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BULLETIN American Intellectual Property Law A ssociation

2009 Mid-Winter Institute Issue Washington, DC


in this issue...

President’s Page....................................................................................................................................................3 2009 Robert C. Watson Competition Information....................................................................................................7 Association Activities ..........................................................................................................................................9 Membership Applications........................................................................................................................................9 2009 AIPLA Board of Directors’ Meetings.............................................................................................................19 News of Members ................................................................................................................................................20 Future Meetings Calendar.....................................................................................................................................22 C.L.E Update ........................................................................................................................................................24 Classified Ads ................................................................................................................................................. 26 Copyright Office Affairs..........................................................................................................................................28 Classified Ads.......................................................................................................................................................30 Thank You to Sponsors.........................................................................................................................................32 2009 Mid-Winter Institute....................................................................................................................................34 Photo Pages..........................................................................................................................................................34

AIPLA

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

Committee Reports: Anti-Counterfeiting & Anti-Piracy...........................................................................................................................45 Trademark Law......................................................................................................................................................45 Trademark Litigation..............................................................................................................................................46 Trademark-Relations with the USPTO..................................................................................................................47 Trademark Treaties and International Law............................................................................................................47 Trademark Internet................................................................................................................................................47 Amicus...................................................................................................................................................................48 Mentoring..............................................................................................................................................................51 Education..............................................................................................................................................................52 IP Law Associations...............................................................................................................................................53 Membership...........................................................................................................................................................54 Online Programs...................................................................................................................................................54 IP Practice in Europe.............................................................................................................................................57 IP Practice in Japan...............................................................................................................................................58 IP Practice in Latin America...................................................................................................................................59 International Education..........................................................................................................................................59 International and Foreign Law...............................................................................................................................60 Chemical Practice........................................................................................................................................... 60 Patent Cooperation Treaty Issues.........................................................................................................................61 Corporate Practice................................................................................................................................................61 Copyright Law.......................................................................................................................................................61 Women in IP Law............................................................................................................................................ 62 Diversity in IP Law.................................................................................................................................................63 Electronic & Computer Law............................................................................................................................. 64 Emerging Technologies................................................................................................................................... 65 Patent Agents.................................................................................................................................................. 66 Patent-Relations with the USPTO................................................................................................................... 67 Young Lawyers................................................................................................................................................ 67 Law Students................................................................................................................................................... 68 Alternative Dispute Resolution........................................................................................................................ 69 Biotechnology.................................................................................................................................................. 69 Patent Law...................................................................................................................................................... 71 Interference..................................................................................................................................................... 71 Professional Programs.................................................................................................................................... 73 Law Practice Management.............................................................................................................................. 74 Licensing & Management of IP Assets............................................................................................................ 74 Patent Litigation............................................................................................................................................... 77 Public Education.............................................................................................................................................. 78 International Trade Commission...................................................................................................................... 80 Special Committee on the FDA....................................................................................................................... 81 Special Committee on Legislation................................................................................................................... 81

Classified Ads.......................................................................................................................................................82 AIPLA Career Center Flyer....................................................................................................................................84 Display Ads...................................................................................................................................................... 85 AIPLA Corporate Patent Treaty Seminar Flyer................................................................................................ 96


BULLETIN OFFICERS 2008 – 2009 Teresa Stanek Rea..................................................................................................................................................... President 1001 Pennsylvania Avenue NW, Washington, DC 20004 Alan J. Kasper. .................................................................................................................................................President-Elect 2100 Pennsylvania Avenue NW, Washington, DC 20037 David W. Hill............................................................................................................................................ First Vice-President 11955 Freedom Dr., Two Freedom Square, Reston, VA 20190-5675 William G. Barber................................................................................................................................ Second Vice-President 600 Congress Avenue, Suite 2120, Austin, TX 78701 James Pooley.....................................................................................................................................Immediate Past President 755 Page Mill Road, Palo Alto, CA 94304 Jonathan W. Richards................................................................................................................................................ Secretary 1000 Eagle Gate Tower, 60 East South Temple, Salt Lake City, UT 84111 Kenneth N. Nigon. ..................................................................................................................................................... Treasurer P.O. Box 980, Valley Forge, PA 19482 Q. Todd Dickinson.......................................................................................................................................Executive Director 241 18th Street, South, Suite 700, Arlington, VA 22202

