’s Office discussed the Office’s December 2011 recommendation to Congress that federal copyright protection be extended to pre-1972 sound recordings. See www.copyright.gov/sound for details. He also described the Office’s efforts related to copyright exceptions for libraries and archives. A 2008 report to the Librarian of Congress and the Register of Copyrights concluded that section 108 of the copyright law fails to meet the needs of libraries and archives in the digital age. He said issues of concern involve limits under current law on how libraries, archives, and other entities, including museums, can deal with born-digital works, digital preservation, and uses and lending of digital copies of works. The 2008 report included recommendations for legislative change. But because some issues involved were implicated in ongoing litigation, including the Google book-scanning case, stakeholders hesitated to proceed with legislative discussions, he said. The Copyright Office is now moving the discussion forward. “We cannot cease all deliberation waiting for the outcome of litigation,” the Register stated. “The issues involved are too critical.” The attorney-advisor told the Committee that the Office is consulting stakeholders and plans to formulate a discussion document and preliminary recommendations later this year. The general counsel reported on the January 18, 2012, Supreme Court decision in Golan v. Holder. See “Supreme Court Affirms Copyright in Former Public-Domain Works” below. “The decision brings to a resounding end a series of constitutional challenges to copyright legislation that began in 1999 with Eldred v. Ashcroft,” the general counsel told the Committee. The general counsel also updated the Committee on the status of Bean v. Houghton Mifflin and Alaska Stock v. Houghton Mifflin. The cases implicate the Copyright Office’s practices for group registration of photographic databases; both are on appeal before the US Court of Appeals for the Ninth Circuit. The general counsel noted that the Ninth Circuit heard arguments in Alaska Stock in July 2011 but that no decision

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had been reached. He said the court has deferred argument in Bean until after a decision in Alaska Stock is announced, presumably because the facts in the two cases are the same. The general counsel told the Committee that “many things are on the Copyright Office’s plate” regarding regulatory reform. He reported that a recommendation would soon be ready for the Register’s consideration related to interim regulations adopted in January 2011 governing electronic registration of groups of published photographs and of automated databases consisting predominantly of photographs. He said the Office is working on a separate rulemaking affecting group registration of unpublished works. “The purpose is to solicit more details for the copyright record about what is being registered,” he said. “We’re in the conceptual stage on this one right now.” The Office will soon initiate a proposed rulemaking about the definition of a claimant under section 202.3 of the Copyright Office’s regulations, he said. (See below) The general counsel reported that the Office is also working on rulemakings related to supplementary registrations, cancellation of registrations, and copyright deposits containing trade secrets. Another rulemaking will propose limits on group registrations of databases; yet another will address online works. “A big question has to do with unit of publication. A website can contain hundreds or even thousands of articles. What is the unit of publication for registration purposes?” he asked. The general counsel also noted an ongoing project, connected to interim regulations the Office adopted in 2010, to acquire through mandatory deposit serials published solely in electronic formats and available only online. He noted in conclusion that regulations will need to be in place on these and other matters before publication of the updated Compendium in October 2013. International Issues The Associate Register for Policy and International Affairs noted that a World Intellectual Property Organization (WIPO) diplomatic conference will occur in Beijing this summer related to a proposed international treaty to increase protection for audiovisual performers. Several outstanding issues remain to be resolved among members, but the Associate Register said prospects for approval of the treaty appear promising. She said that WIPO’s Standing Committee on Copyright and Related Rights will continue at its meeting in July to address access to copyrighted works by the blind and other print-

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disabled people. Specifically, the Committee is considering a working document to enable dissemination of material within and across borders. She noted a related pilot project called TIGAR (trusted intermediary global accessible resources), which involves cross-border licensing of accessible works for the visually impaired. Copyright Office, Library of Congress, and National Library Service staff have been working with US publishers on US participation in the project, she said. In other activities before the Committee, a treaty to grant broadcasting organizations intellectual property rights in their signals remains on the agenda, she said. She also reported that African countries have initiated a work plan focusing on limitations and exceptions to copyright law that take a “holistic approach” to access to knowledge in Africa. An Office senior counsel for policy and international affairs discussed the Office’s participation in WIPO’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge, and Folklore. The Committee is negotiating an international instrument to ensure protection of traditional knowledge and cultural expressions, folklore, and genetic resources, she explained. She said she had attended a Committee meeting in Geneva in February and would be attending other meetings in April and July 2012. The Associate Register remarked on Office contributions outside WIPO, noting that the Office is involved in discussions with China through the US-China Joint Commission on Commerce and Trade, a forum for resolving trade concerns and promoting bilateral commercial opportunities. She also noted the Office’s continuing participation in the delegation negotiating the Trans-Pacific Partnership Agreement. The Office has provided support on copyright and enforcement provisions, she said. “Participants want to conclude an agreement by the end of the year,” she said. “However, three nonparticipating countries have recently expressed interest in joining the negotiations, which may slow things down.” In addition, she noted the Office’s involvement in the delegation that negotiated the Anti-Counterfeiting Trade Agreement. She said recent protests against the agreement have led to discussions in Europe about its consistency with European Union law. These discussions are continuing, she said. The Office’s senior counsel for policy and international affairs reported that the United States had signed free trade agreements with three countries: Colombia, Korea, and

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Panama. See “Office Staff Advise on Free Trade Agreements” below. In addition, she noted the participation of Office legal staff in the process leading up to the 2012 Special 301 Report. Published annually in April by the Office of the US Trade Representative, the report evaluates the adequacy and effectiveness of protections for intellectual property among trading partners of the United States. Supreme Court Affirms Copyright in Former PublicDomain Works The Supreme Court ruled on January 18, 2012, that Congress acted “comfortably within” its constitutional authority in enacting a 1994 law extending US copyright protection to certain foreign works. Nor did it violate the First Amendment, as plaintiffs in the case, Golan v. Holder, had alleged. Before the law’s enactment, the affected works were in the public domain in the United States but still protected by copyright in their countries of origin. Orchestra conductors, publishers, and others who had enjoyed free access to the works when they were in the public domain filed the Golan suit in 2001. They argued that the Constitution’s copyright clause prohibits Congress from withdrawing works from the public domain. They also charged that Congress, in doing so, violated the free speech rights of users like themselves who had depended on the public-domain availability of the works. The Copyright Office’s general counsel welcomed the Supreme Court’s decision in Golan. “Had the Court ruled the other way,” he said, “it likely would have paved the way for constitutional challenges to past and future amendments to copyright law. The Court’s strong defense of Congress’s authority to determine the ground rules for copyright protection, and its clarification of the narrow limits of First Amendment review of copyright legislation, should deter most or all such challenges.” Congress passed the Uruguay Round Agreements Act (URAA) in 1994 to implement US obligations under two global agreements: the Berne Convention for the Protection of Literary and Artistic Works and the Agreement on TradeRelated Aspects of Intellectual Property Rights (TRIPS). Many foreign works were in the public domain in the United States before the URAA’s enactment because their owners had not complied with formalities that used to be in US copyright law. The works may have lacked a copyright notice when they were published, for example, or their copyrights may not have been renewed. Others were in the public domain because their country of origin had no copyright relations with the United States.

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The URAA amended section 104a of the copyright law to restore US copyright to foreign works that were in the public domain for these reasons. It also extended federal copyright to pre-1972 foreign sound recordings, which had been protected only under state laws. A district court dismissed Golan in 2005. In 2007, the US Court of Appeals for the 10th Circuit reversed part of that decision, however. It ruled that the plaintiffs’ claims based on the copyright clause merited dismissal. But it also ruled that Congress’s exercise of its copyright clause power is subject to heightened First Amendment review “if it altered the traditional contours of copyright protection,” citing the Supreme Court’s 2003 decision in Eldred v. Ashcroft. The 10th Circuit called one of those contours the “bedrock principle of copyright law that works in the public domain remain there,” holding that section 104a “alters the traditional contours of copyright protection by deviating from this principle.” The 10th Circuit sent the case back to the district court, which ruled that section 104a violated the First Amendment. On appeal, the 10th Circuit concluded that section 104a did not violate the First Amendment. But the court did not retreat from its earlier interpretation of the “traditional contours of copyright protection.” The Supreme Court then agreed to hear the case.

opinions/11pdf/10-545.pdf. Office Staff Advise on Free Trade Agreements Congress passed three long-awaited bilateral free trade agreements last October with Colombia, Korea, and Panama with the goal of reducing trade barriers. President Obama signed the agreements shortly afterward. All three contain chapters on intellectual property rights, including copyright. The US-Korea Free Trade Agreement entered into force March 15, 2012, and the US-Colombia Trade Promotion Agreement took effect May 15, 2012. An effective date for the Panama agreement has yet to be set. “These three agreements were many years in the making, and the Copyright Office has been actively involved all along,” said the senior counsel in the Office of Policy and International Affairs (PIA) who supervised the Office’s participation in a US interagency process that involved review of the countries’ copyright laws and practices. The Copyright Office has contributed to US free trade agreements going back to the North American Free Trade Agreement, which entered into force in 1994. The senior counsel said the Office took part in “intense negotiations” on implementation issues involving Korean legislation that required, among other things, a trip to Seoul by a PIA lawyer.

The Copyright Office helped prepare the government’s brief defending section 104a before the Supreme Court, as it had done in the lower courts.

“South Korea has one of the most advanced broadband markets in the world, so having strong laws there supports the entire copyright ecosystem,” the senior counsel noted.

The Court rejected the notion of a “bedrock principle” prohibiting extension of copyright protection to publicdomain works.

The US Trade Representative has called the Korea agreement the most commercially significant US agreement in almost two decades.

“Neither the Copyright and Patent Clause nor the First Amendment, we hold, makes the public domain, in any and all cases, a territory that works may never exit,” wrote Justice Ruth Bader Ginsburg in the majority opinion.

PIA legal staff reviewed Colombian copyright legislation and participated in digital video conferences with Colombian officials to ensure proper implementation of the Colombia agreement.

Ginsburg clarified that the Court’s citation in Eldred of the “traditional contours of copyright” referred to the fair-use provision in copyright law and the fact that the law protects the expression of ideas, but not ideas themselves or facts. The URAA “leaves undisturbed the ‘idea-expression’ distinction and the ‘fair use’ defense,” Justice Ginsburg wrote.

Bilateral engagement with Panama continues.

As a result, the Court found no need for a heightened review of the URAA under the First Amendment. The 6-to-2 decision cites the Copyright Office’s 2006 Report on Orphan Works and its 2011 report Legal Issues in Mass Digitization. The decision is available at www.supremecourt.gov/

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Once a free trade agreement enters into force, a final stage in the process involves “ongoing monitoring to make sure all intellectual property obligations are working, both on the books and in practice,” the senior counsel said. Copyright Office Proposes Amendment to Definition of “Claimant” The Copyright Office proposed to amend its regulations governing the definition of a “claimant” for purposes of copyright registration by eliminating the footnote to the definition in §202.3(a)(3)(ii) of the Code of Federal Regulations. The footnote currently extends the definition

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of a claimant to include individuals or entities that have obtained the contractual right to claim legal title to copyright in an application for copyright registration. The amendment would clarify that the copyright claimant must be either the author of the work, or a person or organization that has obtained ownership of all the exclusive rights initially belonging to the author. The Copyright Office believes that the footnote creates considerable legal uncertainty while offering no clear benefits to the registration system. Removing it will foster the use of other available registration options that create a more meaningful public record. Comments are due July 16, 2012. Reply comments are due August 15, 2012. A comment page containing a comment form is posted on the Copyright Office website at www.copyright.gov/docs/ claimantfn/. Copyright Office Publishes Final References to Forms CON1 and CON2

Rule

Deleting

The Copyright Office announced that it removed references in its regulations to Form CON 1 and Form CON 2, forms that were never created. The regulations now refer only to the continuation sheets currently available for applicants filing paper applications. Applicants who use paper forms may continue using Form CON, a continuation sheet. Those who are applying to register a group of published photographs

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may use Form GR/PPh/CON/. The final rule makes other housekeeping amendments relating to applications for copyright registration. For further information, see www. copyright.gov/fedreg/2012/77fr18705.pdf. Copyright Office and WIPO Sponsor International Copyright Training Representatives of 17 developing countries and countries with economies in transition participated in a five-day international symposium on “Emerging Issues in Copyright and Related Rights” on March 19–23, 2012, at the Library of Congress. Cosponsored by the World Intellectual Property Organization (WIPO) and the Copyright Office, the international copyright training event was attended by 19 senior-level copyright officials from around the world. The main objective of the symposium was to equip senior government officials with important information on developments in copyright law and related rights. The topics addressed included digital rights and technology, licensing, limitations and exceptions, cross-border enforcement, and collective management.

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Trademark Central ®

WE DO ONE THING AND WE DO IT WELL

The 2012 World Trademark Review 1000 ranked Austinbased law firm Pirkey Barber as one of the top 10 trademark law firms in the U.S., stating the firm is “among the most prominent in the country, thanks to the quality of its work product and the sophistication of its approach; sources call the group ‘truly exceptional.’”

Pirkey Barber works with clients as they create, register and establish their important trademark and copyright assets. We are committed to serving all our clients, regardless of size, with the highest levels of quality and professionalism.

600 Congress Avenue, Suite 2120, Austin, Texas 78701 512-322-5200 / www.PirkeyBarber.com

AIPLA Upcoming 2012 Seminars: •

Patent Prosecution Practical Patent Prosecution Training for New Laywers Boot Camp August 23–24 Alexandria, VA

•

A New World of Patent Options—for University Researchers, Inventors, and IP Stakeholders Joint AIPLA/AUTM Event September 12 College Station, TX

•

AIPLA Annual Meeting October 25-27 Washington, DC

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Upcoming Online Programs The Final USPTO AIA Rules: What You Need to Know Wednesday, August 22, 2012 12:30 – 2:00 pm EDT

Electronic Discovery in Patent Litigation Wednesday, September 5, 2012 12:30 – 2:00 pm EDT

On August 14, the USPTO published the final set of AIA rules going into effect on September 16. Janet Gongola, USPTO Patent Reform Coordinator, and Sally Medley, USPTO Administrative Patent Judge, will present an overview of the provisions and the final rules and respond to audience questions. Topics to be discussed include: inventor’s oath and declaration, supplemental examination, post-grant review, inter partes review, post-grant review of covered business method patent, implementing estoppels provisions for filers of ex parte reexams begun after final decisions in post grant or inter partes review, and statute of limitations.

Electronic discovery can influence the financial impact of litigation and distract from the merits of the case, particularly so in the context of patent litigation. A prudent electronic discovery strategy includes counseling clients about their obligation to preserve relevant electronically stored information (“ESI”) and how to ensure their actions are deemed both reasonable under the circumstances and proportionate given the importance of the issues, the amount at stake, and other factors set forth in Fed. R. Civ. P. 26(b)(2)(C). It is equally important to consider the practical aspects of understanding, searching for and identifying relevant ESI, reviewing and culling it down to a production set, and producing it in a “reasonably usable form” as required by Fed. R. Civ. P. 34(b)(2)(E)(ii).

Presented By: Sally Medley, Administrative Patent Judge, USPTO Board of Patent Trials and Appeals Janet Gongola, Patent Reform Coordinator, US Patent and Trademark Office

Join the Honorable Cathy Ann Bencivengo, U.S.D.J., Southern District of California and R. Parrish Freeman for a discussion regarding e-discovery strategies, practices and lessons learned from both sides of the bench. Presented By: Judge Cathy Ann Bencivengo, U.S. District Judge, Southern District of California R. Parrish Freeman, Workman Nydegger P.C

For CLE information, visit the “Live Web Based Programs” page in the Learning Center on AIPLA’s website.

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Future Industry Events 2012

August 23-24 AIPLA Practical Patent Prosecution Training for New Lawyers Alexandria, VA (703-415-0780) August 26-28 ABPI Annual Annual Meeting Sao Paolo, Brazil (www.abpi.org.br) September 9–11 IPO Annual Meeting San Antonio, TX (www.ipo.org) September 12 AIPLA/AUTM College Station, TX September 8–20 USPTO Road Shows September 20-21 AIPLA/FICPI Joint Colloquium on Application Quality Warsaw, Poland (703-415-0780) September 26–28 GRUR Annual Meeting Frankfurt, Germany October 10–12 IPIC Annual Meeting Vancouver, British Columbia (www.ipic.ca) October 10-12 CIPA Annual Meeting London, United Kingdom (www.cipa.org.uk) October 14-17 LES US-Canada Annual Meeting, Toronto, Ontario, Canada (www.lesusacanada.org) October 20–24 AIPPI World Intellectual Property Congress Seoul, Rep. of Korea (www.aippi.org) October 25–27 AIPLA Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780) November 26–30 AIPLA Havana Cuba Delegation Havana, Cuba

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December 2–4 IP Business Congress Beijing, China December 2–5 ASIPI International Congress, Punta de Este Uruguay (www.asipi.org) December 10 IPO PTO Day and Foundation Dinner Washington, DC (www.ipo.org)

2013 January 30–February 2 AIPLA Mid-Winter Institute, Tampa Marriott Waterside Hotel & Marina Tampa, FL

2014

January 29–February 1 AIPLA Mid-Winter Institute, Sheraton Wild Horse Pass Resort & Spa Phoenix, AZ May 7–9 IACC Annual Spring Conference Hong Kong May 15-17 AIPLA Spring Meeting Philadelphia, PA October 23–25 AIPLA Annual Meeting, Marriott Wardman Park Washington, DC (703-415-0780)

February 29–March 2 AUTM Annual Meeting San Antonio, TX April 3–6 ABA-IPL Annual IP Law Conference Crystal City, VA May 1–3 AIPLA Spring Meeting, The Westin Seattle Seattle, WA May 4–8 INTA Annual Meeting Dallas, TX www.inta.org June 19–22 ECTA Annual Conference Sibiu, Romania June 23–26 ACPC Summer Meeting Ashville, NC June 26–28 AIPLA/FICPI Colloquium Paris, France October 24–26 AIPLA Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

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Thank You to Our AIPLA 2012 Spring Meeting Sponsors Silver Conley Rose Co-Sponsor: Friday Night Dinner Fulbright and Jaworski, LLP Co-Sponsor: Friday Night Dinner Pirkey Barber, LLP Co-Sponsor: Friday Night Dinner

Bronze Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Sponsor: Friday Lunch Reception Haynes and Boone, LLP Sponsor: Cyber Cafe Mayer Brown, LLP Co-Sponsor: Opening Night Reception Patterson Belknap Webb & Tyler, LLP Sponsor: Thursday Lunch Reception Perkins Coie, LLP Sponsor: Friday PM Beverage Break Rambus, Inc. Co-Sponsor: Opening Night Reception Schwegman Lundberg & Woessner, PA Sponsor: New Member/First-Time Attendee Reception Vinson & Elkins, LLP Co-Sponsor: Opening Night Reception

Crystal Benesch, Friedlander, Coplan & Aronoff, LLP Co-Sponsor: Law Practice Management/Partial Women in IP Law Breakfast Fitzpatrick, Cella, Harper & Scinto Sponsor: Meeting Signage Herbert L. Jamison & Co., LLC Sponsor: Small Firm/Solo Practitioners’ Reception

Pearl S. S. Rana & Co. Co-Sponsor: Opening Night Reception Lee & Hayes, PLLC Co-Sponsor: Law Practice Management/Women in IP Law Breakfast 26

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2012 AIPLA Spring Meeting Leadership

William Barber – President

Steven Malin – Program Chair

Wayne Sobon – President-Elect & Officer in Charge

Manny Schecter – Program Vice-Chair

Q. Todd Dickinson – Executive Director 2012 Spring Meeting Issue

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Distinguished Industry Speakers