Board of Directors (Terms Expire October 2009) Gordon T. Arnold .................................................................................2401 Fountain View, Suite 630, Houston, TX 77057 Joseph S. Cianfrani . .....................................................................................2040 Main Street, 14th Floor, Irvine, CA 92614 John T. Johnson ........................................ 153 East 53rd Street, CitiGroup Center, 52nd Floor, New York, NY 10022-4611 David J. Kappos . ........................................................................................................... North Castle Dr., Armonk, NY 10504 (Terms Expire October 2010) Pamela A. Crocker . ................................................................................................... 343 State Street, Rochester, NY 14650 Denise DeFranco......................................................................... 55 Cambridge Parkway, Suite 700, Cambridge, MA 02142 Amy E. Hamilton.......................................................................... Lilly Corporate Center, Drop Code 1104, Indianapolis, IN Anthony M. Zupcic .....................................................................................30 Rockefeller Plaza, New York, NY 10112-380 (Terms Expire October 2011) Robert W. Clarida.......................................................................1133 Avenue of the Americas, New York, NY 10036-6799 Kimberly S. Jordahl. ............................................................................ Post Office Box 59, Marine on St. Croix, MN 55047 Naomi Abe Voegtli.............................................................................................3410 Hillview Avenue, Palo Alto, CA 94304 Mark L. Whitaker. ........................................................................ 1299 Pennsylvania Avenue, NW, Washington, DC 20004

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president’s page by: Teresa Stanek Rea, AIPLA President

M

y second report to you as AIPLA President requires a different tone than the first. The serious tailspin of the economy has all of us feeling apprehensive and cautious, but it has also opened our eyes and stirred a determination to bring our affairs under control. While AIPLA is not unaffected, I can assure you that the Association is on firm ground and that its extraordinary education and advocacy efforts continue. ADVOCACY Patent Reform: Last year at this time, we thought there was a chance that patent reform would get to the Senate floor following House passage, but we were disappointed. Our focus now is on the new compromise version of the patent reform legislation approved by the Senate Judiciary Committee. While the final outcome remains uncertain until the the bill clears the whole Senate and the whole House, we are pleased with the version that has emerged from the Committee. In addition to retaining essential provisions on first-inventor-to-file, willful infringement, and thirdparty submission of prior art, the compromise bill’s resolution of the extremely controversial issues of damages, post-grant review, and venue is very close to longstanding AIPLA positions on those matters. Our efforts in support of a pilot program to encourage the assignment of patent cases to experienced district court judges bore fruit in March 2009 with the House passage of H.R. 628. This important bill has received favorable reviews and is incorporated into the general patent reform legislation approved by the Senate Judiciary Committee. Unfortunately, the patent reform bill approved by the Senate Judiciary Committee still lacks a provision that ensures reliable and adequate funding of the U.S. Patent and Trademark Office. On the other hand, it was a positive sign that Congress once again enacted an annual USPTO appropriations bill which gives the agency to complete access to its fee revenue for the fiscal year. We continue to work for a permanent anti-diversion provision that will bring stability and predictability to USPTO management by allowing it to rely on funding for more than one year at a time. As for the executive branch, we had the opportunity at the beginning of the year to meet with members of the Obama transition team and to convey our desire to serve as a partner in making improvements to all aspects of intellectual property law. In that spirit, we followed up with a letter to President Obama, expressing those same sentiments and outlining our views on leadership and funding at the USPTO, the continuation and claiming practice rulemaking, patent reform, and judicial salaries and appointments. In the Courts: AIPLA’s advocacy in the judiciary remains unabated. The most recent development was the Federal Circuit’s decision in Tafas v. Dudas. The Association has been advocating on behalf

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of its members in this case since the district court filing. We resisted the USPTO’s rulemaking on claiming and continuation practice from the beginning, primarily focusing on the unfairness of the retroactive application of those rules. The Federal Circuit agreed with us and found the continuation rules inconsistent with the Patent Act, but did, however, decline to find the claiming rules beyond the agency’s statutory authority to regulate proceedings in the Office. Significantly, the case has been remanded on certain undecided issues, including retroactivity; whether Supreme Court review is sought remains to be seen. In addition to our involvement in the Tafas case, we joined the Supreme Court challenge to the en banc Federal Circuit’s “machine or transformation” requirement in Bilski for determining patent eligibility for method claims; we filed in Cardiac Pacemakers Inc., to argue to a Federal Circuit panel (now before the en banc court) that 35 U.S.C. §271(f) does not apply to process claims; and in Prometheus Laboratories, Inc., we argued to a Federal Circuit panel that the district court improperly found a claimed method for treating Crohn’s disease failed to satisfy 35 U.S.C. §101 for patent eligibility. With all of this, there still remains on the committee’s plate cases involving collateral estoppel and claim construction, copyright registration and settlements, with the issues of damages and inequitable conduct waiting in the wings. AIPLA has ramped up its advocacy in the courts and we thank the Amicus Committee for rising to the challenge. At the Federal Trade Commission: On another recent occasion, I represented AIPLA at an FTC hearing entitled “The Evolving IP Marketplace,” which considered the extent to which the patent system adequately fulfills its notice function. The focus of the hearing was on whether various patent law doctrines give competing firms working with innovative technologies clear and reliable information on the existence and scope of patent rights that could cover those technologies. At the USPTO: As part of the search for improved patenting procedures, the USPTO held a roundtable discussion of deferred examination, and Executive Director Q. Todd Dickinson attended to our position that, while we have opposed deferred examination in the past, we are open to reconsider the matter, particularly if certain concerns were addressed. The discussion revealed the potential benefits of such a process for the PTO, but also highlighted the uncertainties that would result for competitors trying to decide how to commercialize under a cloud of unexamined patent applications. At the Copyright Office: Finally, AIPLA last February offered comments to the Copyright Office on the occasion of its triennial report on the exemptions available for copyright users adversely affected by the anti-circumvention provisions of the Digital Millennium Copyright Act. The comments acknowledged the need for some exemptions and questioned the need for others, generally advocating a narrow application of statutory provisions to the classes of copyrighted works. INTERNATIONAL ACTIVITIES AIPLA continues to be a player on the international stage as well. With efforts spearheaded by the Antitrust Committee, AIPLA in January 2009 submitted comments to the European Commission on its 4 

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Preliminary Report on competition in the pharmaceutical industry. In March of 2009, we endorsed a WIPO Standing Committee on Patents undertaking to study the question of privilege for professional intellectual property advice. More generally, I represented AIPLA in Geneva at a recent WIPO meeting on the Patent Cooperation Treaty. In addition, we have maintained our strong relationship with sister organizations in Japan and Australia at recent meetings with the Japanese Patent Office, the Japanese Intellectual Property Association, the Japanese Trademark Association, the Japanese Patent Attorneys Association, and the Institute of Patent and Trademark Attorneys of Australia. These activities reaffirmed my conviction that AIPLA remains an important player on the international stage of intellectual property law. COMMITTEE ACTION Special Committees: I recently formed, under the talented leadership of Sharon Israel and Rick Nydegger, a Special Committee on Legislation. The value of that group became quickly apparent, and AIPLA’s participation in the patent reform process has greatly benefited from their assistance. The availability of a cadre of experienced practitioners to provide guidance on the many substantive issues raised in this process is essential to maintaining AIPLA’s reputation for providing thoughtful and objective comments on the questions of the day. The newly created Special Committee on the FDA also was quickly put to work, preparing draft comments for the Board to submit on the Food and Drug Administration’s implementation of certain provisions of the Q1 Program Supplemental Funding Act. This Act concerns old antibiotics and addresses which sponsors of new drug applications (NDAs) must submit patent information under the Q1 Act, and the comments addressed questions on the applicability of particular provisions of the Hatch-Waxman Act. This type of specialized focus on matters of intense importance to large industries is precisely the role envisioned for this special committee. More recently, the ever expanding scope of IP concerns has given rise to the new Special Committee on Standards and Open Source, co-chaired by Michele Herman and Doug Luftman. This committee will track and untangle the complex issues arising out of the IP sharing and collaboration that are inherent in the development of standards and open source software. Education and Networking: Committee activites continue to be a source of valuable education and networking. This is particularly evident from the prolific output of the Antitrust Committee in its “Antitrust News” and the many postings on its committee page of the AIPLA web site. It is also evident from the repeat success of the multi-city dinner event in February, sponsored by the Women in IP Committee. Once again the Women in IP Committee produced an event, held in 25 cities across the nation, that provided female intellectual property law attorneys with an opportunity to meet with other women for an evening of mentoring, networking, and education. 2009 Report of the Economic Survey: The data collection for the 2009 Survey Report is complete and we will be bringing you the survey in the coming months. This ever-popular work, prepared under the direction of the Law Practice Management Committee, continues to be cited regularly in the news media and relied upon in private and official documents. EDUCATION In-person Programs: The 2009 Mid-Winter Institute was a great success. The program topics covered the unprecedented challenges of the global economic downturn, the increased challenges of IP procurement and enforcement, and barriers to entry in foreign markets. The educational sessions 2009 mid-winter institute issue