Hon. Lamar Smith, Chairman, House Judiciary Committee, (R-Tx)

Beth Apperley

Cindy Huang

Hon. James Smith, USPTO Chief Judge of the BPTA

Evan Williams

Hon. Lee Yeakel, US District Court, Western District of Texas

Hon. Leonard P. Stark, US District Court, District of Deleware

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Mami Hino

Margaret Boulware

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Janet Gongola, USPTO, Patent Reform Coordinator

Richard Mendez

Martin Kohler

R. Scott Feldman

Ron Johnstone

Shyam Balganesh

Thursday Plenary Speakers

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Opening Night Reception – “A Taste of Austin”

AIPLA would like to thank the sponsors of the Opening Night Reception:

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Friday Night Dinner & Entertainment Asleep at The Wheel

AIPLA would like to thank the sponsors of the Friday Night Dinner & Entertainment:

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Law Practice Management/ Women in IP Law Breakfast

AIPLA would like to thank the sponsors of the Women in IP Law Breakfast:

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Thursday & Friday Lunch Receptions, New Member/First-Time Attendee Reception

AIPLA would like to thank the following Reception sponsors: Thursday Lunch Reception:

New Member/First-Time Attendee Reception:

Friday Lunch Reception:

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New Positions

Member News

William. R. Haulbrook, Ph.D., has joined Choate, Hall & Stewart, LLP, Boston, MA, as partner in its IP Group. Haulbrook joins Choate from Goodwin Proctor, where he was a partner in their IP Group. Haulbrook has extensive experience counseling clients on IP issues in the fields of medical imaging and diagnostics, computer software, industrial process simulations, polymers and composites, alternative energy, semiconductor manufacturing, industrial chemistry, and petroleum processing. Nanotechnology Law and Business named Haulbrook one of the “Top Ten IP Lawyers Influencing Nanotechnology.” Haulbrook received his J.D., cum laude, from the University of North Carolina School of Law in 2001, his Ph.D. in 1993 in chemical engineering, his M.S. in 1991 from MIT, and his B.S. from the University of South Carolina in 1989. Michael P.F. Phelps has joined the Washington, DC office of RatnerPrestia as counsel practicing in both intellectual property litigation and patent prosecution. Phelps is an experienced counselor in all aspects of patent law, including freedom-to-operate studies, patent prosecution, litigation, and licensing.

is a registered patent attorney licensed to practice before the USPTO. He graduated in 1992 from Villanova University School of Law and received his M.A. in chemistry from Temple University and his B.A. in chemistry from La Salle University. He is admitted to the bars of the Commonwealth of Pennsylvania, the State of Virginia and the District of Columbia. Winfield Pollidore has joined Bovis, Kyle & Burch, LLC, Atlanta, GA as an associate. Prior to joining the firm, Pollidore was an associate at Schulten Ward & Turner. He provides representation in all domestic relations issues including divorce, child custody, mediation, spousal support and post-divorce issues. Pollidore is also a Registered Patent Attorney, practicing and counseling clients in the area of Intellectual Property Law. He received his J.D. from Georgia State University, his MBA from Wayne State University and a B.S. in mechanical engineering from the University of Michigan, Ann Arbor.

Awards & Recognition

He earned his J.D. in 2000 from Washington and Lee University School of Law, and his B.S. in mechanical engineering from the University of Virginia in 1993.

Soonhee Jang, vice president for intellectual property strategy and chief IP counsel for Dupont Industrial Bioscience, Palo Alto, CA, was recently named one of Silicon Valley’s Women of Influence for 2012 by the Silicon Valley/San Jose Business Journal.

David M. Tener has joined Ceasar, Rivise, Bernstein, Cohen and Pokotilow, Philadelphia, PA, as the firm’s managing partner. He succeeds Manny Pokotilow, who will continue full-time as a partner, litigator and counselor.

Jang is a recognized global expert on IP law and issues. Over the years she has served on the board of numerous organizations and worked tirelessly to help shape IP laws and policies in emerging markets such as China, India, Korea, etc.

Since joining Cesar Rivise in 1997, Tener’s practice has been comprised of all aspects of intellectual property law, including analyzing, procuring, challenging and enforcing patents, trademarks and copyrights on behalf of clients. He

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Jang received a B.S. in chemistry from the California State University, Fresno; her M.A in chemistry from the University of Washington; and her J.D., from Franklin Pierce Law Center.

2012 Spring Meeting Issue

Paul F. Prestia, co-founder of RatnerPrestia, Valley Forge, PA, was presented with the third Distinguished Intellectual Property Practitioner Award by the Philadelphia Intellectual Property Law Association (PIPLA). The award is given to PIPLA member with a distinguished career, who has made outstanding contributions to PIPLA and the Philadelphia region IP community. In March, Prestia had been presented with a Distinguished Service Medal by the Linn Inn Alliance of the American Inns of Court. In addition, The Enterprise Management Certificate & Training Office of China Enterprise Confederation (CEC) recently named Prestia to the Advisory Committee of its new Certified Intellectual Property Manager training program. The program will cultivate highly talented IP management professionals who will p lay a pivotal role in China’s IP management, promotion and execution. Richard Sterba, principal at Fish & Richardson, Washington, DC, has been selected as a 2012 International Trade “Rising Star” by Law360. The award honors attorneys under the age of 40 with notable accomplishments in their practice areas. Sterba is considered one of the top patent litigators practicing at the ITC, and was one of only four attorneys selected for the International Trade Rising Star designation. Sterba serves as President of the Giles S. Rich American Inn of Court. He received his J.D. from George Washington University Law School in 1998, where he was executive managing editor of the AIPLA Quarterly Journal and his B.S., magna cum laude, in physics and mathematics from Westminster College in 1995. Michael McKeon, a principal in Fish & Richardson’s IP Litigation Group, Washington, D.C., has been named to the NLJ/Legal Times’ “Visionaries” list. McKeon was one of 20 “Visionaries” chosen from among thousands of Washington, D.C. lawyers for having outstanding business foresight and

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legal acumen. McKeon was singled out for being one of a handful of top US International Trade Commission (ITC) attorneys at the forefront of shaping the legal landscape for intellectual property disputes. According to the NLJ/Legal Times, “Michael McKeon has been in the middle of developments as the ITC has evolved from a little-used venue to settle intellectual property disputes into a popular forum.” McKeon, who has been litigating at the ITC since the mid90s – long before it was trendy to try cases there – is one of the visionaries who has helped define what the ITC has become and will be in the future. He has worked on over 30 Section 337 ITC cases. According to the NLJ/Legal Times, McKeon has “racked up major ITC-related wins for electronics companies, including Samsung Electronics Co. and LG Electronics Inc.” during the past few years. McKeon received his J.D., with highest honors, Order of the Coif, from George Washington University Law School in 1996 and his B.S., magna cum laude, in mechanical engineering and materials engineering from the University of Connecticut in 1990. Three AIPLA members from Fish & Richardson in Boston, MA were recognized as leaders in their field in the 2012 edition of Chambers USA: America’s Leading Lawyers for Business. Robert Hillman, Frank Porcelli and Frank Scherkenbach were selected for inclusion in the directory based on interviews with thousands of US lawyers and clients.

Do you have news to share? Send it our way! aipla@aipla.org

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AIPLA 2010-2013 Strategic Plan VISION AIPLA will expand its role as an innovator, powerful advocate, and visible global leader in intellectual property through our commitment to education, outreach, member service, and advocacy.

MISSION We serve our members, fostering their professional and leadership development, helping nurture and mentor them as they advance within our profession, keeping them 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 reward innovation and creative works in keeping with the public interest; 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 opportunities and support for all to lead, create and thrive.

STRATEGIC GOALS Advocacy: AIPLA will provide crucial leadership and unbiased analysis leading the way for world-class policy and decisionmaking, while attracting membership, ideas, and resources as a highly sought after and respected thought leader. Public Education: AIPLA will educate the public about the daily value of intellectual property so that its importance is understood and appreciated. Member Service: AIPLA will support the professional and intellectual growth of its members through a flexible organizational framework and innovative channels of communication, delivering outstanding services, cost-effective programs and mentoring opportunities, thereby ensuring that AIPLA remains the premier intellectual property association, and attracts IP professionals from around the world. Global Outreach: AIPLA will expand its influence to the global community and provide leadership and guidance for the development of sound global intellectual property standards, laws and policies.

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2012 Spring Meeting Issue

Committee Reports

Spring Meeting May 10-12, 2012

The Committees were asked to align their reports with the goals in the AIPLA Strategic Plan. (See page 36 for the Strategic Plan.)

Alternative Dispute Resolution Chair: Harriet Samaras Vice Chair: Stephen C. Durant

Collaborating on the program and projects with the Litigation, Corporate and Trademark Commitees was emphasized. Advocacy The ADR Commitee monitors developments in the US Patent and Trademark Office that may have an impact upon the effective use of ADR and provides comments where relevant. There have been no recent developments to report. Public Education

Webpage (microsite) SubCommitee Greg Whitehair, Chair Â Vision, Mission and Values Each practicing member of AIPLA is encouraged to be knowledgeable about alternative dispute resolution (ADR) processes and, where appropriate, is encouraged to advise their clients about the availability, values and characteristics of these alternatives to litigation. The ADR Commitee provides education and resources to enable AIPLA members to be more knowledgeable about ADR, and to more effectively advise their clients, prepare for and conduct ADR in intellectual property cases whether involving United States-based or international disputes. In this regard, the Commitee considers the varied practice areas of its IP practitioner members (e.g., litigation, client counseling, transactions, prosecution) to ensure that its activities reach their needs. The ADR Commitee also monitors developments in the legislature and courts for reporting to its members and contributing positions as appropriate. It monitors changes in rules relating to ADR practice in the United States and abroad and educates its members about them. Commitee Meeting The ADR Commitee held a conference call April 20, and an in-person meeting during the Austin Spring Meeting. Potential programs for next year were discussed, including the use of special masters to narrow issues during litigation. Markman rulings were of particular interest because different jurisdictions have different approaches to determining claim construction, including different approaches to the use of special masters. Also, several projects were discussed, namely: (1) gathering information from different jurisdictions regarding their approaches to the use of special masters; and (2) compiling a list of individuals who have been active as special masters and their technical backgrounds. 2012 Spring Meeting Issue

Greg Whitehair is planning a webinar for June 2012 on the use of court-annexed mediation and early neutral evaluation in different parts of the United States in intellectual property cases. Harrie Samaras is planning a webinar in July on the mediation program at the International Trade Commission. Member Service The ADR Commiteeâ&#x20AC;&#x2122;s microsite contains useful links and resources including: (1) model rules and standards for neutrals; (2) ethics resources; (3) organizations providing ADR training and certification; (4) a list of ADR organizations having rules that can be used in international intellectual property cases with links to those organizations; and (5) case summaries of US court decisions related to ADR in IP cases. Global Outreach All of the activities of the ADR Commitee include a global focus because ADR in IP cases necessarily involves international parties, international forums, and international ADR organizations/rules. One example of this is the upcoming webinar in July on mediation at the International Trade Commission.

Amicus

Chair: Edward Robert Reines Vice Chair: Jerry R. Selinger

The Committee met to discuss the status of two pending matters. Committee recommendations were then presented aipla bulletin

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to the Board of Directors. Vision, Mission, and Values The Committee’s overall mission is to scrutinize judicial and administrative decisions which involve significant issues of law or practice which affect intellectual property, and make recommendations to the Board of Directors that amicus briefs be filed (or not filed) in appropriate circumstances. The Committee’s overall mission involves its own due diligence, as well as responding to requests from party advocates, members of substantive Committees, and the Board. The Committee also makes recommendations to the Board as to brief drafters, and members often volunteer their services pro bono to do so. Advocacy As set forth above, much of the Committee’s work relates to advocacy and member services. The Committee routinely seeks input from whichever substantive Committees might have interest in a judicial or administrative decision, including but not limited to the Patent Law Committee, the Patent Litigation Committee, the Copyright Law Committee, the Trademark Law Committee, the Antitrust Law Committee, the Chemical Practice Committee, the Electronic and Computer Law Committee, and the Trademark Litigation Committee.

digital image of the suspected product to the IP right holder to authenticate the product. The proposed legislation, if passed, would allow CBP to provide certain information to IP rights holders in order to protect their IP interests. The legislation would clarify that it is not a violation of the Trade Secrets Act for CBP officers to provide information and samples, including bar codes and identifying marks, to IP rights holders. The legislation concerns suspect counterfeit goods, piratical goods and circumvention devices in violation of the DMCA. The legislation is promised to assure that the CBP can continue to seek useful input from IP rights holders as to suspect products before they enter the US market. The information sharing authorized by the bill is also said to ensure that genuine goods held for examination by the CBP will be promptly identified as such, so that legitimate shipments will not be unnecessarily delayed from reaching the consumer markets in the US. At the AIPLA Spring Meeting, our Committee obtained the AIPLA Board of Directors’ approval of a resolution in which the Association favors passage of the Foreign Counterfeit Prevention Act, or similar legislation, which would allow continued appropriate information sharing between the CBP and IP rights owners.

Member Service

See above. In addition, briefs filed by AIPLA are posted on its website.

Also during the Spring Meeting, our Committee Chair moderated a plenary educational session entitled “Trademarks and Social Media.” The session was focused upon the various trademark, copyright and privacy issues associated with online usage within social media websites and other online locations.

Anti-Counterfeiting and Anti-Piracy Chair: Jonathan Hudis Vice Chair: Crystal Gothard (not pictured)

Antitrust Law

Chair: Richard S. Taffet Vice Chair: George G. Gordon (not pictured)

Advocacy In March 2012, Congressman Ted Poe (R-Texas) and Congressman Steve Chabot (R-Ohio) introduced H.R. 4216, the Foreign Counterfeit Prevention Act. For many years, Customs and Border Protection (CBP) has routinely sought the assistance of trademark and copyright owners to authenticate suspected counterfeit or pirated products detained at the border. After what the sponsors of the legislation believe was a questionable legal interpretation of the Trade Secrets Act, the CBP directed its field staff in 2008 to redact all identifying markings and codes before sending a 38

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The Committee focuses on competition issues involving intellectual property in the United States and worldwide. In recent years, the Committee has especially focused on issues pertaining to standardization of technology, generic pharmaceuticals, and actions by the Federal Trade Commission and the Antitrust Division of the Justice 2012 Spring Meeting Issue

Department. The Committee has participated in amicus briefs on competition issues, and publishes a newsletter for each AIPLA meeting with articles contributed by its members. No report at this time.

Biotechnology Chair: James J. Kelley Vice Chair: Carol Nielsen

At the 2012 AIPLA spring meeting, the Biotechnology Committee hosted a distinguished panel of speakers, who addressed concerns about access to diagnostic testing, recent cases that are making patenting some innovation challenging, proposed legislation and case law, and the PTO’s study of the impact of patenting on genetic diagnostic testing, particularly the impact on access to confirmatory second opinions. Further, the work of the AIPLA Rapid Response Team in this particular area was discussed. Karen Canady, past AIPLA Biotechnology Committee Chair, now a member of the AIPLA Rapid Response Team, began the meeting by discussing AIPLA’s objective in responding quickly to issues arising in the media in an effort to address misinformation and/or derogatory views of IP. The AIPLA Rapid Response Team comprises several AIPLA members representing various areas of IP and generally seeks to correct misinformation and inform the public of the benefits of intellectual property. Karen specifically addressed AIPLA’s response to the October 2011, NPR Fresh Air piece on the book entitled Deadly Monopolies: The Shocking Corporate Takeover of Life Itself- and the Consequences for Your Health and Our Medical Future. She also spoke to what AIPLA is preparing with regards to Mayo v. Prometheus and Myriad Genetics cases. Generally, future plans for AIPLA’s Rapid Response Team include website resources such as white papers and commentaries. With regard to biotechnology issues, the Rapid Response Team is currently coordinating with both the Public Education Committee and the Biotechnology Committee’s Diagnostics & Gene Patenting Subcommittee. Mercedes Meyer, Ph.D., AIPLA Board member and partner at Drinker Biddle & Reath, LLP, together with Kevin Noonan, Ph.D., partner at McDonnell Boehnen Hulbert & Bergoff, LLP, 2012 Spring Meeting Issue

addressed the future of diagnostic and gene claims. They discussed earlier cases, Classen and Labcorp., the change to Section 101, 35 USC Section 287(c) and the USPTO memo guidance of March 21, 2012. They further discussed the tension between the McKesson & Akamai cases and the Smartgene case. Myths about gene patents were discussed as well as the Myriad DNA claims and the attack on gene patents globally. At the 2012 AIPLA Annual Meeting, the Biotechnology Committee will host two joint Committee sessions with the IP Practice in Europe Committee and the Chemical Practice Committee. At the joint Committee meeting with the IP Practice in Europe Committee, a two-hour presentation and discussion will be provided about issues on both sides of the Atlantic relating to patenting therapeutic and diagnostic antibodies. The US aspect of the program will focus on compliance with 35 U.S.C. § 112(a). A representative of the USPTO is being requested to explain its “antibody exception” to the law on written description. Other panelists will include a lawyer from Eli Lilly and Company and a third panelist from industry. The European discussion will be directed toward explaining and critiquing the EPO’s approach to inventive step and claim scope for antibodies. A European patent lawyer from industry and a representative of the European Patent Office are being sought. For the second joint Committee meeting, the Biotechnology Committee will partner with the Chemical Practice Committee on a 2-hour program entitled, “IP Issues in Novel Venture Financing of Biopharmaceutical Development.” Currently being planned, a panel will address issues that arise in novel venture capital arrangements that are being used to fund clinical development of biopharmaceuticals. Our Program Development and Tech Transfer and Licensing Subcommittees are collaborating on the planning of this program.

Chemical Practice Chair: William B. Kezer Vice Chair: Jeffrey N. Townes

The Chemical Practice Committee continues to provide information on current developments in IP law, recent litigation, and latest technologies. Programs in 2012 have examined areas unique to chemical patent practice, aipla bulletin

and explored technical and legal issues from a chemical practitioner’s perspective. Similar programs are designed for later this year. Vision, Mission and Values We are committed to providing a meaningful vision, focused mission, and strong values to the Chemical Patent Practice Committee. We continue to present programs of interest to attract a broad range of practitioners. These provide educational opportunities, give individuals an opportunity to present topical content, attract new members, and provide a more collegial and intimate environment in which individuals can network. We continue to explore new growth areas within chemical practice, and strive to address the needs of practitioners in those areas. Further, to reach Committee members who cannot come to the meetings, we are striving to place any Judicial and Administrative Decisions Reports, other Subcommittee reports, and select presentations given at the meetings, on the Committee’s web page. We strive to correspond via e-mail on a periodic basis with all Committee members available to distribute materials of interest, provide information about upcoming activities, and promote more active involvement.

In an effort to assist the staff in achieving AIPLA’s goals, the Chemical Practice Committee continues its efforts to rehabilitate its Microsite. Postings and the delivery of relevant content have declined and our objective is to restore the vitality and usefulness of the Microsite. Global Outreach It is important that we continue to grow, not only attracting new members from existing strongholds, but tapping into new groups that may have otherwise been reluctant to participate in AIPLA meetings. We believe that having a diverse membership and diverse speakers provides a better program for all parties. One of our goals is to attract new members—particularly from the corporate and government sectors—though by reaching out to both outside counsel and foreign counsel. We are open to creative ideas to bring in new members, especially from those serving as inhouse corporate counsel, a group that we would like to see represented in larger numbers at future AIPLA events.