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president’s page (continued)

offered insights of outside counsel experts from around the world and invaluable advice from inhouse corporate counsel. In addition to the comprehensive educational tracks, the occasion featured outstanding committee sessions and valuable networking opportunities. In May, we will host the Spring Meeting at the Hotel del Coronado in San Diego. The program includes best practices tips for patent litigation, for practicing IP law in the new economy, and for avoiding pitfalls in prosecution and litigation. We are also looking forward to luncheon presentations from District Judge Marilyn Huff and Donald J. Rosenberg of Qualcomm, Inc. In addition, Chief Judge Paul Michel will join a panel to talk about claim construction and damages apportionment. AIPLA again joined with IPO and the ABA-IPL Section to sponsor Design Day on April 6 at the USPTO, and we will sponsor the first Trademark Bootcamp on June 17, 2009. In addition, we will continue offering our successful Legal Secretaries and Administrator’s conference in June and November, as well as the PCT Seminar in July and the Patent Prosecution Bootcamp in August. Internet Programs: AIPLA continues to bring you the highest quality CLE available online. Since the beginning of 2009 we’ve produced four live online CLE programs, including a presentation from the USPTO’s Director of Enforcement and Discipline on practicing before the USPTO in today’s market. The expectation is that we will offer at least one live webinar per month throughout 2009. To expand members services and provide career and practice management guidance to our members, we have also launched an e-learning series. We conducted two programs so far this year, and plan to continue offering these free programs throughout 2009. More than 500 members have taken advantage of these programs, and we hope to serve even more. Web Streaming: Finally, after a successful pilot program at the 2009 Mid-Winter Institute, we are proud to announce that we will incorporate live web streaming of our stated meetings. Go to www.legalspan. com/aipla/webcasts.asp for more information subscribing to the 2009 Spring Meeting webcast. The range of activities just reviewed is both daunting and inspiring, especially in the current economic climate. It again reaffirms my belief that AIPLA has no equal, even in difficult times, and that we can all take pride in our contribution to quality of IP legal practice and to the dependability of this organization.

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AIPLA Presents:

2009 Robert C. Watson Competition Award:

$2000

Submission Deadline:

June 30, 2009

Award will be presented Friday, October 16, 2009 during the AIPLA Luncheon in Washington, DC. Author of best article on a subject relating to the protection of intellectual property written or published between July 1, 2008 and June 30, 2009.

To be eligible for consideration, the article must have Judges will consider the merit of the article as a been written solely by a student or students either in contribution to the knowledge respecting intellectual full-time attendance at a law school (day or evening) property and the extent to which it displays original or prepared in connection with a law school course. and creative thought or information not previously The article must be submitted to the American written or published by the author prior to July 1, Intellectual Property Law Association on or before 2008. June 30, 2009. Papers should be approximately the equivalent of 10 law review pages, including Reasonable expenses will be reimbursed to the footnotes (30–40 pages typed copy). Submission author of the winning paper to travel to Washington, of 20 copies is required. Submission must include DC to receive the Watson Award on October 16, the submitter’s name, current address, current 2009. Submit articles to: telephone number, and employment information, if applicable.