Chair: Nancy J. Mertzel (Left) Co-Vice Chairs: Toni Y. Hickey (Center) and Stefan Mentzer (Right)

Advocacy We will continue to respond to members’ concerns regarding legislative, USPTO and judicial issues, through our Response Task Force and Legislative Subcommittee. Lawrence Kass serves as liaison to the Amicus Committee. His responsibilities will include ongoing review of judicial decisions of concern to chemical practitioners and coordination with the Amicus Committee for possible participation. Public Education

Vision, Mission and Values

This is a key area where AIPLA has traditionally provided great services. We remain in the planning stages for a Road Show in the summer of 2013. Mary Jo Boldingh is guiding that effort.

The Copyright Law Committee seeks to increase the number, profile, and involvement level of AIPLA members whose intellectual property interests include copyright law. At the same time, the Copyright Law Committee strives to improve copyright laws and policy, including through its direct work with the US Copyright Office and through judicial and legislative input.

For 2012, we turn our focus to issues arising with the America Invents Act, with a presentation by Eugene Bernard, Ph.D., a Kilpatrick Townsend partner with a practice in medical technologies. Dr. Bernard’s presentation focused on the use of pre-grant submissions to the USPTO (against a client’s competitors). We continue our webinar programs, with William Childs leading that effort. Topics are likely to address other specific portions of the America Invents Act. We hope to find willing participants during this year’s Committee meeting for putting together a webinar on the new patent laws, particularly as they relate to chemical patent attorneys. Member Services 40

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Advocacy The Copyright Law Committee is exploring how to further develop its relationship with the Copyright Office. In particular we are looking into scheduling a recurring meeting to exchange information and offer assistance. The Copyright Law Committee also serves as informal “counsel” to the Amicus Committee and the Board on matters relating to copyright law and extends participation by its chair in the Special Legislation Committee. In addition, the Copyright Law Committee routinely reviews notices in the Federal Register relating to copyright issues and provides input to the 2012 Spring Meeting Issue

staff and leadership as to whether AIPLA should comment. Public Education The Copyright Law Committee held an educational program during the Spring Meeting entitled “Are Patent Prosecutors Copyright Infringers?” Co-Vice Chair Stefan Mentzer gave a presentation regarding the claims and defenses likely to be litigated in the recently filed lawsuits in which publishers allege that law firms infringed the Copyright Act by submitting copyrighted non-patent literature to the USPTO as prior art, by making internal copies and sending materials to clients. The session was well-attended by both patent and copyright law attorneys.

Diversity in IP Law Chair: W. Todd Baker Vice Chair: Shayne E. O’Reilly

Member Service

Vision, Mission and Values

The Copyright Law Committee provides substantive input to the Board of Directors regarding copyright law issues. For example, we recently provided input concerning a potential amicus brief involving importation of goods without permission of the copyright owner. We are also planning a joint meeting with the Emerging Technologies Committee to be held during the 2012 Annual Meeting.

The overall mission of the Diversity in IP Law Committee is to broaden the membership base of AIPLA with a talented and diverse base of IP lawyers, and to infuse minority lawyers with sufficient tools and knowledge to further enrich their practices and, ultimately, their clients. We can achieve this mission by fostering dynamic program creation to enhance networking and participation by minority lawyers.

Global Outreach

Advocacy

The Copyright Law Committee continues to explore the nomination of a representative to attend, as appropriate, World Intellectual Property Organization (WIPO) meetings held in Geneva, Switzerland on behalf of AIPLA.

The Committee has advocated for the addition of diversityrelated programs and speakers on AIPLA programs. The Committee has been successful in this regard and has placed Committee members within speaking roles that address many issues directly affecting the IP profession.

Corporate Practice

Public Education

Chair: Kenneth M. Seddon (not pictured) Vice Chair: James D. Carruth

The Committee is working on dynamic programs that will educate our members and the public on issues relevant to career growth and diversity. We are currently working with the Women in IP Law Committee to plan a webinar that will address how to navigate a career in IP law that caters to both women and minorities. Member Service

The Committee develops and disseminates information relating to intellectual property law and practice which is particularly useful to corporate lawyers. This Committee also leverages technology to deliver such programming in a way that maximizes the limited time available to in-house counsel to obtain developments and updates in intellectual property law and practice, as well as to promote efficient exchanges of best practices. No business to report at this time.

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The Committee is in the process of planning joint social events with outside organizations. For example, we are planning joint social events with local IP diversity groups and the MCCA. We are also considering hosting a happy hour tour targeted at diverse members of the IP bar. Global Outreach The Committee is in the process of identifying and targeting Committees and other organizations to collaborate with to extend the reach of the Committee globally. Subcommittees LGBT Subcommittee

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Education

Chair: Myra H. McCormack Vice Chair: Ehab M. Samuel

2012 Focus. In addition to the Boot Camp responsibilities for the Education Committee, the Committee will focus on expanding the networking function of the Law Professor Subcommittee and the NLC CLE Subcommittee. 2012 Spring Meeting At the Spring Meeting the Education Committee focused on the Law Professor Subcommittee. We had three volunteers to assist with the Subcommittee and we are moving ahead with a plan to roll out messaging to the organization and elsewhere to advertise the Subcommittee. Annual Practical Patent Prosecution Training for New Lawyers Program The Education Committee coordinates the AIPLA Patent Boot Camp in Alexandria, Virginia. This popular program has been offered annually for many years, and includes instructional sessions and hands-on claim drafting workshops taught by experienced private and corporate practitioners. Planning for the 2012 Boot camp is complete. Annual Trademark Boot Camp. The Education Committee assists the Trademark Committee in organizing the annual Trademark Boot Camp program. Generally following the format of the Patent Boot Camp, the Trademark Boot Camp covers basic trademark prosecution techniques and is primarily directed to young attorneys or attorneys new to the area of trademark prosecution. Plans for the 2012 Trademark Boot Camp are underway and this year the Boot Camp is being managed by the Trademark Committee. Please be sure to look for our upcoming announcements and encourage your friends and colleagues to attend the 2012 program. Also, please contact one of us or Amie Peele Carter (amie.peelecarter@bakerd.com) or Kieran Doyle (KGD@cll.com) of the Trademark Committees if you are interested in getting involved with the Trademark Boot Camp. Law Professor Subcommittee. The Education Committee is committed to expanding the law professor initiative, which was launched at the 2010 Spring Meeting. Our new IP Law Professor Subcommittee provides a platform for present and future full-time and adjunct IP law professors to discuss resources available to IP law professors, best 42

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practices, techniques for get involved in teaching, and other issues of interest. Please let us know if you are interested in additional information about this Subcommittee. NLC CLE Subcommittee. In partnership with the Online Programs and New Lawyers Committees, the Education Committee has launched a new Subcommittee—the NLC CLE Subcommittee—that provides new lawyers with opportunities to build presentation skills, increase local outreach, and allow for greater involvement in AIPLA for new lawyers. Our vision is to integrate education with the local new lawyers networking events around the country, allowing attorneys with the opportunity to present at their local gatherings while connected via videoconference around the country with young attorney gatherings in other cities. Our NLC CLE Subcommittee is lead by Rich Matthews as chair, Mala Joshi and Joe Dicioccio as Topic and Speaker Selection Subcommittee leaders, Beth Wolfson and Cliff Hyra as Program Coordinating Subcommittee leaders, and Yelena Morozova as Timeline Coordinating Subcommittee leader. Through the tireless efforts of our NLC CLE Subcommittee leaders, the Education Committee held its first pilot program on May 30, live in Washington, DC, with satellite participation in Boston, New York, Dallas and Chicago. Entitled, “Examiner Interviews 101 – Strategies for How to Make the Best of Your USPTO Interview and Get the Patent Issued,” the CLE program was very well received, with over 140 attendees in its initial pilot launch. The Education Committee would like thank the NLC CLE program speakers: Kevin Greenleaf, Kurt Mueller and Ryan C. Smith. Special thanks also to the NLC CLE Subcommittee leaders. Also, the Education Committee would like to thank the NLC Local Networking Subcommittee leadership in the program’s host cities for assisting with local coordination and marketing: Frank Gerratana, Gil Espinoza, Stephen Holzen, Chrystina Zelaskiewicz, Lauren Peterson and Ceyda Maisami. The Committee also thanks host firms Fish & Richardson, PC, Foley & Lardner, LLP and Dickstein Shapiro, LLP. Our Subcommittee leaders are currently planning for the second NLC CLE presentation in several cities around the country. If you are interested in participating as a speaker or mentor, please do not hesitate to contact us. The Coordination Role of the Education Committee The Education Committee will continue to serve as a communication, networking and teaching resource. The Committee plans to continue its liaison activities with the substantive Committees and hold joint meetings with other Committees on topics of interest to a cross-section of attorneys. We are also planning various activities with other Committees such as the New Lawyers Committee, the Law Students Committee, and the Online Programs. If you are interested in learning about how you can get more 2012 Spring Meeting Issue

involved in AIPLA and the Education Committee, please send an e-mail to Myra H. McCormack at mmccorm1@its.jnj. com and Ehab Samuel at samuele@dicksteinshapiro.com.

Electronic and Computer Law Chair: Jacques L. Etkowicz Vice Chair: James D. Hallenbeck (not pictured)

Vision, Mission and Values The ECLC has the mission of considering electronic, computer, and software technology and the laws, administrative practices, and judicial decisions, both foreign and domestic, with respect to securing, promoting, and enforcing the various intellectual property rights in such technology and to cooperate with the AIPLA Board of Directors with recommendations and as requested in such matters. As detailed below, the ECLC has fulfilled this mission quite substantially, through collaboration with the USPTO on various projects and open communication, and including practitioners in the leadership of our Committee from several diverse countries. The ECLC also strives to meet the AIPLA vision of expanding its role as an innovator, powerful advocate, and visible global leader in intellectual property through our Committee’s commitment to education, outreach, member service, and advocacy. In particular, our annual Electronic and Computer Patent Law Summit and our webinar series have gone a long way in this regard. Further, the ECLC seminar series is typically offered free of charge and the registration fees for the Electronic and Computer Patent Law Summit are kept low thanks to our efforts to obtain financial support from law firms and community-focused patent law associations throughout the country. As also detailed below, the ECLC has partnered with the New Lawyers, Women in IP Law, Diversity, and Corporate Committees to continue building Committee relationships, cohesiveness in the AIPLA community, and to encourage participation by all AIPLA members in the activities and leadership of our Committee. Most recently, in response to a request from the 2013 Mid-Winter Planning Committee, ECLC has created a new Subcommittee tasked with developing a visioned track 2012 Spring Meeting Issue

session at the 2013 MWI in partnership with the Emerging Technologies and ITC Committees. Advocacy The ECLC continues to monitor major case law and legislation and will advise AIPLA and request AIPLA participation as relevant issues arise, particular as to the scope of patentable subject matter. Recently, we surveyed our Committee members on AIPLA positions relating to the scope of patentable subject matter (for both the Bilski case and the referral to the EPO enlarged board of appeals) and reported results to the Amicus Committee. Our surveys were used as background in forming AIPLA amicus briefs, to which the ECLC contributed by drafting, editing, and/or organizing. The ECLC also created a helpful compilation of decisions subsequent to the CAFC’s Bilski decision. Most recently, the ECLC contributed comments to AIPLA leadership on whether AIPLA should send comments to the USPTO on its Patent Pendency Model Simulation Tool, on the USPTO Federal Register Notice for input on patent quality, and on a new USPTO project referred to as “Trademarks Next Generation.” Public Education The ECLC organized the 2012 Electronic and Computer Patent Law Summit held in San Diego on April 2, 2012. The Summit included nationally recognized speakers including Donald Rosenberg, General Counsel, Qualcomm: Milan Patel, Senior Patent Counsel, Apple: William Rooklidge, Joseph Re, Tom Irving, among several others. There were over 150 participants in attendance. The ECLC is planning to hold another such Summit next year, with topics yet to be determined. The ECLC has also been very active in hosting webinars on topics of interest. The most recent webinar was entitled “Using the USPTO’s Bilski/Section 101 Guidelines to Gain Allowance of Software and Business Method Inventions.” The Webinar Subcommittee is currently planning additional webinars for later this year. The ECLC will continue the annual Partnering in Patents program hosted jointly with the USPTO. Planning for the 19th Annual program will begin later this Spring. The ECLC will continue to maintain its long-standing dialog with group directors in technology centers relating to electronics and computer-related inventions. New initiatives were planned by the USPTO in which the ECLC will actively participate. The ECLC will continue to work cooperatively with the New Lawyers, Women in IP Law, Diversity, and Corporate Committees. For example, the New Lawyers Committee and the ECLC have been working together in support of ECLC organized track and Committee education sessions, and pairing mentors and mentees within the AIPLA mentoring aipla bulletin

program. The collaboration has been very positive. Member Service During the Spring Meeting, the ECLC partnered with the IP Practice in Europe Committee to present a joint CLE Committee session. Topics included, “Issues in Multidistrict Patent Infringement Litigation from both a US and European Perspective,” as well as, “Issues in Patent Nullification and Invalidity Trials from a European Perspective.” The ECLC is actively continuing to work with the USPTO to obtain identified statistics and provide feedback and suggestions for improving the quality of patent prosecution and examination. The ECLC has numerous Subcommittees that focus on different aspects of IP practice. We continue to encourage the Subcommittees to remain active and to encourage participation by the general membership. The current list of Subcommittees is on the following page. The minutes of our joint Committee meeting with the International and Foreign Law, and IP Practice in Europe Committees which was held on Thursday, May 10, follow. The topic was multi-jurisdictional patent litigation. Joerg-Uwe Szipl, President of Griffin & Szipl, PC, moderated the panel and introduced the speakers: Richard Stark, a partner with Cravath, Swaine & Moore LLP; Kay N. Kasper, a partner with Reimann, Osterrieth, Köhler, & Haft; and Robert Schnekenbüehl, a partner with DTS Intellectual Property Law Firm. Richard Stark provided a United States perspective on Multi-Jurisdictional Patent Litigation. He stated that you first determine where you can bring suit and then determine which are most advantageous. He also stated that the advantage of the US is a stable court system and that is provides a large impact as the World’s largest market. Richard provided an overview of several court systems available in the US and what they are known for: International Trade Commission (ITC) proceedings are quick. Most Popular: Eastern District (ED) of Texas; District (D) of Delaware; Central District (CD) of California; Northern District (ND) of California; and ND of Illinois. Patentee Friendly: District of Delaware; Middle District (MD) of Florida; D of New Jersey; ED of Texas and ED of Virginia Fastest: ED of Virginia (Rocket Docket); CD of California; Western District (WD) of Washington; and WD of Wisconsin Defendant Friendly: ND of California, Southern District (SD) of California, WD of Washington, and SD Ohio Slowest: D of Colorado, D of Connecticut, SD of Indiana, ED of New York, D of New Jersey Richard then provided statistics on a variety of courts 44

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showing average time to termination and patentee win rates (litigation and summary judgment). Richard discussed Microsoft v. Motorola (WD of Washington; 10-cv-01823-JLR) and the issues it raises regarding decisions by courts in Germany and the US. He then provided thoughts on US discovery. Expensive but can be very beneficial if not indispensable (e.g., for computer invention where key is source code). He warned, however, that discovery is a two-way street. He concluded by discussing spoliation with reference to Pension Committee v. Banc of America Securities, 684 F. Supp. 2d. 456 (SDNY 2010) Next, Kay N. Kasper, a partner with Reimann, Osterrieth, Köhler, & Haft; provided a European perspective of multijurisdiction patent issues with an emphasis on Germany. He first provided an overview of patent litigation in general including the most important courts and Germany’s bifurcated system, followed by European patent strategy including where to initially bring suit and defense strategy. The most important courts in Germany are Düsseldorf (which has an average proceeding duration of 12-15 months), Munich (18-24 months), and Mannheim (7-8 months). Germany has a bifurcated system in which civil courts handle infringement issues and the federal patent courts or the European Patent Office handle validity issues. Need to be mindful of §145 of the German Patent Act which states that you must enforce the same and similar acts in one action (but what is the same or similar has typically been narrowly construed). In Germany about 1,400 actions are filed each year and 250 are appealed. One strategy is to file in Düsseldorf first because of its high quality and reluctance to grant a stay. Another strategy is to file in Mannheim first due to its speed, which is OK if there are no evidentiary issues. Other available options are an accelerated Dutch proceeding, border seizures, and criminal prosecution. He then provided some European statistics indicating that the UK is a pro-defendant forum, Germany is a proplaintiff forum, and that France and Italy are other options. He indicated that, in his opinion, the UK is expensive and that he thought the Netherlands and Germany were more reasonable. Finally, Robert Schnekenbüehl, a partner with DTS Intellectual Property Law Firm, discussed how to get rid of a questionable patent in Europe. He described how you can have the patent revoked by filing an EPC opposition within nine months of grant or through national nullity proceeding thereafter. He then described the EPO patent process where one patent application can be 2012 Spring Meeting Issue

prosecuted and then nationalized in the European member countries. He set forth a couple of strategies of avoiding grant, including filing anonymous on-line observations during the pendency of the application and filing a request to stay proceedings. He also discussed challenging ownership or buying rights of an inventor to make a patent go away. He concluded by providing an overview of the theory behind the three main legal systems: (1) Romanic code, (2) AngloSaxon – case law, and (3) German – scholastic. A brief question and answer session followed. Global Outreach At recent AIPLA meetings, the ECLC has partnered with the IP Practice in Japan, Europe, and Far East Committees in presenting joint Committee sessions. These sessions have included speakers not only from the US, but also from the relevant jurisdictions of the other Committees. The ECLC has also recently conducted a Committee session that included a presentation on the state of patent eligibility of computer implemented inventions in Canada and Europe. Within the past year, a member of the ECLC has also participated in a webinar organized by the International Education Committee for attorneys in Singapore. Additionally, ECLC Subcommittees include leaders from outside the US and inhouse attorneys from non-US entities. We are in the planning stages of a joint Committee session with the IP Practice in Latin America Committee for the upcoming Annual meeting. The planned topic is Brazil’s recently released “Examination Procedures for Patent Applications Filed for Inventions Implemented Through Computer Programs.” Subcommittees Liaison to Young Lawyers Frank Bruno, Chair Liaison to Women in IP Law and Diversity Committees Bea Koempel-Thomas, Chair Liaison to Corporate Committee Jeff Ranck, Chair

Licensing Subcommittee John Salazar, Chair Steve Lundberg, Chair Addresses issues concerning the licensing of electronic and computer technologies. PTO Relations Subcommittee Lynn Anderson, Chair Mike Dunnam, Chair 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 John Salazar, Chair Michael Drapkin, Chair Plans Committee educational programs. Webinars Subcommittee Valentina Boyet, Chair Steve Lundberg, Chair Plans the online education programs. Road Show/IP Summit Subcommittee Michael Drapkin, Chair Plans the Committee’s traveling education programs. Technology and Business Development Subcommittee Thomas Hassing, Chair Tim Bechen, Chair Addresses the advancement of technology and business development with focus on business methods. ECLC Website Subcommittee Nathaniel Ari Gilder, Chair Maintains ECLC website and dissemination of information to the membership. Electronic and Computer Patent Prosecution Subcommittee Tim Bianchi, Chair Jeff Ranck, Chair Scott Stinebruner, Chair Holds periodic electronic round table meetings to discuss current patent prosecution issues. 2013 Mid-Winter Institute Subcommittee Brian Batzli, Chair Bradley Forrest, Chair

Copyright SubCommittee David Einhorn, Chair International Affairs Subcommittee Erwin J. Basinski, Co-Chair John Collins, Co-Chair Patents and Legislative Affairs Subcommittee Lance Reich, Chair Tracks pending legislation, particularly concerning the patenting of electronic and computer technologies. Interfaces with the Patent Law Committee of AIPLA. 2012 Spring Meeting Issue

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Emerging Technologies Chair: Kirk A. Damman Vice Chair: Robert Capriotti (not pictured)

Fellows Chair: Sheldon H. Klein Vice Chair: William L. LaFuze

The mission of the Emerging Technologies Committee is to foster communication and education in areas of Emerging Technologies and Intellectual Property Law. Committee goals include developing and producing educational programs relating to Emerging Technologies at the Committee level and at the three national AIPLA meetings.

The Fellows met on May 10, 2012.

Green Technology and Other Current Emerging Technologies

Don reported. This is not strictly a Fellows Committee, and others have already joined. The first step may be to do a survey, possibly to a sub-group of Committee chairs, to try to determine what sort of training would be most effective. Don hopes to have the short-term plan ready by the Annual Meeting, and will also report to the Board on the long-range plan at that time.

The ETC has been asked to cover and report on green technology—including climate change—as well as other green tech issues (accelerating green patents, etc.). In addition to green technology, specific current emerging technologies identified by the ETC include: Alternative Fuels Pharmacogenomics Open Source Web 2.0/3.0 Biomedical Second Life Nanotechnology Customized Stem Cells and Connectomics Climate Change Technology Subcommittees have been formed around these technologies. However, as technologies emerge and/or mature, it is expected that the Subcommittees will be updated. No business to report at this time.

We received reports on several projects in which Fellows are involved, as follows: Board and committee chair leadership training (Don Martens, Bill LaFuze, Alan Kasper)

Latin America and Africa initiative (Patrick Coyne, Phil Hampton, Alan Kasper, Dave Hill, Chico Gholz) Dave reported on the upcoming trip to Brazil by the Special Committee on Latin America. Alan noted that ASIPI would very much like to have AIPLA representatives attend their meetings (the next one being in Uruguay). (Subsequent to our meeting in Austin, this group decided to limit its focus to Africa in view of the Special Committee on Latin America’s existence and efforts). Phil and Patrick reported on efforts regarding Africa. Phil noted that a conference that was to have taken place in South Africa was cancelled due to lack of expected funding by foreign governments. He will attempt to reconnect with a contact in Nigeria. Patrick asked the Fellows to send him names and contact information of associates in Africa. The group will continue to meet by phone. One goal is to put on a session or two on Africa at a future AIPLA meeting, perhaps the 2013 Annual Meeting. US Bar/SIPO (China) Liaison Council (Denise Kettelberger) Denise reported on the Council. Jim Forstner noted that there will be a meeting of the US-JPO Council in DC on June 27. AIPLA website “Learning Center” review (Brad Forrest, Jeff Samuels) Brad reported that there is a need to publicize this component of the website. He intends to have a meeting with staff to

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2012 Spring Meeting Issue

monitor and see how the site is used, and then have the Committee begin to analyze that and make suggestions. On-site mentoring in Austin (Sheldon Klein)

Food and Drug

Chair: Denise M. Kettelberger Vice Chair: Stephen B. Parker

Sheldon reported that the effort was, happily, oversubscribed. The Mentoring Committee will follow up. AIPLEF scholarship winners mentor-mentee program (Phil Hampton) Phil invited Fellows to volunteer to be a mentor. Member retention (Audit & Finance Committee request for assistance) (Sheldon Klein) Sheldon reported that about 15 Fellows were contacted by staff, and responded positively. Fellows were asked to please initiate AIPLA renewals within their firms or organizations. In general, staff has reported that the retention effort is going well.

The Committee’s 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.

Brad Forrest is our liaison to the Professional Programs Committee. He reported on the special format being discussed for the 2013 Mid-Winter Institute in Tampa, where executive-level business people and other non-traditional AIPLA attendees would be solicited to attend and participate. Discussion followed.

Industrial Designs

No business to report at this time.

Chair: Damon A. Neagle (not pictured) Vice Chair: Garfield Goodrum

The Chair noted the appointment of the nominating Committee, chaired by Bill LaFuze, which is tasked with recommending new Fellows to the Board. Members are Patrick Coyne, Mel Garner, Gary Hoffman, Denise Kettelberger, Ann Meuting, John Wiedemann, and Sheldon Klein (ex-officio). Bill reported on the Committee’s progress to date and expected future activities. Fellows have already submitted names of potential nominees, and were encouraged to supplement those suggestions if desired. Jack Goldstein led a short discussion of AIPLA membership eligibility and AIPLA Fellows eligibility, following up on a discussion which had taken place among several Fellows via email a few months earlier. No action was proposed. The Chair thanked Lou and Julie Pirkey for hosting a fantastic Fellows dinner the previous evening at their home. All concurred.

The Committee considers design patent, trade dress, and copyright laws, rules, regulations and judicial decisions applicable to the protection of industrial designs. Recent activities have included preparation of amicus briefs on behalf of AIPLA in conjunction with the Amicus Committee and resolutions pertaining to legislation and international treaties for adoption by AIPLA. The Committee also remains active in educational opportunities, including the annual Design Day at the USPTO and CLE sessions at AIPLA meetings. No business to report at this time.

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International and Foreign Law Chair: William S. Boshnick Vice Chair: Matt Adams

Subcommittees pertaining to international practice, with the goal of such Subcommittees ultimately becoming full -fledged active Committees, the most recent of which are the Indian Practice Subcommittee and the Special Committee on IP Practice in Israel. Subcommittees Indian Practice Subcommittee Joe Root, Chair

International Education Chair: James E. Ruland (not pictured) Vice Chair: Shannon L. Beech

Vision, Mission, and Values The International and Foreign Law Committee (IFLC) considers the treaties of the United States and foreign countries and the statutes, rules, regulations, and judicial decisions of foreign countries relating to patents, trademarks, copyrights or intellectual property generally. The IFLC also considers the statutes, rules, regulations, and judicial decisions of the United States as they may impact intellectual property as a part of trade and commerce between the United States and foreign countries nationals. A further role of the IFLC is to coordinate with other AIPLA Committees on matters which are relevant to the jurisdiction of those Committees. Advocacy The IFLC coordinates with AIPLA leadership to research and advocate, on the behalf of IP stakeholders, issues potentially affecting foreign rights of such IP stakeholders, by, e.g., submitting position papers on behalf of AIPLA to foreign governmental organizations. Where necessary, the IFLC also coordinates with other foreign practice Committees where the foreign rights are potentially affected. The IFLC has established a group of Foreign Liaisons to assist the IFLC by providing advice on intellectual property issues in their representative regions. Public Education The IFLC occasionally coordinates with the International Education Committee to present programs educating members and the public regarding issues concerning intellectual property. The IFLC intends to organize themed seminars comparing subject matter (computer software/ medical devices) and claim structures. Member Service The IFLC serves its members by keeping them informed in an ever-evolving international legal environment. Global Outreach The 48â&#x20AC;&#x192;

IFLC

has

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instrumental

establishing

Vision, Mission and Values The International Education Committee has two main functions. The Committeeâ&#x20AC;&#x2122;s current focus is on developing and producing educational programming for international audiences, primarily through online programs on US IP law and practice specifically targeted to practitioners, government officials and others outside the US who are interested in IP law, policy and practice. Additionally, in response to requests, the Committee meets with visiting delegations and arranges for speakers for lectures, seminars, and other meetings outside the United States. The Committee coordinates its activities with those of the Online Programs, 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. Specific Tasks Update and Going Forward The Committee has conducted five online programs to date, namely three programs for German-speaking practitioners, one program for practitioners in Singapore, and one program for practitioners in China. The program aimed at practitioners in China was conducted on June 1, 2011 was on the topic of Information Disclosure Statements and was performed in coordination with the Special Committee on IP Practice in China. Using the good relationships that have been developed with local German IP organizations through our German coordinators, we have conducted programs for German2012 Spring Meeting Issue

speaking practitioners on April 28, 2010, November 17, 2010, and September 21, 2011.

(3) Establish a list of speakers possessing a high degree of proficiency in foreign languages.

The program for practitioners in Singapore was conducted on August 25, 2010 with the assistance of the Association of Singapore Patent Agents.

(4) Coordinate with AIPLA to look for ways the Committee can assist in implementing AIPLA’s international strategies.

The Committee is currently exploring the production of programs for audiences in China; Japan; Mexico and Spain; Germany; and Australia, New Zealand and Singapore. Interest has been expressed for programs in these countries on the America Invents Act. There is also a possibility of organizing a program for an audience in China on a trade secrets topic. The program targeting Singapore, New Zealand and Australia may possibly include other countries within similar time zones, such as Japan. Respective national IP organizations in these countries are being contacted to determine interest in such a program and determine if they are able to assist us in coordinating the program and advertising to their members. Members of the Committee, possibly in conjunction with other substantive Committees, will coordinate each of the online programs. Each online program has at least one local (e.g. North American) coordinator who works with at least one international coordinator to develop and put on the program. The international coordinator interfaces with the IP organization(s) in their country to establish: (1) a topic of interest for practitioners in the country and (2) mechanisms for marketing the program through the IP organization(s). The local coordinator identifies speakers and sponsor(s) for the program based on the established topic of interest. Most programs will likely be broadcast live using Citrix, though other platforms may be used. The coordinators may work with other AIPLA Committees or possibly local IP associations outside the US in planning the program. Training sessions will be held for local coordinators within the next 2 months. We are also exploring conducting programs in the US with foreign speakers. European attorneys have expressed interest in conducting such programs. Goals (1) Recruit additional members to join the Committee. We would especially like to tap into AIPLA’s international members to encourage involvement in AIPLA of those members. (2) Explore approaches for expanding audiences for programs. One approach is to establish relationships with IP associations outside the US in order to obtain assistance in promoting and possibly also planning and sponsoring programs. Another, related approach is to begin a formal program of promoting our programming services for US IP law to foreign IP associations, including soliciting requests for online programs and offering speakers for local programs. 2012 Spring Meeting Issue

(5) Work with AIPLA to find a way of making recordings of the online programs available on the website, in a location that is easily found by practitioners outside the US who are not AIPLA members, as well as marketing the existence of the programs to those individuals. (6) Establish more formal working relationships with other international Committees for purposes of coordinating international education efforts and producing programming.

International Trade Commission Chair: L. Scott Oliver Vice Chair: Kim E. Choate

The ITC Committee held its business meeting during AIPLA’s Spring Meeting 2012 in Austin, Texas. We discussed our goals for 2012-2013, which include finding ways to involve more corporate counsel, ITC officials and employees, and Customs officials on our Committee. We also discussed how to grow our membership and involve current members in current ITC issues. The ITC Committee discussed our upcoming events this fall and winter. First, the ITC Committee is looking forward to our participation on the upcoming Ethics Panel at the Annual Meeting 2012, where the Honorable Chief Administrative Law Judge Charles Bullock (ITC) has been invited to speak. On August 15, 2012, our Committee will host an online AIPLA CLE program, with honored guest Administrative Law Judge Theodore Essex (ITC) and practitioner Kim Choate (Cadwalader, Wickersham & Taft LLP) discussing updates on ITC Practice from the Bench & Bar. Looking toward AIPLA’s 2013 Mid-Winter Meeting, the ITC Committee will have an active role in putting together at least one education program, and members discussed our participation in organizing the program. The following Subcommittees were formed during the meeting: Amicus Subcommittee; ITC Rules Subcommittee; ITC Legislative Subcommittee; and Promote the ITC aipla bulletin

Subcommittee. We are still looking for leaders and additional volunteers for each Subcommittee. Please contact Scott Oliver (soliver@mofo.com) and Kim Choate (kim.choate@ cwt.com) if you have an interest in serving on one of these Subcommittees. Members also discussed several “hot” ITC issues, including the draft Nunes’ bill for amending Section 337; non-practicing entities at the ITC; and upcoming Federal Register Notices for changes in ITC Rules and Customs proceedings.

IP Law Associations Chair: Laura J. Zeman-Mullen Vice Chair: Anthony M. Zupcic

accuracy of the Committee’s microsite, including developing and updating content with Committee information, reports, and minutes, and increasing accessibility to regional and local associations. The Regional Roundtable Subcommittee develops discussion topics and organizes and hosts regional roundtable discussions with the leaders of regional and local associations using GoToMeetings, Webinars, etc. The IP Law Associations Committee currently has two task forces: the Membership Task Force and the Public Education Task Force. The Membership Task Force was formed to work directly with AIPLA’s Membership Committee to determine information that could be shared and obtained during the Regional Roundtables conducted by the IP Law Associations Committee to further AIPLA’s Strategic Plan. The Public Education Task Force was formed to work directly with AIPLA’s Public Education Committee to determine information that could be disseminated, shared, and obtained during the Regional Roundtables conducted by the IP Law Associations Committee to further AIPLA’s Strategic Plan.

Microsite Subcommittee

IP Law Association Committee members are also assigned AIPLA Committees in order to interface with those substantive AIPLA committees to enhance the relationship between AIPLA and the local and regional associations by providing the local and regional associations with information, initiatives, programs, etc. specific to the various substantive AIPLA Committees.

Regional Roundtable Subcommittee

Advocacy

Membership Task Force

We utilize our Committee’s master list of local and regional IP association contacts to further the advocacy goals of AIPLA’s Strategic Plan, e.g. forwarding CapWiz emails from AIPLA on to the local and regional IP associations.

Emailer Subcommittee

Public Education Task Torce Vission, Mission and Values The IP Law Associations Committee works to foster beneficial relationships with regional and local associations in the United States having an interest in intellectual property law and encourages cooperation with those associations in educational activities. The Committee also maintains a compilation, organized by state, of the leaders from the regional and local IP associations. The IP Law Associations Committee currently has three Subcommittees: the E-mailer Subcommittee, the Microsite Subcommittee, and the Regional Roundtable Subcommittee. The E-mailer Subcommittee creates e-mails to send to the regional and local associations. The e-mails include AIPLArelated information that may be of interest to the regional and local associations including, for example, Patent and Trademark Boot Camp updates, invitations to the Women in IP Law national dinners, AIPLA’s request to support or oppose legislation or participate as a signatory to an amicus brief, and opportunities to participate in, and results obtained from, Regional Roundtables put on by the IP Law Associations Committee. The Microsite Subcommittee maintains the 50

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We interface with the AIPLA substantive Committees and attend substantive Committee meetings to obtain information to disseminate to the local and regional associations. Public Education A Public Education Task Force was formed to work with the AIPLA Public Education Committee to identify information that could be disseminated to, and collected from, the IP Law Association Committee’s Regional Roundtables and to determine how that information could be used with AIPLA’s Public Education Committee to further the public education goals of the AIPLA Strategic Plan. The Public Education Task Force will work with AIPLA’s Public Education Committee, and any related Committees, to determine how we can utilize our regional and local IP Association contacts to further the Public Education component of AIPLA’s Strategic Plan. Member Service A Membership Task Force was formed within the Committee to work with the AIPLA Membership Committee, and any other related AIPLA Committees, to identify information that 2012 Spring Meeting Issue

could be collected from the IP Law Association Committee’s Regional Roundtables and to determine how that information could be used with AIPLA’s Membership Committee to further the member services goals of the AIPLA Strategic Plan. For example, the Membership Task Force may work with AIPLA’s Membership Committee to create a list of AIPLA benefits and develop a plan for gaining more AIPLA members from the local and regional associations by obtaining information from, and distributing information to, the local and regional IP associations through the IP Law Association Committee’s regional roundtables that are held throughout the country via telephone and Internet using Go To Meetings.

IP Practice in China Chair: William D. “Skip” Fisher Vice Chair:Ying Tuo

Global Outreach A practice run through of an exemplary Regional Roundtable to be held with the regional and local IP associations was conducted at the AIPLA Spring Meeting in Austin. This Regional Roundtable series will be held throughout the summer and into the fall of 2012 and will include leaders from the local and regional associations throughout the United States and will cover the following topics: public education, membership in professional associations and organizations, AIPLA’s amicus notification network, and the America Invents Act (what regional and local organizations are doing and what AIPLA is doing to familiarize practitioners with the new rules). The results of this series of Regional Roundtables will be compiled and disseminated to various AIPLA Committees and those regional and local association leaders participating in the roundtables. Topics for future Roundtables (to be held in 2013) may include: developing speakers and speaker resources for CLE programs; ways to coordinate calendars among the regional/local associations; approaches for networking among and recruiting young lawyers for the regional/local associations; best practices association management; AIPLA sponsorship or support for regional/local CLE events; feedback from the USPTO on “hoteling” of examiners at regional locations, and assistance that might be provided by the regional/local IP associations; and discussion of the AIA Pro Bono Task Force. 2013 Roundtables may also explore creating resources for speakers and a topic specific “speaker pool” that could be made accessible to AIPLA and the local and regional associations. The Committee will distribute two emails during the remainder of 2012 to the local and regional associations which contain AIPLA-related information, reports from substantive AIPLA Committees, results from regional round tables, and announcements of AIPLA programs, CLEs, and/or initiatives being put forth to meet the goals of AIPLA’s Strategic Plan.

The Committee works to establish and maintain relations with professional societies in China whose members are interested in intellectual property law. The Committee’s members study Chinese law and practice and report on issues of interest to the AIPLA Board of Directors and membership. The Committee also provides information on US intellectual property law to any interested party in China, if called upon to do so. The Committee has no business to report at this time.

IP Practice in Europe Co-Chair: Andrew G. Smith Co-Chair: Joerg-Uwe Szipl

Vision, Mission and Values The IP Practice in Europe Committee seeks to inform our members and members of AIPLA of key developments in intellectual property law and practice in Europe, through the establishment and maintenance of relations with professional societies whose members are expert in intellectual property law and practice in Europe. Member Service The IP Practice in Europe Committee is continuing to support the sharing of key developments in practice and in law for our members. Our strong and effective relationships with national IP organizations throughout Europe have assisted us in this process of continuing education. At the Mid-Winter Institute, together with the IP Practice

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in Japan Committee, we presented a two-hour program entitled, “Post Grant pPoceedings in Europe, Japan and the Proposals for Post Grant Review in the US.” The joint program outlined the learning from established opposition proceedings before the European Patent Office, highlighted the impact on the number of proceedings initiated in Japan following the shift from a pre-grant, to a post-grant opposition system, and then the further change to post-grant litigation model. Each of these sought to provide learning for the PGR, and in particular, the potential rules of procedure. There was a great deal of interest in the thoughts and comments of Judge Tierney and there was much discussion around the potential impact on users and the extent to which it would likely be used. Speakers included: Eric Augarde, of Brevalex, France; Kay Konishi of P-Nic, Japan; and Judge Tierney of the USPTO. At the Spring Meeting, together with the Electronic and Computer Law and International and Foreign Law Committees, we presented a two-hour educational session entitled, “MultiDistrict Patent Litigation – A US and European Perspective.” The European perspective highlighted the procedures, costs and timing related to litigation in key jurisdictions in Europe including Germany, the Netherlands and UK. The relative merits of the bifurcated approach adopted in Germany and Austria to infringement and validity proceedings was contrasted with that seen in other jurisdictions such as the UK and US. The relative merits of national proceedings and opposition proceedings at the EPO were also considered. The US perspective highlighted the costs, timing and prospect of success in various US District Courts. A further one-hour educational session was held with the International and Foreign Law Committee entitled, “Inventive Step and Disclosure Requirements in Germany and Europe. Speakers included: Robert Schnekenbüehl, DTS Intellectual Property Law, Munich; Kay Kasper, Reimann Osterrieth Kohler Haft, Düsseldorf; Nanno M. Lenz, Schaafhausen, Frankfurt; and Christoff Keussen, Glawe Delfs, Hamburg. Global Outreach In the first week of March, a delegation including William Barber, Alan Kasper and Todd Dickinson continued the Committee’s tradition of an annual visit to Europe, where we met with officials and members from a number of European IP organizations. The trip included meetings with patent organizations CIPA and IPLA in London, CNCPI in Paris, GRUR, Patentenwaltskammer and EPI in Munich. For the first time, we also met with trademark organizations ITMA in London and APRAM in Paris. Our visit included a visit to the German Supreme Court, including a meeting with Judges Grabinski, Bornkamm and Meier-Beck and also a visit to the European Patent Office in Munich for a meeting chaired by Wim van der Eijk, Vice-President of the EPO. 52

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Our visit provided an excellent opportunity to strengthen ties with national IP organizations, share developments in US practice—in particular the introduction of AIA—and to exchange ideas on harmonization of IP practice. A further result of our visit was the attendance at the Spring Meeting in Austin by the leadership committee of Patentenwaltskammer, providing a further opportunity to build relations between AIPLA and this important German IP organization. It is hoped that we can build upon such interactions and invite leadership committees from other national organizations to attend and participate in AIPLA meetings.