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

For More Information, Visit www.aipla.org 2009 mid-winter institute issue

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2009 mid-winter institute issue 1/23/09 3:12:32 PM


Membership

association activities

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

REGULAR Robert Anthony Ambrose Duluth, GA Bryan Anderson San Francisco, CA Brian C. Anscomb New York, NY Ahab Ayoub San Antonio, TX Stephen L. Baker Raritan, NJ Gary Oliver Bennett New York, NY Karen Berry New York, NY Patrick Bible Portland, OR Joseph Bird, III Birmingham, AL George Blosser St. Louis, MO Kenneth Burraston Salt Lake City, UT Ryan C. Cady Washington, DC

2009 mid-winter institute issue

Donald M. Carley Bloomington, IL

James DeCamp Boston, MA

Michelle Freeman Irving, TX

Catherine A. Cavella Doylestown, PA

Mary Catherine DiNunzio New York, NY

Gregory Glover Washington, DC

Crystal Jui-Yuan Chen Taipei, TAIWAN

Gerald Paul Dodson Menlo Park, CA

Sandra L. Godsey San Jose, CA

Robert D. Chesler Roseland, NJ

W. Charles Ehlers Cincinnati, OH

Michael D. Goggans Meridian, MS

Steve Yong-Soo Cho Mukilteo, WA

Kimberly Elkjer Dallas, TX

Francie Gorowitz Los Angeles, CA

Paul Clark Wellesley, MA

Brian Erickson Austin, TX

Michael E. Hall Fairfax, VA

Crystina Coats San Diego, CA

Grant Fairbairn Minneapolis, MN

Laura A. Handley Austin, TX

J.P. Cody Las Vegas, NV

Russell Farr Phoenix, AZ

Stephen Hankins San Francisco, CA

Benjamin Cotton Phoenix, AZ

Ian Feinberg Palo Alto, CA

Salim A. Hasan Chicago, IL

Katheryn E. Cox Davenport, IA

John Kenneth Felter Boston, MA

Averie Hason Branchburg, NJ

Andrea L. D’Ambra Philadelphia, PA

Karl Fink Chicago, IL

E. Rico Hernandez McLean, VA

Jason T. Daniel Alexandria, VA

Clifford E. Ford Carlsbad, CA

Donald Hill, Jr. Charlotte, NC

Jason W. Deats Austin, TX

Jeremy S. Forest Palo Alto, CA

Steven Hirsch San Francisco, CA aipla bulletin

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Robert Horowitz New York, NY

Geoffrey Lin Shanghai, CHINA

Susan Pitchford Portland, OR

Steven Stern New York, NY

Geoffrey M. Howard San Francisco, CA

Valerie E. Looper Columbia, MD

Blaire Postman Alexandria, VA

Michael A. Tomasulo Los Angeles, CA

Monika J. Hussell Charleston, WV

Paul R. Lucchese Sudbury, MA

Elizabeth E. Powers Los Gatos, CA

Mark Treitel Los Angeles, CA

William A. Jeckle Spokane, WA

Edward Marshall Austin, TX

Lisa Primerano Buffalo, NY

Mauricio A. Uribe Seattle, WA

Reem F. Jishi Madison, NJ

Mary B. Matterer Wilmington, DE

Thomas E. Vanderbloemen Greenville, SC

Jason W. Johnston Greenville, SC

Julie Matthews Chicago, IL

Mohammad Sharique Rahman Columbia, MD

Karen Kaiser Bridgewater, NJ

Kathleen Milsark Philadelphia, PA

Andrew B. Karp Chicago, IL

Erin C. Ming San Jose, CA

Kurt Karst Washington, DC

David G. Moore Denton, TX

Michael O. Kassak Cherry Hill, NJ

Alan Nemes St. Louis, MO

John Kinton San Diego, CA

Edward F. O’Connor Irvine, CA

Eric D. Kirsch New York, NY

Patrick O’Connor Miami, FL

Louis Knobbe Santa Ana, CA

Gilad Ohana Sunnyvale, CA

Alexander Koff Baltimore, MD

Maria Luisa Palmese New York, NY

Brian D. Ledahl Los Angeles, CA

John P. Passarelli Omaha, NE

Karen Leisten Princeton, NJ

David M. Perry Philadelphia, PA

William Lenz Chicago, IL

Andy Pho Santa Clara, CA

Douglas C. Limbach San Mateo, CA

James A. Pinto Denver, CO

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Gajan Retnasaba Irving, TX Kara Ries Shoreview, MN Edward Robinson Fallbrook, CA Peter Roeser Chicago, IL Carol Romej Bloomfield Hills, MI Joseph Dominic Rossi Malvern, PA Giovanni Ruscitti Boulder, CO Paul F. Rusyn Bellevue, WA Kenneth A. Seaman Charlotte, NC Daniel H. Shulman Lake Forest, IL Brian D. Siff New York, NY Matthew Smith Washington, DC