IP Practice in the Far East Chair: Kenneth K. Cho Vice Chair: Hung H. Bui (not pictured)

The Committee serves as a resource, forum, and network for AIPLA members with a personal and/or professional interest in the IP laws and systems of Asian countries, with an emphasis on China, South Korea, and India. The Committee’s mission is to establish relations with IP associations in those countries, study and report on the IP laws and practices of those countries, and provide information on US IP law and practice to interested parties from those countries. The Committee convenes a combined business and educational meeting at each of the three stated AIPLA meetings, regularly sends delegations to and accepts delegations from Asian countries, and seeks to collaborate with other Committees. The Committee has no business to report at this time.

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IP Practice in Japan Co-Chair: Joseph A. Calvaruso Co-Chair: Paik Saber

approach to the procurement of Intellectual Property. The Committee fosters to bring together those differences within the best of its abilities to assist IP Practioners throughout the world to better understand Latin America and the procurement of IP in the region. The Committee’s vision is to include IP Practioners from every Latin American country as members of the Committee and the AIPLA community as a whole. The Committee’s values are identical to those of the greater membership of the AIPLA in its belief to the enduring power and importance of all areas of intellectual property for creating economic growth and prosperity for all of Latin America. Advocacy

The IP Practice in Japan Commitee works to establish and maintain relations with professional societies in Japan whose members are interested in intellectual property law. The Committee’s members study Japanese law and practice and report on issues of interest to the Association Board of Directors and membership. The Committee also provides information on US intellectual property law to any interested party in Japan, if called upon to do so. This Committee works in conjunction with the International and Foreign Law Committee. No business to report at this time.

IP Practice in Latin America Chair: James E. Larson Vice Chair: Joaquim Eugenio Goulart

The IP Practice in Latin America Committee is very committed to acting as an advocate for furthering the understanding and development of IP systems in Latin America. The Committee will work with fellow IP associations in all Latin American countries to assist them in embracing common ideals and systems that are proven to work from other countries with more developed IP procurement systems. However, the Committee will always remain cognizant of the unique cultural differences in each Latin America country and will never forget that just because a certain system works well in one country, does not mean that it will necessarily work well in any other specific Latin American country. The Committee will look to fellow AIPLA Committees such as the International and Foreign Law Committee, the PCT Issues Committee, the various Trademark Committees and the Committees covering Japan, Europe and the Far East, to name just a few, for assistance, mutual cooperation and guidance. Public Education

Vission, Mission and Values The IP Practice in Latin America Committee’s (LAC) mission is to foster a better understanding of the complex differences among the numerous countries of Latin America by educating its members and AIPLA body as a whole. The Committee works to this end by constantly reminding its members through its Committee programs and web postings that there are three distinct languages spoken thoughout Latin America (English, Spanish and Portuguese), not including the numerous indigenous languages that can be found in each country, and that each Latin American country is very unique in its culture, political system, history and of course their 2012 Spring Meeting Issue

The IP Practice in Latin America Committee is committed to the highest level of public education as it relates to IP procurement in the Latin American region. As a means to this ends, the Committee will continue to work with a multitude of the other AIPLA Committees to sponsor joint Committee sessions, especially at each Spring and Annual Meeting. However, the Committee will not only work with other “internationally focused” Committees, but will strive to incorporate programs that are co-sponsored by a wide variety of AIPLA Committees so long as the educational program is helpful to the Committee membership and the greater AIPLA community as a whole. The IP Practice in Latin America Committee has also formed official liaison relationships with the Biotechnology Committee, the International and Foreign Law Committee and the Professional Programs Committee. Member Service The IP Practice in Latin America Committee is wholly committed to expanding its membership to include at least one, if not many, members from each Latin American aipla bulletin

country in the region. The Committee is also committed to including its members in its educational programs by asking them to speak at any of the three annual meetings when their specific area of expertise fits within the programmed Committee session. Further, a new Subcommittee has been created to maintain its microsite in a desire a keep its members informed of important changes occurring in the IP world throughout the Latin American region. Still further, the Committee has created a new Subcommittee that will investigate and disseminate information to the full Committee, in cooperation with the Microsite Subcommittee, in regards to credible and informative social networks, group discussions and blogs that offer valuable information to its members with interests in Latin America intellectual property. Global Outreach Each of the IP Practice in Latin America Committee’s vision, mission and values as well its advocacy, public education and member services will work in coincidence to provide a greater global outreach. Latin America, as whole, has become an important economic market for the world and should expect to see IP procurement increase steadily each year throughout the entire region. The Committee intends to help foster a global outreach by planning at least one annual trip to a Latin American country to visit its local Patent and Trademark Office and/or other Industrial Property Office and as well to coordinate a visit with the county’s or city’s local IP association and its Judicial bar. Plans are finalized for the Committee to visit Brazil in late August 2012 and an exploratory Subcommittee is considering a Mexico City trip in 2013. Further news about both trips are sent out via email and made available on the Committee microsite. Subcommittees Subcommittee Reporting on IP Developments in South America for 2012 Ignacio Manuel Sánchez Echagüe – Chair Gisella Barreda – Vice Chair Subcommittee Reporting on IP Developments in Mexico & Central America for 2012 César Ramos - Chair José Paulo Brenes – Vice Chair Subcommittee for the Maintenance of the AIPLA LAC Micro-Web Site Eduardo da Gama Camara Junior – Chair

Law Practice Management Chair: Steven M. Auvil Vice Chair: David A. Divine (not pictured)

Vision, Mission and Values The mission of the Law Practice Management Committee is to provide resources to our members to manage their law practices. One of the main goals of the Committee is the timely production of the Report of the Economic Survey. A second goal is to provide educational programming and resources to our members related to law practice management. A third goal is to provide a forum for discussion of issues related to law practice management. Public Education At the 2012 Spring Meeting, the Committee hosted a joint breakfast with the Women in IP Law Committee relating to recruiting and retaining female IP lawyers in firms and companies. The Committee is coordinating with the Women in IP Law Committee to compile a list of best practices based on discussion during the breakfast, which will be distributed to the AIPLA membership and potentially presented during a future webinar. Member Service The Committee has already begun work on the 2013 Economic Survey, and is on track to deliver the survey and resulting report on schedule. The Committee is in the process of planning educational sessions for the Annual Meeting and beyond. The Committee leadership is also in the process of surveying our members to understand how we can better serve them and thereby increase participation. The Committee plans to tailor our communication channels, educational programming, and other resources based on the results of the survey.

Subcommittee for Development and Integration of Social Networking in Latin America Luis Diego Castro – Chair Subcommittee for Biotechnology Issue in Latin America Benny Spiewak - Chair Juan Francisco Reyes – Vice Chair

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Law Students

Co-Chair: Natalie C. Jones Co-Chair: Deb Sengupta (not pictured)

portfolios, managing those portfolios and managing royalty and revenue streams associated with those portfolios. This Committee shall give attention to the foregoing and make recommendations to the Board in regard thereto. No business to report at this time.

Membership

Chair: Bryan W. Bockhop Vice Chair: Cheryl H. Agris (not pictured) The Law Student Committee was created to help the association better identify with the concerns of law students. The Committee wishes not only to invigorate AIPLA’s current law student members, but also to welcome more students to join the association as active members. The Committee will be a vehicle to bring AIPLA’s broader purpose and goals to the law student community. No business to report at this time.

Licensing and Management of IP Assets Chair: Kevin A. Wolff Vice Chair: Robert O. Lindefjeld (not pictured)

The Membership Committee, in a joint meeting with the Mentoring Committee, held a business session in which we discussed initiatives to increase membership and to improve participation in the mentoring program. We discussed a proposal to expand membership to include non-lawyer classes of members. Immediately afterwards, we held the biannual Small Firm/Solo Practitioners’ Reception, sponsored by Jameson IP Services, with over 60 people attending.

Mentoring

Chair: Daphne C. Lainson Vice Chair: Hetal Kushwaha (not pictured)

This Committee shall consider the laws, regulations, and judicial decisions which affect the ownership, transfer and sharing of intellectual property rights and technology. It shall consider matters relating to taxation and other financial issues insofar as they relate to intellectual property in any form. This Committee shall develop and share information on procedures for holding, transferring and sharing rights in intellectual property enabling intellectual property owners to identify intellectual property assets and needs, measure and extract additional value from that property, analyze impediments to valuing intellectual property assets as compared to tangible assets, develop benchmarking tools and procedures for overcoming any impediments and recommends ways to assist in mining intellectual property 2012 Spring Meeting Issue

Subcommittees Pairings Subcommittee: Diana Luo Mentor/Mentee Pre-Screening: Diana Luo Evaluations Subcommittee (includes reviewing applicants for Mentor of the Year Award): Lisa Jorgensen; Allison Strickland Klitzman Award Selection Subcommittee: Rakesh Mehta aipla bulletin

Technology Subcommittee: Jack Abid Vision, Mission and Values The Mentoring Committee facilitates mentoring relationships within AIPLA to help members to achieve their goals within AIPLA. Professional mentoring may also be an aspect of the mentoring relationship. Advocacy The Mentoring Committee does not have a formal role with respect to advocacy. However, through pairings, our mentors introduce their mentees to substantive Committees which have a role in advocacy. Public Education The Mentoring Committee contributes to public education by supporting Committees like the Education Committee. Our pairings can also increase AIPLA members becoming more involved in public education, with interested mentees being introduced to AIPLA leadership tasked with this objective. Member Service We believe that the Mentoring Committee draws in new members interested in becoming more involved in AIPLA and who may want professional mentoring. We also contribute to Member Services with the Klitzman Award. One objective of the award is to assist junior corporate counsel in becoming more involved in AIPLA. We are working to improve the mentoring experience. One of the steps we have taken, further to feedback, is to provide a mentor/mentee pre-pairing interview. Before pairing, Diana Luo contacts each mentor and mentee to confirm that the pairing is appropriate. We launched a pilot program at the Spring Meeting to provide greater mentoring at each stated meeting. We paired AIPLA leadership with more junior members who want to become more involved in AIPLA. Jenae Gureff and Michael Valek have been instrumental in contacting potential mentors and mentees and in their pairing. We are also partnering with the Women in IP Law Committee to provide more targeted pairing of mentors and mentees within membership of that Committee. The objective is to provide women mentors for women mentees who are looking for a female mentor. If this is successful, the Mentoring Committee will reach out to the Diversity Committee (including the LGBT Subcommittee) and the Corporate Practice Committee to see if they are interested in a similar initiative.

We are a global Committee: foreign members are involved in the mentoring program at the leadership level and within the mentoring program as mentors and mentees. We provided an online program in March to provide mentors and mentees with further information to get the most out of the mentoring relationship, increasing our global outreach. The program was chaired by the former chair of this Committee, Elizabeth Burke, and included last yearâ&#x20AC;&#x2122;s Mentor of the Year, Mike Martinez, and Rakesh Mehta, one of our mentees. We are also developing new ways to reach out to our members using our Committee microsite, Twitter and Facebook. Goals are to provide additional resources for mentors and mentees outside of and at stated meetings. We are also considering ways to provide local mentoring opportunities, building on what the New Lawyers and the Women in IP Law Committees have achieved through community events.

Mergers and Acquisitions Chair: Neil Henderson (not pictured) Vice Chair: Peter E. Mims

Subcommittees Website; Brown Bag Lunch/Webinar; Annual Meeting; MidWinter Meeting; Spring Meeting Vision, Mission & Values To engage and educate the membership on intellectual property issues that arise in corporate transactions (mergers and acquisitions) and generally raise the awareness of the membership regarding the importance of intellectual property to mergers and acquisitions. Advocacy We have not engaged in Advocacy as of yet, but there may be opportunities in the future. For example, there are conflicts in the rulings of several circuit courts of appeal regarding the assignment or transferability of intellectual property license agreements.

Global Outreach

Public Education

Our Committee has and will continue to improve ways for our members to become more involved outside of stated meetings. This allows members who are not able to travel to meetings to become involved in and learn more about AIPLA.

The Committee has a project to develop due diligence checklists that are initially for AIPLA members but could eventually be made public.

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Member Service We have implemented monthly conference calls that are intended to be of benefit to member education. All members are invited to participate in these monthly calls. We are also considering webinars on topics that won’t fit into the regular conference calls. These webinars may be used as a subset of meeting discussion topics.

New Lawyers

Co-Chair: Melissa A. Sikorski Co-Chair: Chad Pannell

We have or will be conducting joint Committee meetings with presentations with other Committees such as Electronic & Computer Law, Law Student, Emerging Technologies, Corporate, and Women in IP Law, to help inform a larger cross-section of AIPLA members about our Committee. At the Spring Meeting we were planning on having two speakers on IP and M&A in each of the entertainment and energy areas. Unfortunately, due to unusual circumstances, both speakers had to cancel at the last minute. We ended up having a good meeting in any event with a brief presentation by Neil Henderson on IP due diligence and some lively discussion among the group about on-going developments in M&A and patent acquisitions. For the Annual Meeting, we are planning a joint educational session with other Committees on the topic of “IP People vs. Corporate People: Why Can’t We Be Friends?” We have some speakers lined up but would be interested in any others available. We would also like suggestions from any Committees that would like to be involved. We have provided as many opportunities as possible for Committee members to be involved – through Subcommittees, speaking, moderating, project managing, etc. Global Outreach We have had some attendance at convention meetings by international members of AIPLA. One of the goals of the committee will be to engage the IP Practice in Japan, China, Europe and other Committees to conduct joint sessions with regard to mergers and acquisitions in other jurisdictions. We are under way with planning for a larger session at the AIPLA Annual Meeting in 2012.

The NLC enjoyed a well-attended, productive and informational session led by Committee Co-Chair Missy Sikorski at the 2012 Spring Meeting in Austin. The session resulted in new local networking leaders joining the team, plans for international Committee events and crossprogramming, and increased interest in volunteering for the Committee’s many ongoing initiatives as well as projects announced during the session by leadership from other AIPLA Committees. Following the session was a very wellattended local networking happy hour, generously sponsored by Fish & Richardson, PC. A more detailed summary of the meeting will appear in the upcoming issue of the NLC’s Business Casual™ Newsletter. The Committee chairs congratulate the NLC CLE Subcommittee on the success of the first NLC CLE program, held on May 30th in Washington, DC, with satellite participation in Boston, New York, and Chicago. Entitled “Examiner Interviews 101 – Strategies for How to Make the Best of Your USPTO Interview and Get the Patent Issued,” the CLE program was very well-attended and wellreceived. Headed by Rick Matthews in partnership with the Education and Online Programs Committees, the NLC CLE program provides CLE for new lawyers, by new lawyers, and integrates education into our networking events around the country. Special thanks to the May 30th NLC CLE program speakers Kevin Greenleaf, Kurt Mueller and Ryan C. Smith. Special thanks also go to NLC Local Networking Subcommittee leadership in the program’s host cities for assisting with local coordination and marketing: Frank Gerratana, Gil Espinoza, Stephen Holzen, Chrystina Zelaskiewicz, Lauren Peterson and Ceyda Maisami. The Committee also thanks host firms Fish & Richardson PC, Foley & Lardner LLP and Dickstein Shapiro LLP. Finally, the Committee thanks the dedicated and hardworking NLC CLE team: Rick Matthews, Ehab Samuel, Vice Chair of the Education Committee, Myra McCormack, Chair of the Education Committee, Stephen Belisle, Vice Chair of the Online Programs Committee, Brad Chin, Chair of the

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Online Programs Committee, Yelena Morozova, Joseph M. DiCioccio, Clifford D. Hyra and Beth Wolfson. Special thanks also go out to NLC member volunteers Kristin Biedinger and Lee Kim for serving as judges at the Intel Science Fair held May 13-18 in Pittsburgh, PA. The NLC chairs continue to communicate with members on the AIPLA e-mail list and social networking media such as our Facebook page and LinkedIn group, to make Committee announcements, broadcast volunteer opportunities for various AIPLA projects, and post upcoming local events organized by the networking Subcommittee leaders. If you are interested in getting more involved in the New Lawyers Committee, please send an e-mail to Committee Co-Chairs Chad Pannell cpannell@kilpatricktownsend.com and Missy Sikorski missysikorski@gmail.com.

Online Programs Chair: Brad Chin Vice Chair: Stephen E. Belisle

webinar on trademark monetary remedies along with Bob Payne. We will circulate an updated master record of programs shortly. We reminded everyone to review the updated sample documents developed for coordinating webinars, namely the initial speaker email, formal AIPLA speaker/moderator letter, and AIPLA speaker/moderator acknowledgement. These documents were previously circulated and will be posted to the Online Programs microsite shortly. Coordinators should continue to copy Brad Chin (brad.chin@bgllp.com) and Stephen Belisle (sbelisle@fchs.com) on all correspondence with potential speakers. The chair of our Online Presence Subcommittee is Pauline Pelletier. We look forward toimproving our microsite and online presence through Paulineâ&#x20AC;&#x2122;s efforts. We plan to host another teleconference with coordinators in July to continue planning future webinars and answer any questions about the planning and coordinating process.

Patent Agents Chair: Esther M. Kepplinger Vice Chair: Naomi Abe Voegtli

The Online Programs Committee held a meeting on May 10, 2012, as part of the AIPLA Spring Meeting in Austin, Texas, to discuss the planning and coordination of AIPLA webinars. Attendees included Brad Chin (Chair), Stephen Belisle (Vice Chair), Meghan Donohoe (AIPLA), Wosene Gurmu (AIPLA), John Marsh, Lucas Amodio, and Keith Weltsch. Teleconference participants included Robert Czarnecki, Agatha Liu, Jennifer Rogers, Jenny Lee, Shant Tchakerian, Tracy Harrach, Joel Bush, Darren Franklin, and Sally Wang. We thank everyone for participating in the meeting and for all your efforts in coordinating webinars for AIPLA. We discussed the value of coordinating AIPLA webinars, including opportunities for exposure to judges, in-house counsel, AIPLA staff, and other leading members of the IP profession, increased name recognition, and the side-effect of staying on top of hot IP topics and cases. We reviewed the status of programs scheduled as of the meeting. In response to our request for additional coordinators, Mr. Amodio agreed to help coordinate the August 8 webinar along with Sally Wang and Brad Chin, and Keith Weltsch agreed to help coordinate the November 58â&#x20AC;&#x192;

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Vision, Mission and Values The objective of this Committee is to maintain the currency of the members on aspects of patent law, serve as a source of information and networking and gather information to improve the patent system. The Committee focuses on providing information to the membership on changes in practice and procedure from the USPTO, changes in case law, potential effects of any changes, practice tips related to practice before the USPTO and aspects of practice relevant to patent agents. Advocacy The Committee seeks input from its members, and other interested Committees, on USPTO Federal Register Notices, for consideration and evaluation for possible AIPLA comment to the USPTO. Public Education The Committee typically invites a USPTO official to stated meeting Committee meetings to discuss the current status 2012 Spring Meeting Issue

of patent operations and programs, and any new patent policies, practices, or procedures that have recently been adopted or proposed. The latter is usually a joint meeting with at least one other interested Committee. In addition, the Committee often joins with other Committees at the stated meetings for their Committee meetings. For example, at the Spring Meeting, the Patent Agents and Patent-Relations with the USPTO Committees held a joint meeting. Commissioner for Patents Margaret Focarino was the guest speaker. Commissioner Focarino gave an update on USPTO programs including a wide range of valuable information and statistics. Highlights of the Commissioner’s presentation included a status update on AIA implementation, including rulemakings, with the Commissioner reporting that the PTO was on track to meet the timelines required in the statute. The Commissioner reported that while the backlog of unexamined applications had been reduced to about 640,000 applications, the backlog of RCEs had risen to almost 90,000. The USPTO has recently announced plans to reduce the RCE backlog by further consideration of amendments after final and the consideration of IDSs after payment of the issue fee. Additionally, the PTO will begin a plan to work off the oldest RCEs in the backlog. The Commissioner reported that the Detroit satellite office would likely open in July and that the sites for at least two additional satellite offices would be announced this summer. WebEx conferences with examiners in the satellite offices would be available. In response to a question, the Commissioner reported that Track 3 processing (delayed processing) was still being considered by the USPTO. The Commissioner’s slide presentation, including additional information and statistics, is available on both microsites.

Patent Cooperation Treaty Issues Chair: Jay A. Erstling (not pictured) Vice Chair: Stephen G. Kunin

The mission of the Committee is to educate patent professionals about the use and operations of the PCT system; to identify and advocate for improvements in and enhancements to the system; and to sponsor resolutions and promote dialogue with the USPTO, the World Intellectual 2012 Spring Meeting Issue

Property Organization (WIPO), and patent offices and practitioners around the world. No business to report at this time.

Patent Law

Chair: Kenneth N. Nigon Vice Chair: Marc A. Hubbard

Subcommittees Patentability Issues; Programs; Advocacy; Legislation Vision, Mission and Values The Patent Law Committee provides an open community for the exchange of ideas and concerns on US patent law and underlying policy, disseminates information on recent developments in patent law, develops educational programming on patent law for the membership and policy leaders, assists other Committees with developing educational and other programming, identifies to the membership and AIPLA important issues of patent law, and assists with developing positions on issues of patent law to be advocated by the AIPLA. The Committee will do so without regard to any particular technology. Advocacy One of the Committee’s primary objectives is to assist AIPLA in its advocacy by monitoring issues that arise concerning the substantive aspects of US patent law and bringing those issues to the attention of the membership and AIPLA. The Committee gathers input from its members on issues involving patent law, and recommends positions to be taken by AIPLA. It also drafts, on behalf of AIPLA, resolutions, and comments in response to requests from governmental agencies concerning patent law. The Advocacy Subcommittee assists the Committee in these efforts. In addition to their efforts in summarizing and soliciting and collecting comments on the NPRMs, the Advocacy Subcommittee continues to monitor case law, USPTO publications and NPRMs for issues that may need to be addressed by AIPLA. If an issue is deemed worthy by the Subcommittee, they will make recommendations to the Amicus Committee or prepare a draft resolution for consideration by the Board. aipla bulletin

Some recent activities relating to advocacy include the following: •

In February, the Advocacy Subcommittee, under the leadership of Pou-I (Bonnie) Lee, summarized five Notices of Proposed Rule Making (NPRMs) published in January for implementation under the America Invents Act (AIA), solicited comments from the entire Patent Law Committee, summarized those comments and passed them on to the AIPLA Task Force.

•

Also in February, the Committee solicited, summarized, and forwarded comments to the AIPLA Task Force on the NPRM published in February relating to post-grant proceeding, derivation and practice before the Patent Trial and Appeal Board.

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Currently, the Subcommittee is seeking volunteers to begin to monitor recently filed lawsuits by John Wiley & Sons and other publishers against law firms alleging that copying and submitting scientific articles constitutes copyright infringement.

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The Committee recently solicited comments on the new After Final Consideration Pilot program of the USPTO and the Federal Register Notice concerning whether economically significant patents should be placed under secrecy order. A Legislation Subcommittee has been established, chaired by Eric Mirabel. As an initial project, Eric will be working with Lance Reich on a proposed revision to 35 USC. § 101.

include all issues relating to patentability, and renamed it to the Patentability Issues Subcommittee. This Subcommittee is co-chaired by Ben Borson and Gary Cohen. Second, the Committee regularly arranges and sponsors educational programming during its meetings, often for CLE credit through its Programs Subcommittee, which is chaired by Paul Kitch of Nixon & Peabody and Sarah Knight of Saliwanchick, Lloyd Eisenschenk. The Subcommittee is responsible for planning educational content, preferably for CLE credit, during the Committee’s meetings. The Programs Subcommittee will also be responsible for coordinating with the Professional Programs and the Mid-Winter Institute Committees, as well as the Online Education Committee, by providing to those Committees ideas for programming, and assistance and resources in connection with producing the programming. Third, the Committee assists other Committees with programming content. Fourth, the Committee informs its members of important legislative and administrative initiatives, and provides a mechanism through which members may contribute collectively to comments that will be submitted in response to those initiatives. Activities of The Patentability Issues Subcommittee •

On February 21, the Subcommittee organized a free teleconference to discuss In re Lee, a case from the Board of Patent Appeals and Interferences dealing with the use of secondary consideration evidence for obviousness rejections and obviousness-type-double patenting rejections. Matt Hammersley gave a short presentation on the majority opinion and Anthony Craig addressed the dissent. We had over 70 participants on the teleconference.

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The Subcommittee organized a second, free teleconference on April 3 to discuss the Supreme Court’s decision on March 20, 2012 of Mayo Collaborative Services, et al., v. Prometheus Laboratories.

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On June 5, the Subcommittee will conduct a free teleconference jointly between the Patent Law Committee and the Biotechnology Committee to discuss Otsuka Pharmaceutical Co., Ltd. vs. Sandoz, Inc., Apotex, and Teva Pharmaceuticals, Eurand, Inc. & Cephalon, Inc. v. Mylan Pharmaceuticals Inc. and Ex parte Whalen II. These cases address obviousness of pharmaceutical compounds and compositions, and we hope to provoke a conversation among the attendees comparing and contrasting standards for obviousness and obviousnesstype-double patenting.

•

The Subcommittee continues to monitor developments generally in the area of patentability, including subject matter eligibility, anticipation, obviousness, and §112

Public Education The Committee is a resource for the Public Education Committee for developing materials for use in public education. In January, we reviewed and commented on educational materials prepared for middle-school students by the Public Education Committee. We will continue to work with the Public Education Committee to ensure that issues relating to the public perception of IP law are addressed. Member Service The Committee serves its members and AIPLA through a number of different avenues. First, our substantive Subcommittees provide forums or communities through which Committee members exchange information and thoughts on current legal developments and policy questions. As described above, the Advocacy Subcommittee has solicited and submitted comments to the AIPLA Task Force regarding the Notices of Proposed Rule Making under the AIA. The Patent Law Committee is fortunate to have a technically–diverse membership, enabling it to cover all technologies that arise, including software and the life sciences. Because of the success of the Subject Matter Eligibility Subcommittee, we have expanded its scope to 60

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issues, for the purpose not only of holding regular conference calls to discuss important cases, but also bringing the Association’s attention to them and working with Committee leadership, the Amicus Committee and the Board on developing positions to be taken on important issues.

Patent-Relations with the USPTO Chair: Gregory D. Allen Vice Chair: Nicholas P. Godici

Activities of the Programs Subcommittee •

At the 2012 Spring Meeting, the Patent Law and Professionalism and Ethics Committees held a joint CLE meeting. The program included a presentation by Mark Michels, former litigation manager and discovery counsel at Cisco Systems, on the risks of failing to preserve patent prosecution files. William Covey, Deputy General Counsel for Enrollment and Discipline and the Director of OED, spoke on IP lawyer misconduct, and Kirby Drake of Klemchuck Kubasta LLP presented on ethical issues in discovery.

Global Outreach Our Programs Subcommittee will work with the International Education Committee to make resources and speakers on US patent law available, as well as suggest possible topics and program that might be of interest to an international audience.

Patent Litigation Chair: Dianne B. Elderkin Vice Chair: Scott J. Pivnick

Subcommittees Federal Register Notice Committee: Lead drafter designated on a per Notice basis; and Microsite: Michael D. Berger. Vision, Mission and Values This Committee monitors and provides membership comments on various patent related activities of the USPTO that may be of interest or concern to the profession or the public. The Committee focuses on the USPTO Rules of Practices in Patent Cases and their effectiveness in furthering the objectives of the patent system; the extrastatutory and extrarule aspects of USPTO practice with respect to pending patent applications, as reflected in the Manual of Patent Examining Procedure and in actual cases coming to the attention of the Committee; the effectiveness of that practice in furthering the objectives of the patent system; and the effectiveness of the facilities afforded by the USPTO to the public interested in patent matters, including publications. Advocacy The Committee seeks input from it members, and other interested Committees, on USPTO Federal Register Notices for consideration and evaluation for possible AIPLA comment to the USPTO. The Committee will also be working with the Special Task Force on AIA Rulemaking and other Committees, as needed to assist the Task Force.

The Committee on Patent Litigation considers laws, rules, regulations and judicial decisions relating to litigation of patent disputes. It also considers changes that ought to be made via legislation, rule amendments or through court decisions and makes recommendations to the Board of Directors in regard thereto. The Committee also is responsible for keeping the AIPLA Pattern Jury Charge up to date (subject to Board approval) and presents CLE programs at its meetings. No business to report at this time.

Public Education The Committee typically invites a USPTO official to stated meeting Committee meetings to discuss the current status of patent operations and programs, and any new patent policies, practices, or procedures that have recently been adopted or proposed. The latter is usually a joint meeting with at least one other interested Committee. In addition, the Committee often joins with other Committees at the stated meetings for their Committee meetings. For example, at the Spring Meeting, we held a joint meeting with the Patent Agents Committee. Commissioner for Patents Margaret Focarino was the guest speaker. Commissioner Focarino gave an update on USPTO programs

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including a wide range of valuable information and statistics. Highlights of the Commissioner’s presentation included a status update on AIA implementation, including rulemakings, with the Commissioner reporting that the PTO was on track to meet the timelines required in the statute. The commissioners reported that while the backlog of unexamined applications had been reduced to about 640,000 applications, the backlog of RCEs had risen to almost 90,000. The PTO has recently announced plans to reduce the RCE backlog by further consideration of amendments after final and IDSs after payment of the issue fee. Additionally, the USPTO will begin a plan to work off the oldest RCEs in the backlog. The Commissioner reported that the Detroit satellite office would likely open in July and that the sites for at least two additional satellite offices would be announced this summer. WebEx conferences with examiners in the satellite offices would be available. In response to a question, the Commissioner reported that Track 3 processing (delayed processing) was still being considered by the USPTO. The Commissioner’s slide presentation including additional information and statistics is available on both of the Committee’s microsites. Member Service The Committee activity maintains a microsite to provide information of particular use to the membership.

Professional Programs Chair: Steven C. Malin Vice Chair: Manny W. Schecter

emphasis on the America Invents Act and the implementation rules currently under development for the Act. Session coordinators have been selected and are in the process of arranging speakers. We are also participating in the AIPLA Education 360 initiative with other Committees to consider improvements that can be made to AIPLA’s public and member education activities.

Professionalism and Ethics Chair: Raymond Van Dyke Vice Chair: Rodney K. Caldwell

The Professionalism and Ethics Committee members are appointed by the President-Elect for a term of three years, in which their duties shall be to promote the education of AIPLA members and the public about professionalism. Committee members keep under constant scrutiny the Code of Professional Responsibility of the corporation and the workings thereof and recommend to the Board of Directors for adoption in due course, any amendments to that Code which may be desirable, together with a report of the reasons for such recommendations. No business to report at this time.

Public Appointments Chair: Michael K. Kirk Vice Chair: William C. Rooklidge

Subcommittees 2013 Spring Meeting Topic Subcommittee Vision, Mission and Values The Professional Programs Committee organizes the agenda and speakers for the AIPLA Spring and Annual Meetings with the objective of providing world-class IP programs by respected speakers and thought leaders. Public Education/Member Service The Professional Programs Committee is organizing the 2012 Annual Meeting and will begin organizing the Spring 2013 meeting. The agenda topics have been selected with 62

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This Committee is appointed by the President-Elect of AIPLA. It has responsibility for responding to requests from the AIPLA Executive Committee and Board to report to the Board on the qualification of certain individuals being considered for appointment to positions such as a Federal Circuit judge, Undersecretary of the Department of Commerce for Intellectual Property and Director of the 2012 Spring Meeting Issue

USPTO or other similar public appointments. No business to report at this time.

Public Education

Chair: Salvatore Anastasi (not pictured) Vice Chair: Michael B. Stewart

of knowledge related to the global treatment of genetic resources, traditional knowledge, and folklore. These areas continue to develop at a rapid pace around the world. Public Education The education of our fellow lawyers on the subjects of genetic resources, traditional knowledge, and folklore is critical to the mission of our Committee. Planning is underway for future meetings on specific subjects to draw attention to developments in these areas, particularly in the area of traditional knowledge which is the current subject of the Intergovernmental Committee (IGC) on Genetic Resources, Traditional Knowledge, and Folklore of the WIPO. Member Service

This Committee shall examine ways for AIPLA to increase No business to report at this time.

The addition of the Special Committee on Genetic Resources, Traditional Knowledge and Folklore to the list of AIPLA Committees serves to provide a great benefit to our membership as it has certainly raised the awareness of members. Our Committee provides a unique and truly singular resource for this information. Global Outreach

Special Committee on Genetic Resources, Traditional Knowledge and Folklore Chair: Thomas T. Moga Vice Chair: DeAnn F. Smith

Thomas Moga attended and participated in the most recent 2012 session of WIPO’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore held in Geneva. Calab Gabriel (K&S, New Delhi) is planning on representing the Committee before the next meeting of the IGC scheduled for July 2012.

Special Committee on IP Practice in Israel Co-Chair: William H. Mandir Co-Chair: Joel K. Schmidt (not pictured)

Vision, Mission and Values Perhaps the most critical mission of our Committee is to raise awareness among members of the intellectual property community as to existing and developing rules of practice and policies related to genetic resources, traditional knowledge, and folklore. Most lawyers, particularly US lawyers, are unfamiliar with genetic resources, traditional knowledge and folklore. By enlightening intellectual property practitioners, our Committee enables the members of AIPLA to better understand trends and developments at the very front end of global intellectual property issues. Advocacy

This Committee serves as a resource, forum, and network for AIPLA members with a personal and/or professional interest in IP laws and systems in Israel. The Committee’s mission is to establish and maintain relations with IP associations in Israel and study and report on issues of interest to the AIPLA Board and membership. The Committee also provides information on US intellectual property law to any interested party in Israel, if called upon to do so.

Our Committee continues to advocate the distribution

No business to report at this time.

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Special Committee on Legislation Co-Chair: Ann Mueting (not pictured) Co-Chair: Patrick J. Coyne

Subcommittees The Special Committee on Legislation has several working groups: •

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Industrial Designs

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Patents/Litigation

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PTO/Agency Practice

•

Trademark

The working groups address issues within their areas of expertise and coordinate with the relevant substantive law Committees. Committee membership is by appointment. Vision, Mission and Values The overall Mission of the Committee is to support the Board and facilitate rapid consideration of legislative proposals. This includes generation of proposals, as well as consideration of both internally-generated and externallygenerated proposals. The Committee also works closely with the various substantive law Committees to ensure that the Board has feedback on legislative proposals. The Special Committee on Legislation supports the vision of the organization by continually seeking to improve the laws governing intellectual property rights, considering members views as represented by the Committee membership and substantive law Committees with whom we coordinate and communicate, and supporting the Board and leadership of AIPLA in advocating before Congress.

The Committee supports the Board and leadership, as requested. This includes generating, reviewing, commenting on, and preparing legislative proposals, positions on legislative proposals, and testimony regarding legislative proposals. We work closely with the substantive law Committees and serve as a liaison between the Board and the substantive law Committees to ensure that proposals are carefully considered by those with the relevant expertise and experience to provide to the Board sound recommendations and the studied judgment of the members. The Special Committee on Legislation is currently monitoring several issues, including: possible technical and amendments to the America Invents Act (AIA); Patent Law Treaty (PLT) implementation; trademark issues, including technical amendments to dilution provisions of the Lanham Act, protection of well-known marks, trademark remedies, and trade dress protection; fashion design protection; orphan works, Stop Online Piracy Act (SOPA and PIPA); OPEN; liability for streaming; antitrust scrutiny of reverse payments; federal trade secrets protection; and other issues on which the Board has requested assistance from the Committee. Member Service The Committee actively solicits the substantive law Committees in performing its mission. We seek to provide the Board with a sense of the membership on the various issues that are considered by the Committee. Global Outreach While the Committee is primarily directed to US legislation, nonetheless, a number of legislative proposals require consideration of various international issues, as well as harmonization with other countries’ laws. The Committee addresses these issues in the regular course of its work.

Special Committee on National IP Practitioner Associations Worldwide Chair: Mark A. Guetlich Vice Chair: Mark J. Abate (not pictured)

The Special Committee on Legislation supports the Association’s mission by keeping members informed regarding legislative developments and initiatives and advocating for fair and effective intellectual property laws. The Committee serves the Association by generating legislative proposals and providing to the Board and leadership commentary and views of the membership on various legislative proposals. Advocacy 64

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This Special Committee is charged with creating and promoting opportunities for leaders of national IP practitioner 2012 Spring Meeting Issue

organizations around the world to meet and develop recommendations for best practices globally. It focuses on education, common advocacy goals, and how attorneys around the world use technical information. The Committee has no business to report at this time.

Special Committee on Standards and Open Source Co-Chair: Monica M. Barone Co-Chair: Christopher J. Dervishian (not pictured)

Mission Serving Members: The Committee offers programming at stated meetings on topics relevant to the membership. Serving Public Policy Leaders: The Committee has served as a sounding board for a proposed federal trade secrets litigation statute. Serving the Public: The Committee’s programming and publications are intended to educate and benefit the public. Values Passion about Intellectual Property Trade secrets practice is continually evolving with constant changes in technology and applicable law, and the Committee’s activities convey a sense of passion and enjoyment of the practice. A Strong Community

The development and use of collaborative technology such as open source software and industry standards have become widespread in virtually all industries. Increasingly, high profile lawsuits and regulatory activities have focused attention on the unique intellectual property issues that arise in connection with licensing such technology. In recognition of these trends, the AIPLA has formed the Standards and Open Source Committee as a Special AIPLA Committee. No business to report at this time.