Alberta A. Vitale Madison, CT Mialeeka C. Williams-Bibbs Atlanta, GA Ashley D. Wilson Duncan, SC Richard Woldin Philadelphia, PA Brendan G. Woodard New York, NY Johnathan Wynn Arlington Heights, IL ACADEMIC MEMBERS Paul D. Callister Kansas City, MO Martin Ogbede-Nwachukwu Kent, WA Andrew A. Schwartz Boulder, CO Brenda Simon Stanford, CA FOREIGN Ritika Ahuja New Delhi, INDIA 2009 mid-winter institute issue


Katherine Cameron London, UNITED KINGDOM

Eduardo Silva Arlington, VA

David Almeling San Francisco, CA

Emmanuel Coffy Shrewsbury, NJ

Rahul Chaudhry Gurgaon, INDIA

Mikael Sollerhed Lund, SWEDEN

Richard T. Armstrong Boston, MA

Jason H. Conway Saint Louis, MO

Armand Ciamala-Kanyinda Kinshasa/Gombe, CONGO

Andrea Tobos Mateus Bogata, COLOMBIA

Isaac S. Ashkenazi New York, NY

Thomas J. Corbett Minneapolis, MN

Simon Cooper Nottingham, UNITED KINGDOM

Criton Tornaritis Nicosia, CYPRUS

Lawrence Baratta Charlotte, NC

Brie A. Crawford Algonquin, IL

Andrew Docherty Glasgow, SCOTLAND

Kimberlee Weatherall St Lucia, Queensland, AUSTRALIA

Tenley I. Beals Providence, RI

Brenda L. Danek Washington, DC

Anna Duffus London, UNITED KINGDOM

Robin Zhao Beijing, CHINA

Jason Benedict Troy, MI

William C. Devine, II Las Vegas, NV

Per Ericsson Loddekopinge, SWEDEN

GOVERNMENT

Erin Bowles Southfield, MI

Diana DiBerardino Pittsburgh, PA

Richard Howson London, UNITED KINGDOM

Randy P. Boyer Alexandria, VA

Edward L. Brant Philadelphia, PA

Nicholas J. DiCeglie, Jr. New York, NY

Björn Joachim Hamburg, GERMANY

Bradley Garris Arlington, VA

James Burns, III Cary, NC

Cynthia A. Dixon Santa Monica, CA

Andras Kupecz Amsterdam, NETHERLANDS

Christopher R. Nalevanko Washington, DC

Nathan Calvert Austin, TX

Jonathan Doloff Princeton, NJ

Peter Lewis Vancouver, BC, CANADA

Michael Norris McAllen, TX

Jonathan D. Carpenter Minneapolis, MN

Michael Dreznes Del Mar, CA

Nitin Masilamani Dew Delhi, INDIA

Lynda Oswald Ann Arbor, MI

David Hiu-Fung Chan Irvine, CA

Joshua L. Emory Irvine, CA

Patrick Mirandah Klongtoey, Klongtoey, Bangkok, THAILAND

Kevin M. Rosenbaum Alexandria, VA

Dean Cheley Los Angeles, CA

Jonathan L. Falker Washington, DC

Cathy Chen McLean, VA

Tao Feng Mountain View, CA

Shengfeng Chen San Francisco, CA

Anna B. Folgers Chicago, IL

David Choi Irvine, CA

Darrell Ford Southfield, MI

Marin Cionca Orange, CA

Matthew Frisbee McLean, VA

Adam J. Citrin Altanta, GA

Erik Fuehrer Palo Alto, CA

Dev Robinson New Delhi, INDIA RIkard Roos Helsingborg, SWEDEN Yoshimi Saigoh Tokyo, JAPAN Michael Schneider Munich, GERMANY