Trade Secret Law

Chair: Daniel P. Westman (not pictured) Vice Chair: Janet Craycroft (not pictured)

The Committee makes a strong effort to engage with people from a diverse array of industries, geographies, and personal backgrounds. The Committee leadership is based on the two coasts and in the Midwest. The Committee is pleased to have had speakers at programs from racially diverse backgrounds. Committed and Visionary Professionals The Committee is pleased to have as members some of the leading trade secrets practitioners in the US and the world. Advocacy Proposed Legislation A proposal which would amend the Economic Espionage Act to include a civil right of action has been introduced in Congress. This proposed statute grew out of the law review article by former Trade Secrets Committee Chair R. Mark Halligan proposing such amendments, which was debated at the 2011 Mid-Winter Institute. Preparation of Resolutions for Board Consideration Based on the session at the 2011 Mid-Winter Institute “Addressing International Trade Secret Litigation: Should the Federal Economic Espionage Act Be Amended to Include a Civil Cause of Action?,” the Litigation Subcommittee intends to attempt to develop a resolution for consideration by the AIPLA Board of Directors on that issue.

Vision, Mission and Values Trade secrets are a sometimes-overlooked element of the portfolio of owners of intellectual property, and the Committee passionately strives to raise awareness about the importance of trade secrets. 2012 Spring Meeting Issue

In addition, the Committee is considering whether to present a resolution to the Board regarding the Federal Circuit’s recent decision in TianRui Group v. ITC, a case allowing US companies to seek importation bans on products manufactured in China using trade secrets misappropriated in China. Public Education aipla bulletin

CLE Sessions at Stated Meetings

Global Outreach

At the 2012 Mid-Winter Institute, the Committee cosponsored (with the Corporate Practice Committee) a twohour Joint CLE session on the topic of “Separating Personal and Professional Digital Lives.”

The Committee will continue to encourage its members to reach out to potential new members of AIPLA. The Committee believes that the growth of trade secret law and its accessibility to non-patent members of the bar present real opportunities to grow and expand the number and scope of AIPLA’s membership.

At the 2012 Spring Meeting, the Committee sponsored a three-hour concurrent track as follows: •

The Internationalization of Trade Secret Disputes: Big Cases, Big Verdicts and Big Challenges

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Managing and Protecting Your Trade Secrets Overseas – Best Practices to Minimize Misappropriation

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Employees Without Borders: Managing personal devices and digital technology in an increasingly mobile world

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Overcoming the Special Challenges of Litigating Against Foreign Parties and Companies

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Litigating Spoliation of Evidence Disputes: Fallout from the DuPont v. Kolon case and how to use, or avoid, it in your trade secret case

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Litigating Trade Secret Cases before the ITC – The future of TianRui Group v. ITC and the fallout on trade secret protection internationally

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Update on Pending Trade Secret Legislation – Status of the Economic Espionage Act, Cybersecurity Bill, New Jersey’s recent adoption of UTSA and recent state trade secret and non-compete legislation

To enable global discussion on the Internet, a LinkedIn group has been created thanks to the efforts of Mark Klapow, and Deirdre Fox has agreed to chair the Social Media Subcommittee. Subcommittees Amicus Chair: David Almeling, O’Melveny & Myers Best Practices/CyberSecurity Chair: Warrington Parker, Orrick International Chair: Wil Rao, McAndrews, Held & Malloy Legislation Chair: Russell Beck, Beck Reed Riden Litigation Chair: Sid Leach, Snell & Wilmer Vice Chair: Mark Klapow, Crowell & Moring Media Relations Chair: David Almeling, O’Melveny & Myers Vice Chair: Vito Costanzo, Holland & Knight

At the 2012 Annual Meeting, the Committee intends to sponsor a concurrent track tentatively titled “Are You the Weakest Link: Trade Secrets, Cybersecurity, and Best Data Security Practices.” Also, the Committee intends to organize a “Trade Secrets Summit” with programming for new and experienced lawyers. The annual review of trade secret litigation will be presented at the Saturday plenary session during the Annual Meeting.

Membership Chair: Seth Hudson, Clements Bernard

Member Service

Trademark Internet

The Committee places high importance on providing high quality programming to serve the membership. It has worked closely with the Corporate Practices Committee in presenting programs to the AIPLA membership and is considering creating a Subcommittee to facilitate greater interaction with other AIPLA Committees.

Social Media Chair: Deirdre Fox, Shoeman, Updike & Kaufman Special Programs/Inter-Committee Liaison Chair: John Marsh, Hahn Loeser & Parks

Chair: Mark V.B. Partridge Vice Chair: Kristin Jordan Harkins (not pictured)

The Committee has established a LinkedIn group, thanks to the efforts of Mark Klapow, to facilitate discussion between members of the Committee on matters of mutual interest. The Committee presented its first webinar through AIPLA’s Online CLE committee titled, “Are You the Weakest Link? Making Certain that In-House and Outside Counsel Protect The Committee monitors and reports on significant Their Client’s Trade Secrets.” The speakers were Janet developments in the area of trademarks and the Internet. A major focus of the committee is the domain name Craycroft of Intel and Mark Halligan of Nixon Peabody. 66

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administration system. The Committee represents AIPLA’s interests as a member of the Intellectual Property Constituency (IPC) of The Internet Corporation for Assigned Names and Numbers (ICANN), and participates in various ICANN-related working groups, working closely with AIPLA’s Executive Director. We also monitor and may become involved in Internet-focused legislation that impacts trademark owners, as necessary. Other areas of interest include UDRP domain name dispute decisions and relevant case law developments, such as cases involving the use of others’ trademarks in keyword-triggered search engine advertising. No business to report at this time.

Trademark Law Chair: Amie Peele Carter Vice Chair: Kieran G. Doyle

evaluation of our existing membership roster, planning on a survey of the membership on how to provide content and services our members want and need, and also a “phone-amember” campaign to increase active involvement of existing members as well as recruiting efforts for new members. Global Outreach Through the Trademark Treaties and International Law Committee, the Trademark Committee engages with other Committees focused on international law matters. Trademark Committee members also engage in professional programming and reinforce the importance of considering international trademark issues. At the Spring Meeting, we considered a request from a UK practitioner to comment on pending legislation in the UK. Last year, we hosted two international speakers at our Committee meeting during the Annual Meeting. This year, we expect Alan Datri from WIPO to again address the Committee at the Annual Meeting. We are always open to volunteers, so if you are interested in getting involved, please contact Amie Peele Carter or Kieran Doyle. Subcommittees Membership Janet Fuhrer, Chair Evin Kozak, Vice Chair

Vision, Mission and Values The mission of the Trademark Committee includes educating its members about changes in trademark legislation in the US and abroad; providing educational content and resources for AIPLA members; serving as a resource for other Committees in areas of trademark law; providing opportunities for meaningful volunteer work and being a training ground for future leaders of the organization. Advocacy The Trademark Committee works through its Amicus liaison and the Special Committee on Legislation on judicial and legislative advocacy matters. We also concentrate this work with our Legislation Subcommittee. Public Education The Trademark Committee participated last year in educational efforts with the USPTO. We have again been asked to prepare a CLE for Trademark Examining Attorneys, which is in process now. We also work with the Rapid Response Team through our rapid response liaison. Member Service Increasing its membership is one of the Trademark Committee’s current areas of focus. We are working on an 2012 Spring Meeting Issue

Communications Rex Donnelly, Chair Amanda Stone, Vice Chair Sports & Entertainment Lou Perry, Chair Mike Ballard, Vice Chair TM Boot Camp 2012 Kristin Jordan Harkins, Chair Jen Kovalcik, Vice Chair Social Media Linda McLeod, Chair Alex Butterman, Vice Chair On-Line Programs Liaison Keith Weltsch, Chair Michelle Ballagh (CA), Vice Chair Legislation Jen Kovalcik, Chair Amie Peele Carter, Vice Chair False Advertising Eric Shimanoff, Chair Mari-Elise Taube, Vice Chair Technology/Microsite Mat Nelles, Chair Lou Perry, Vice Chair Rapid Response Liaison Jody Drake, Chair Alex Butterman, Vice Chair aipla bulletin

Amicus Liaison Mat Nelles, Chair Sean Garrison, Vice Chair Professional Programs Liaison Rex Donnelly, Chair Elizabeth Lim Brooks, Vice Chair

Trademark Litigation Chair: Jennifer L. Kovalcik Vice Chair: Stephanie Bald

Subcommittees Regional Circuit Litigation Standards Chart; Trademark Litigation Case Summary Reports Vision, Mission and Values The Trademark Litigation Committee is dedicated to education, outreach, member service, and advocacy. The Committee strives to provide helpful tools and reports to educate AIPLA members and the public regarding current trademark litigation legal standards and updates. In addition, the Committee participates in program planning for various AIPLA meetings throughout the year. The Committee continues to achieve member collaboration through member participation in Committee projects, and to seek out and act upon opportunities to provide well-considered and vetted analysis regarding policy and decision-making related to trademark litigation. Advocacy

966, The Lawsuit Abuse Reduction Act of 2011, which proposes revisions to Federal Rule of Civil Procedure 11 regarding sanctions. Among the changes, the bill would remove the 21-day cure period and obligate courts to enter sanctions upon any finding of a Rule 11 violation, including a mandatory award of attorneys fees. Public Education The Trademark Litigation Committee implemented an updated litigation tool which displays a map of the US Circuit Courts of Appeal, and provides an online summary by circuit of leading precedent governing core trademark legal issues. In addition, volunteers from the Trademark Litigation Committee continue to provide Case Summary Reports in advance of each of the three AIPLA Stated Meetings. The Trademark Litigation Case Summary Report covering cases from January through April 2012, will be published in conjunction with the AIPLA Spring Meeting. Website updates have been and will continue to be made to the Committee page to publish the Committee projects for members and the public. Going forward, we are looking at ways to better leverage the case summary reports in connection with the AIPLA Newstand. Member Service The Trademark Litigation Committee continues to actively involve its members in Committee projects such as the Legal Standards Map and Case Summary Reports. To this end, the Committee has appointed member-volunteers as project coordinators, webmaster, amicus representative, and editor to improve the quality and extent of the Committee’s ongoing projects. We continue to look for Committee involvement. Further, we are looking at opportunities to work with other Committees to build outreach and education initiatives and cross-market membership and volunteer opportunities. Finally, we are looking to build membership through community outreach, cross-marketing and the Committee’s website, as well as leveraging case summary contributions for the AIPLA Newstand.

An AIPLA working group comprised of members from the Trademark Litigation Committee, the Patent Litigation Committee and Committee on Special Legislation prepared a report and proposed resolution to amend the Lanham Act’s remedies sections. A special thanks to Bob Payne and Griff Price who led this effort. After sending this proposal for a Committee vote, we recommended legislative action for the AIPLA Board of Directors. We continue to evaluate the details of a proposed amendment, which would include monetary damages as well as use of the presumption of irreparable harm in injunctive proceedings after eBay. We are also evaluating research on trade dress cases in support of potential legislation to clarify analysis of inherent distinctiveness and functionality. The Trademark Litigation Committee continues to watch for developments with H.R. 68

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Trademark Treaties and International Law

Chair: Michael M. Ballard Vice Chair: Jonathan M. Madsen (not pictured)

profession, trademark owners, and the public. This Committee shall consider trademark-related searching clearance, registrability, use, and transactional issues of concern to the profession and trademark owners. This Committee shall give attention to the foregoing and make recommendations to the Board in regard thereto. No business to report at this time.

USPTO Inter Partes Patent Proceedings The Trademark Treaties and International Law Committee considers the treaties of the United States and foreign countries and intergovernmental organizations, and the statutes, rules, regulations, and judicial decisions of foreign countries and intergovernmental organizations, as they relate to trademarks, trade names, and unfair competition which may affect the business of US companies. Committee members coordinate thier activities with all of the trademark-related standing Committees, the International and Foreign Law Committee, and the International Education Committee. No business to report at this time.

Trademark-Relations with the USPTO Chair: Linda K. McLeod Vice Chair: Yasmin Tavakoli

This Committee shall consider issues relating to the activity and operations of the Trademark Trial and Appeal Board of the US Patent and Trademark Office, and its reviewing courts, of concern to the profession, trademark owners, and the public as they relate to inter partes proceedings involving trademarks. This Committee shall consider issues relating to the activities and operations of the Examination Division of the US Patent and Trademark Office and ex parte appeals to the Trademark Trial and Appeal Board of concern to the 2012 Spring Meeting Issue

Chair: Herbert D. Hart Vice Chair: Salima A. Merani (not pictured)

Vision, Mission and Values The areas of responsibility of the USPTO Inter Partes Patent Proceedings Committee include all aspects of post-grant patent practice in the US, including interferences, post-grant review, inter partes review, inter partes reexamination, ex parte reexamination, supplemental examination, derivation proceedings, transitional program for covered business method patents, and reissue proceedings. The Committee plans to continue to study issues raised by the AIPLA Board of Directors, the Director of the United States Patent and Trademark Office (via rulemaking proposals), the Trial Division of the Board of Patent Appeals and Interferences and its successor Patent Trial and Appeal Board, and the members of the Committee, related to postgrant proceedings in the USPTO. Further, the Committee will continue to consider decisions, legislation, and proposed rule changes concerning formal and substantive issues concerning such proceedings. In addition, the Committee may make recommendations to the Board concerning the, â&#x20AC;&#x153;just, speedy, and inexpensive,â&#x20AC;? administration of post-grant proceedings. After receiving approval from the Board, the Committee will report any approved recommendations to the US Patent and Trademark Office, the Trial Division, or the Patent Trial and Appeal Board, as appropriate, on behalf of AIPLA. Advocacy The Committee continues to provide comments and advice aipla bulletin

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to the AIPLA Board as requested, particularly pertaining to rulemaking under the America Invents Act. Public Education - Member Service The Committee continues to seek out opportunities to share its expertise with AIPLA as a whole by means of CLE programs, such as that conducted at the 2011 Annual Meeting.

Women in IP Law Chair: Alyson G. Barker Vice Chair: Hathaway Russell

Further, the Committee continues to maintain and cultivate open communications with the Board of Patent Appeals and Interferences concerning issues pertaining to the Committee’s activities. In keeping with its charter and as a continuation of its efforts as outlined above, the Committee held an in-person meeting at the AIPLA Spring Meeting in Austin, Texas, on Thursday, May 10, 2012. The Committee especially thanks Lead Administrative Patent Judge Tierney for leading a discussion among our group of approximately 25 attendees about the comments received concerning the proposed rules for post-grant proceedings at the Patent Trial and Appeal Board. The discussion focused on the “top ten” topics on which comments were received at the Patent and Trademark Office; namely, estoppel, fees, page limits, the requirement to disclose and produce information contrary to the proponent’s position, admission pro hac vice of non-registered practitioners, the definition of “technological invention,” timing and form of disclosure of supplemental information, the requirement that a party present its entire evidence at the beginning of a trial proceeding, procedures for claim construction, and compelling testimony by USbased and foreign-based witnesses.

This Committee’s mandate is to further and facilitate the practice of intellectual property law by women, including through educational events, networking and mentoring, and the Committee is always looking for volunteers. The Committee meets at each of the three stated meetings, requiring new topics of interest and reporters to prepare a summary of the meeting for publication in the AIPLA Bulletin. It has a virtual book club for which it seeks ideas for books and moderators. The Committee also has established Subcommittees, including a planning Committee for the annual networking dinners held across the United States, which needs regional assistance. No business to report at this time.

Also discussed was the issue of an appropriate name and scope of responsibility for the Committee in view of the wide variety of post grant and other contested cases, including interferences, inter partes reexamination (soon to shift to inter partes review), post-grant review, derivation proceedings, covered business method patent proceedings, supplemental examination, and ex parte reexamination, as well. Members were generally in favor of proposing to AIPLA broadening the Committee’s mission to include all such proceedings. Comments and proposals on that issue were solicited. The Committee is continuing to experience an active year, particularly as the implementation of the America Invents Act proceeds.

aipla bulletin

2012 Spring Meeting Issue

New Members

The following applications for membership are being published as of June 14, 2012 in accordance with Article II of the ByLaws. We welcome all of our new members. REGULAR Leila Abdi Washington, DC John Abramic Chicago, IL Vincent J. Allen Dallas, TX Mary Dilys S. Anderson Manchester, NH Rodney M. Anderson Dallas, TX Peter J. Armenio New York, NY Heather Auyang Washington, DC Karl Orrin Bayer Austin, TX Jeff Bernhardt Palo Alto, CA Ira D. Blecker Poughkeepsie, NY Russell E. Blythe Atlanta, GA Heather Boussios Rockville, MD Jeffrey T. Breloski Atlanta, GA Richard A. Brisbin Fairfax, VA Timothy M. Bryan Arlington, MA Joel D. Bush Atlanta, GA

2012 Spring Meeting Issue

Timothy A. Bush Birmingham, AL

Scott Faber Gloucester, MA

Brandon C. Helms Chicago, IL

Patricia A. Campbell Palo Alto, CA

Thomas C. Feix Oakland, CA

Sarah Holland Austin, TX

Joel Carter Little Rock, AR

R. Scott Feldmann Costa Mesa, CA

Jeffrey Homrig Redwood Shores, CA

David Evan Case Tokyo, Japan

Robert Fieseler Naperville, IL

Thomas Craig Howerton Braintree, MA

Ann Cathcart Chaplin Minneapolis, MN

Michele V. Frank Washington, DC

Therese Varndell Reston, VA

Linna R. Chen Thousand Oaks, CA

David E. Franklin Mason, OH

Susan M. Hwang Los Angeles, CA

Victoria Chi New York, NY

John T. Gallagher New York, NY

Joseph Imhof Quakertown, PA

Timothy J. Churna Bellevue, WA

Hilda C. Galvan Dallas, TX

Larry J. Johnson San Jose, CA

Andrew G. Colombo Overland Park, KS

JiNan Glasgow Raleigh, NC

Jeffrey R. Joseph Woodbury, MN

Ronald Coslick El Segundo, CA

Matthew Goeden Minneapolis, MN

Stephen D. Kahn Brooklyn, NY

Edward Crooks North Canton, OH

George L. Goodridge Greenfield, MA

Stuart Kaler San Francisco, CA

James Cueva Greensboro, NC

Douglas Anderson Grady Seattle, WA

Amanpreet Kaur San Francisco, CA

William J. Davis Wayne, NJ

Kristina M. Grasso Boston, MA

Naresh Kilaru Washington, DC

Thomas DelRosario Surprise, AZ

Naomi Gray San Francisco, CA

Richard Koehl New York, NY

Louis Diep Redwood City, CA

Roger C. Hahn Washington, DC

Joseph Lee Krupa Singapore

Romy Drysdale Scottsdale, AZ

John Halski New York, NY

Lawrence M. Lau San Francisco, CA

Paul Dyson Houston, TX

Amy Pharr Hefley Houston, TX

Matthew Brad Lawrence Hartford, CT aipla bulletin

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Dana B. Lemoine Long Lake, MN