2009 mid-winter institute issue

Maria Sekul Alexandria, VA JUNIOR Lisa Adelson Washington, DC Christopher David Agnew Boston, MA Ryan Alley Reston, VA

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Gorka Garcia Washington, DC

Anthony J. Kefalos Park Ridge, NJ

Brent D. Martin Hartville, OH

Nicole Pannoni Santa Clara, CA

Stephen Gardner Arlington, VA

Kelley Keller Alexandria, VA

Mark P. Mathison Walnut Creek, CA

Seunghee Park Herndon, VA

Thomas Gillespie Rockville, MD

Jeremiah J. Kelly Baltimore, MD

Wyatt P. McConnell Jamaica Plain, MA

Aseet Patel Chicago, IL

John G. Graves, II Atlanta, GA

Sara N. Kerrane Irvine, CA

James McPherson Rochester Hills, MI

Matthew Phillips Fairfax, VA

Ronald D. Griffith, Jr. Ypsilanti, MI

Lawrence B. Kong Palo Alto, CA

Michael Meehan Washington, DC

Christopher Ponder Houston, TX

Joe C. Hao Walnut Creek, CA

Craig M. Kuchi Chicago, IL

Yvette Meldrum Franklin, TN

Andrew Pouzeshi Denver, CO

Jennifer Hayes Palo Alto, CA

Nicholas Kuhlmann Maplewood, MN

Jennifer Ming San Francisco, CA

Clark E. Proffitt Tucson, AZ

Nicholas Heesters, Jr. Hockessin, DE

Jeffrey M. Kuhn Oakland, CA

Matthew F. Mottice Dublin, OH

George Raynal Silver Spring, MD

Corley Hines Dallas, TX

Amy Kuo Washington, DC

Marcia Belinda Moulon New Ross, IRELAND

Aaron Reed Kansas City, MO

Christine Hlavka Washington, DC

Pou-I Lee New York, NY

Laura L. Myeres Minneapolis, MN

Joseph E. Reed San Diego, CA

Bach V. Hoang Washington, DC

Richard T. Lee Chicago, IL

Nicholas Myers Irvine, CA

Robert Reid Reno, NV

Jamilla N. Holomon Katy, TX

Lisa Jie Li San Francisco, CA

Tiffany Nichols Washington, DC

Elizabeth Reilly Tacoma, WA

Barry Horwitz Chicago, IL

Jake Linford Chicago, IL

Reece W. Nienstadt Washington, DC

Michael George Rodriguez Dallas, TX

Jianjie (Jamie) Hu Jersey City, NJ

Jill Link Des Moines, IA

Ravi K. Nigam Ann Arbor, MI

Ashton B. Rufener Milwaukee, WI

Imran Jaswal Rockaway Beach, NY

Wansheng Jerry Liu Lawrenceville, NJ

Victor S. Nolan Cleveland, OH

Ryan T. Santurri Orlando, FL

Travis Jensen Palo Alto, CA

Christopher Ma Vienna, VA

Amos Olubunmi Houston, TX

Colleen Schaller Ft. Washington, PA

Laba Karki Washington, DC

Ryan Marsh Glendale, AZ

Sun Y. Pae Rockford, IL

Joel Z. Scharz Las Vegas, NV

Amol Kavathekar Minneapolis, MN

Stuart B. Martens Lincoln, NE

Justin Pan Vienna, VA

Kelley A. Schnieders Kansas City, MO

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Daniel Scolnick Berwyn, PA

James Tario San Francisco, CA

Assaf Zilbering Camp Hill, PA

Brian E. Hearn Fredericksburg, VA

Katie J. L. Scott Cupertino, CA

Alexanader Tsarouhas Cleveland, OH

Claire Zopf Concord, NH

Joseph Jones Putnam Valley, NY

Bart Seeley Riverside, CA

Edward L. Tulin New York, NY

John A. Zurawski Berwyn, PA

Lincoln Khan Alexandria, VA

Beth Shaw Reston, VA

Imran Vakil Anaheim, CA

PATENT AGENT

Monique Kierlin-Duncan Decatur, GA

Ari Sherwin University Hts, OH

Pamela Van Dort Washington, DC

Anne Carlson Portland, OR

Colin Lebens Portland, OR

Lorenz Siddiqi Irvine, CA

Amanda L. Vaught New York, NY

Marina Heusch Littleton, CO

Jing Li Bethesda, MD

Shannon L. Silversmith Topeka, KS

Sam Wakefield Layton, UT

Leif Sloan Seattle, WA

Lissi Marquis Dunkirk, MD

Jennifer Simpson Boca Raton, FL

Leita Walker Minneapolis, MN

PATENT AGENT JUNIOR