Paul L. Myers Cambridge, MA

Sarah J. Ring Houston, TX

Shant Tchakerian Costa Mesa, CA

Marina A. Lewis San Francisco, CA

Autumn Nero Madison, WI

Anie K. Roche Los Altos, CA

Denis Ticak Cleveland, OH

Richard C. Litman Manassas, VA

Kenneth L. Ng Glenview, IL

Jason H. Rosenblum Brooklyn, NY

Michael Trinh Mountain View, CA

Peter Ludwig Vestal, NY

Stephen M. Nipper Boise, ID

David Schreiber Briarcliff Manor, NY

G. Glennon Troublefield Roseland, NJ

Michael William Maas Washington, DC

Suzanne K. Nusbaum Los Gatos, CA

Katie J. L. Scott Palo Alto, CA

F. Joseph Ullo Tallahassee, FL

Niall MacLeod Minneapolis, MN

Eric J. Nuss Alexandria, VA

Philip M. Shaw San Francisco, CA

Jay Forrest Utley Dallas, TX

Kumar K. Maheshwari Los Angeles, CA

Jeremy P. Oczek Buffalo, NY

William H. Shreve Irvine, CA

Meghan Anne Van Leeuwen Ithaca, NY

Christopher K. Marlow Tinley Park, IL

Geoffrey D. Oliver Washington, DC

Richard C. Siefert Seattle, WA

Steven Vondran Newport Beach, CA

Thomas D. McClure Huntersville, NC

Samir R. Patel Collierville, TN

Lisa Ann Smith Ada, MI

Alan E. Wagner Milwaukee, WI

Douglas McKay Charlotte, NC

Gregory B. Perleberg Minneapolis, MN

Pankaj Soni Gurgaon, Haryana

Yijia Wang White Plains, NY

Brett McKean Houston, TX

Elizabeth Pham Carrollton, TX

Andrew W. Spangler Longview, TX

Yu-Ching Wang Taipei, PR China

Kelly McKinney Houston, TX

Michael Phelps McLean, VA

Kathryn G. Spelman San Jose, CA

Scott A. Warren New York, NY

Usha C. Menon Houston, TX

Justin E. Pierce Washington, DC

Nicole Stafford Austin, TX

Gregory F. Wesner Seattle, WA

Phillip E. Miller Oakton, VA

Benjamin S. Prebyl Alexandria, VA

Geoffrey T. Staniford San Francisco, CA

Jeffrey DeRoy Wheeler San Francisco, CA

Robert Brian Milligan Los Angeles, CA

Riadh Quadir New York, NY

Michael O. Sturm Des Moines, IA

Nancy C. Wilker Boston, MA

Reza Mirzaie Los Angeles, CA

Elaine M. Ramesh Chicago, IL

Tim Sullivan Austin, TX

Fred Williams Austin, TX

David Scott Moreland Atlanta, GA

William P. Ramey Houston, TX

Uyen Tang Huntington Beach, CA

Bryan Wilson Palo Alto, CA

Nicole Morris Atlanta, GA

Brent Rector Redmond, WA

Chris Tanner Washington, DC

Stephen P. Wiman Los Angeles, CA

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2012 Spring Meeting Issue

Dylan W. Wiseman Sacramento, CA Chui-Kiu Teresa Wong San Jose, CA Stephanie Renee Wood San Francisco, CA Robert G. Woolston Seattle, WA Timothy A. Worrall Denver, CO Rosa Yaghmour Danbury, CT Howard Zaretsky Rochester, NY Guojun Zhou Hillsboro, OR Nerrie Meyer Zohn San Diego, CA ACADEMIC Ki Chan Hong Kong, PR China

San Jose, Costa Rica Adam G.S. Galgut Parklands, Republic of South Africa

Bethesda, MD Irene Kang Alexandria, VA

Irvine, CA Steve Chiang Alexandria, VA

Scott Harrison Derby, United Kingdom

John J. Karasek Arlington, VA

Peir Chu San Jose, CA

Zulfiqar Khan Karachi, Pakistan

Grace Karaffa Obermann Vienna, VA

Michael Curry Phoenix, AZ

Allan F. Kuster Oranjestad, Aruba

Dean Reinhardt Colorado Springs, CO

Robert Czarnecki New York, NY

John Lawrence Birmingham, United Kingdom

Stacia M. Stokes Atlanta, GA

Matthew L. DePreter Chicago, IL

Fiona Elizabeth Legere Toronto, ON, Canada

JUNIOR Makoto Asakura Tokyo, Japan

Tore Thomas DeBella Washington, DC

Sergey Zuykov Moscow, Russia Joao Pereira Da Cruz Lisboa, Portugal Joseph W. Ricigliano Washington, DC James Seadon London, England

Michelle Gross Scottsdale, AZ

Lakshmikumaran Varadachari New Delhi, India

Karen E. Maull State College, PA

Dale Watson Sydney, Australia

Jeremy Nathan Sheff Jamaica, NY

Heather Watts Toronto, ON, Canada

FOREIGN Anthony Bennett Brisbane, Australia

David Williams London, England

Karel Bentata Caracas, Venezuela

Catherine Zheng Hong Kong, PR China

Yuai Astvatsaturov Tinley Park, IL Phillip M. Aurentz Dallas, TX Khurram Awan Palo Alto, CA T. Brian Bell Washington, DC Richard M. Bemben Washington, DC Rachel M. Blunk Chapel Hill, NC Wayne H. Bradley West Chicago, IL Lindsey S. Brazys Elkhart, IN Chase Brill Bethesda, MD

Amalia Berg Trister Toronto, ON, Canada

GOVERNMENT Jeremy Curcuri Bloomfield Hills, MI

Rajiv Bhatnagar Noida, India

Barry A. Edelberg Arlington, VA

Kathleen Cavanagh Richmond, VA

Gabriela Bodden

Rochelle Chodock Fink

Steven PoTsang Chen

2012 Spring Meeting Issue

Stephen Brodsky Concord, NH

Katherine E. Dover Fort Lauderdale, FL Jianguang Du Maplewood, MN Nathan D. Ellefson Minneapolis, MN Jamie Kay Ellsworth Boise, ID Tara Epstein Fort Lauderdale, FL Benjamin E. Evans Irvine, CA Vernon Evans Dallas, TX Michael Fuerch Briarcliff Manor, NY Tomoyoshi Furukawa Alexandria, VA James R. Gambale Encinitas, CA Elizabeth K. Gemmell Greenvile, SC Darlene Ghavimi Austin, TX aipla bulletin

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Richard A Gibbs Washington, DC

Paul Madrid Austin, TX

Rebbecca L. Redelman Edmond, OK

Gene V. Vinokur Cambridge, MA

Julia A. Grimes New York, NY

Ian McFarland Knoxville, TN

Juan Ignacio Rossi Dunkirk, MD

Jeffrey S. Walker Madison, WI

Jeffrey Gritton Austin, TX

Taylor M. Meacham San Jose, CA

Debbie Rowland Tokyo, Japan

Nicholas Weinstock San Diego, CA

Charles Gust Seattle, WA

Joseph M. Mercadante New York, NY

Matthew Russell Canonsburg, PA

Theresa M. Weisenberger Atlanta, GA

Brett Heller Houston, TX

Tiffany Miller San Diego, CA

Daniel Joshua Salinas Los Angeles, CA

Scott Woloson Houston, TX

Ross G. Hicks Bow, NH

Albert Minn Durham, NC

Jesus Jason Sedano Santa Clara, CA

Jeffrey C. Woodworth Salt Lake City, UT

Benjamin Edward Hoopes Boise, ID

Patricia Moss Avon, CT

Elise Selinger Houston, TX

Jennifer Ying Wilmington, DE

Patrick John Hughes New York, NY

Regina Murphy Wilmington, DE

Scott J. Sholder New York, NY

Bridget Jones Sacramento, CA

John P. Murtha Indianapolis, IN

Marina Sigareva Sudbury, MA

PATENT AGENT Brian Burkinshaw Pflugerville, TX

Adam M. Kaufmann Orland Park, IL

Jennifer Nall Austin, TX

Tyson Smith Austin, TX

Martin Kilbane Rocky River, OH

Peter Nigrelli Minneapolis, MN

Scott Stiefel Rockville, MD

Justin Kim Potomac Falls, VA

Christine Norris Washington, DC

Daniel Sun Short Hills, NJ

Shankar Krithivasan Austin, TX

Daniel P. O’Brien Durham, NC

Adam David Swain Washington, DC

Richard F. Kurz New York, NY

Kirk Pastorian Carlsbad, CA

Kelly G. Swartz Melbourne, FL

Albert Lee Yonkers, NY

Lynn Q. Peng Chicago, IL

Scott Tobias Austin, TX

Joshua Hamilton Lee Atlanta, GA

Marsha Pernat Minneapolis, MN

Daniel Townsend Las Vegas, NV

Patrick Lundell San Jose, CA

Shannon Powers Houston, TX

Nicholas R. Transier San Diego, CA

Kevin Mack San Francisco, CA

Jonathan R. Raymond Manchester, NH

Kyle J. Trout Alexandria, VA

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Tiffany A. Fidler Southfield, MI Heather L. Flanagan Austin, TX Elizabeth Gearhart Summit, NJ Yoshinobu Idogawa Washington, DC Philip P. Macnak West Palm Beach, FL Michelle M. McVaney Cleveland, OH Jason Murphy Latham, NY David M. Narkunas Hudson, NH Russell Sorber Oak Park, IL Margaret S. Willis Minneapolis, MN 2012 Spring Meeting Issue

Betty Yu Frederick, MD

Jason M. Nolan Washington, DC

PATENT AGENT JUNIOR Yusuke Arima Washington, DC

Jenny Wagner Springfield, VA

Katherine Buchanan Atlanta, GA Daniel F. Dries Houston, TX Elizabeth A. Epstein Kirkwood, MO Man Shun Vincent Fong Greensboro, NC Robert B. Johnson Indianapolis, IN Robert Joseph Kasten Milford, CT Reena Malhotra Moraga, CA Noor-e-Mobeen Malik Chicago, IL Anthony Patrick Napolitano Mahwah, NJ Ki O Austin, TX Trenton B. Ostler Alexandria, VA Zachary Reinhardt Alpharetta, GA John W. Rooney Epping, NH Brad Schrick Bingen, WA

STUDENT Oluwatoyin Adefila North Carolina Central University School of Law Greensboro, NC Micha Adler University of Southern California School of Law Los Angeles, CA Craig Theodore Ajmo Franklin Pierce Law Center Palm Harbor, FL Todd Robert Aldrich William Mitchell College of Law Minneapolis, MN Juan Diego Alonso Cornell Law School Ithaca, NY Ariel Atkinson Georgetown University Law Center Silver Spring, MD Eric Colin Bachinski Hamline University School of Law Bloomington, MN Maria Baker The Ohio State University College of Law Rocky River, OH Charles J. Ballenger Vermont Law School South Royalton, VT

Lydia J. Young Palo Alto, CA

Monica A. Barrow North Carolina Central University School of Law Durham, NC

USPTO PROFESSIONAL Tara Long Annandale, VA

James Bartholomew Lewis and Clark Law School Tualatin, OR

2012 Spring Meeting Issue

Palash Basu Northwestern University School of Law Del Mar, CA

Patrick James Connolly University of Chicago Law School Chicago, IL

Aaron Baynard Thomas M. Cooley Law School Chicago, IL

Mark Consilvio American University, Washington College of Law Washington, DC

Matthew Bedsole University of Pittsburgh School of Law Pittsburgh, PA Brandon Scott Bludau University of Houston Law Center Victoria, TX Brian Bocker Brooklyn Law School Toronto, ON Steven Braegger Washburn University School of Law American Fork, UT Cheryl Campbell Suffolk University Law School Billerica, MA Elizabeth Capan William Mitchell College of Law Roseville, MN Lazaro Cardenas Rutgers, State University of New Jersey Freehold, NJ Kanny Chen Northwestern University School of Law Taipei, Tiawan Sandy Chiu University of Florida College of Law Gainesville, FL So Yeon Choe University of California at Los Angeles School of Law Los Angeles, CA Daniel R. Chojnowski Wayne State University Law School Newport, MI

Mario Cory Cooper University of Florida College of Law Gainesville, FL Robert W. Current University of Arizona College of Law Tucson, AZ Omar Damluji California Western School of Law Encinitas, CA Sean Damon University of Maryland School of Law Baltimore, MD Jennifer Leslie Davis University of Arkansas Bryant, AR Samantha A. Demory St. Mary’s University of San Antonio School of Law Schertz, TX Jwalant Dholakia Fordham University School of Law New York, NY Kyle Donnelly Washburn University School of Law Lenexa, KS Yimeng Dou University of California Irvine, CA Lauren Dowty University of Florida College of Law Gainesville, FL

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Brandi M. Doyle Southern Methodist University Dallas, TX

Joshua John Galgano University of Iowa College of Law Iowa City, IA

David Dremann University of Illinois College of Law Champaign, IL

Ryan Gentes University of Georgia School of Law Athens, GA

Tyler Droste Indiana University School of Law, Indianapolis Indianapolis, IN Albert Du The Catholic University of America School of Law Falls Church, VA

Michael L. Gibbons Seattle University School of Law Bellevue, WA Elizabeth Glasson Suffolk University Law School Cambridge, MA

Haixia Du George Washington University National Law Center Potomac, MD

Phaik (Janice) L. Goh University of Washington School of Law Seattle, WA

Lynn A. Dudinsky Santa Clara University School of Law San Jose, CA

John Mark Griffin Southwestern University School of Law Los Angles, CA

William Legare Duke Charleston School of Law Charleston, SC

Eric Grote University of Maryland School of Law Baltimore, MD

Dillon Durnford-Geszvain George Mason University School of Law New York, NY Howard Eichenblatt Brooklyn Law School Brooklyn, NY Chi-wei Feng Franklin Pierce Law Center Rockville, MD Jolene Fernandes University of California, Irvine, School of Law Irvine, CA Scott Francis Baylor University School of Law Waco, TX 76â&#x20AC;&#x192;

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Peter P. Handy McGeorge School of Law, University of the Pacific Sacramento, CA Yan Benjamin Hankin New York Law School New York, NY William Hannah University of San Francisco School of Law San Francisco, CA Alton L. Hare George Washington University National Law Center Glen Burnie, MD

Robyn Alise Hicks North Carolina Central University School of Law Durham, NC

Patrick C. Kilgore Boston University School of Law Brookline, MA

Anthony M. Homer University of Pittsburgh School of Law Bethesda, MD

Gina Kim University of Georgia School of Law Alpharetta, GA

Thomas Jonwood Hong George Mason University School of Law Vienna, VA

Min J. Kim University of Illinois College of Law Champaign, IL

Ryan William Hooss Roger Williams University School of Law Bristol, RI Angela Katina Hsieh University of Illinois College of Law Naperville, IL John Johannes University of Wisconsin Madison, WI

Alexander Krueger Harvard University Law School Chapel Hill, NC Daniel Lamb George Washington University National Law Center Fairfax, VA Jiarong Liu Lamiquiz Arizona State University College of Law Phoenix, AZ

Jay Kadiwala Appalachian School of Law Raven, VA

Gabriel Lau University of San Francisco School of Law San Francisco, CA

Paul Kalish Boston College Law School Brighton, MA

Candice Lazar University of Miami School of Law Sunny Isles Beach, FL

James Kannard Stetson University College of Law Tampa, FL

Pia Lestrade Dahms St. Thomas University School of Law Miami, FL

Adam Kawaguchi University of Idaho College of Law Layton, UT Preston Edwards Kent University of Houston Law Center The Woodlands, TX Shannon Kidd The University of Texas School of Law Austin, TX

Timothy Li George Washington University National Law Center Great Neck, NY Christian W. Liedtke Fordham University School of Law New York, NY

2012 Spring Meeting Issue

Benjamin T. Liu Georgetown University Law Center Alexandria, VA

Chandani Patel Golden Gate University School of Law San Francisco, CA

Abood Shebib University of Florida College of Law Gainesville, FL

Kimberly Kay Vines The University of Alabama School of Law Vestavia, AL

Eric Liu Washington University School of Law St. Louis, MO

Ryan Peddle Rutgers, State University of New Jersey of Law Turnersville, NJ

Joel S. Sonnenberg Cleveland State University Law School Medina, OH

Lillian Anne Wallace University of Detroit Mercy School of Law Ottawa, ON

Ude Lu University of Minnesota Law School Roseville, MN

Nicholas Peterka William Mitchell College of Law St. Paul, MN

Sabrina Noel Stubblefield University of Louisville Law School Louisville, KY

Jeffrey T. Weintraub Southwestern University School of Law Rialto, CA

Daniel Tarr University of Pittsburgh School of Law Pittsburgh, PA

Brian D. Welle University of St. Thomas School of Law Minneapolis, MN

Daniel Taylor University of Maine School of Law Kennebunk, ME

Erin Werner University of Houston Law Center Houston, TX

Kenneth M. Thompson New England School of Law Sutton, NH

Nick A. Williford Samford University, Cumberland School of Law Homewood, AL

Atul Mahajan Santa Clara University School of Law Santa Clara, CA Michael J. Malone New England School of Law Reading, MA Matthew Marrone Case Western Reserve University Law School Cleveland, OH Eugene I. Masters Brigham Young University Salt Lake City, UT Shane A. McDougall Seton Hall University School of Law Mahwah, NJ Rayna McKenzie St. John’s University School of Law Jamaica, NY Andrea Oller Western New England College School of Law Hasbrouck Heights, NJ Daniel A. Parrish William Mitchell College of Law Minneapolis, MN

2012 Spring Meeting Issue

Samantha Poznak Florida State University College of Law Palm Beach Gardens, FL Theodore Prekop University of Florida College of Law Gainesville, FL Andrew Felipe Quecan The University of Texas School of Law Austin, TX Stephen Timothy Reed Indiana University School of Law, Indianapolis Plainfield, IN Samantha M. Sannazzaro New York Law School Hoboken, NJ Michael Scarpati Yeshiva University, Benjamin N. Cardozo School of Law New York, NY Brandon Schurter Rutgers, State University of New Jersey School of Law New York, NY Marco Shawki Rutgers, State University of New Jersey School of Law East Brunswick, NJ

Qi Tong University of Texas School of Law Austin, TX Kristin Traina Emory University School of Law Atlanta, GA Vladimir Tsirkin Rutgers, State University of New Jersey School of Law Jersey City, NJ Natalie Turner Western State University College of Law Fullerton, CA Kaitlyn Turo Franklin Pierce Law Center Dalton, MA Jonathan Underwood Cornell Law School Ithaca, NY

Christopher L. Wright University of Maryland School of Law Baltimore, MD Maggie Yang Yeshiva University, Benjamin N. Cardozo School of Law New York, NY Wanli Ye Boston University School of Law Chicago, IL Jamie Yoo Duke University School of Law Durham, NC Laura Zager Harvard University Law School Boston, MA

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Yingying Zeng University of Texas School of Law Austin, TX Eric Zhou University of California Irvine, CA Guang-Yu Zhu Cornell Law School Ithaca, NY

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A Unique New Program!

AIPLA 2013 Mid-Winter Institute IP is THE Business Asset

January 30–February 2, 2013 • Tampa Marriott Waterside Hotel & Marina • Tampa, FL

IP is THE business asset of the 21st century and it is critical that lawyers and executives clearly communicate about IP and how it advances their goals and strategy. To spark this dialogue, the 2013 MidWinter Institute will introduce a new and unique format to bring together IP attorneys and business executives to explore the importance of IP in light of the vast changes in our economy and recent legal developments, including the America Invents Act.

In a dynamic and highly interactive new format, attorneys will hear first-hand from business leaders about the strategic value of IP to their businesses, and their perspectives on IP and the IP system, courts and lawyers in general. Business leaders will gain insight on the value of IP and the importance of incorporating IP into their business strategy. The Institute will focus on collaboration and networking opportunities for lawyers and executives.

Session Topics: • • • • • • •

AIA Intensive Training for IP Practitioners How IP Assets Drive Value for Business Leaders Why Every Business Must Focus on IP What Lawyers Need to Understand about How IP fits in Business Strategy Special tracks on IP in Entertainment, High Tech, Biotech, and Chemical How the IP World is Changing Bridging the IP Communication Gap between Executives and Lawyers

Invite a client or colleague to this innovative program– we will offer special guest pricing! Visit www.aipla.org for more information.