Kelly McGlashen Belmont, MA

Patricia Smith Akron, OH

Marlan D. Walker Irvine, CA

Daniel P. Archibald Washington, DC

Usman A. Mughal Beaverton, OR

Eric L. Smith San Jose, CA

George Wang Washington, DC

Jamison T. Arimoto Madison, WI

Lian Ouyang Cambridge, MA

Peter K. Sollins Boston, MA

Chad J. Wickman Minneapolis, MN

David F. Bassett Macedon, NY

Jillian Pesin-Fulop San Francisco, CA

Elizabeth Stanley Dallas, TX

Brock F. Wilson Irvine, CA

Brandon S. Bludau Washington, DC

Brigitte Phan Irvine, CA

Sara Stephenson Dekalb, IL

Matthew Winterroth Newark, NJ

Brian Burkinshaw Pflugerville, TX

Darren Smith Houston, TX

Hayley Stevens Seattle, WA

Nicole Woods Branchburg, NJ

Marta Cavero-Tomas Wayland, MA

Richard Stamper Terre Haute, IN

John C. Stull Washington, DC

Laurie Young Minneapolis, MN

Andrew M. Deschere Arlington, VA

Kelly Sullivan Somerset, NJ

Andre Sulmers Brooklyn, NY

Alla Zagrebelsky Riverview, FL

Christopher G. Devry Meno Park, CA

Corrie L. Vaa Bellevue, WA

Mario Tabone Plymouth, MI

Jihong Zang New York, NY

Berkan K. Endres Saint Paul, MN

Denise H. Wong San Francisco, CA

Jie Tan McKinney, TX

Jianping Zhang Carrollton, TX

Paul Feng Minneapolis, MN

Xiaobin You Washington, DC

2009 mid-winter institute issue

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Jiaxiao Zhang Alexandria, VA STUDENT Mark Abellera Chicago, IL John Marshall Law School Paul D. Ajibogun Houston, TX South Texas College of Law Michael Albaneze Mount Vernon, NH Franklin Pierce Law Center Kendria Alt Boulder, CO University of Colorado School of Law Kristin Ballobin Lawrence, KS University of Kansas School of Law Ellen Bass Tiburon, CA University of San Francisco School of Law Gregory D. Behringer Ada, OH Ohio Northern University Law School Markus Bergauer New York, NY Fordham University Law School Jennifer Best-Martin San Diego, CA University of San Diego School of Law Melissa Beyer Eugene, OR University of Oregon School of Law

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Trenton Boaldin Oklahoma City, OK Florida Coastal School of Law

Kellyann Creelman San Diego, CA California Western School of Law

Elizabeth A. Brown Stoneham, MA Georgetown University Law Center

Deborah Cwalina Pinole, CA University of California Hastings College of Law

Carl Bryan Yellow Springs, OH University of Dayton School of Law

Qian Dai San Mateo, CA Santa Clara University School of Law

Scott Burkette West Sacramento, CA University of California at Davis School of Law

Amanie Daou Durham, NC North Carolina Central University School of Law

Erreka T. Campbell Plano, TX Southern Methodist University Law School

Akinwunmi Doherty Little Rock, AR University of Arkansas at Little Rock, School of Law

Matthew Carlson Quincy, MA Suffolk University Law School

George Dolina FallsChurch, VA George Washington University Law School

Justin Chang Santa Clara, CA Santa Clara University School of Law Reagan Charney Atlanta, GA Georgia State University College of Law Ruoying Chen Duluth, GA Gerogia State University Law School

William Dukes Oxford, MS University of Mississippi School of Law Brian Eller Davis, CA University of California at Davis School of Law Kyle John Emkes Savoy, IL Ave Maria School of Law

Nezihe Colak East Lansing, MI Thomas M. Cooley Law School

Briana Erickson Boston, MA Suffolk University Law School

Ian Coyle Washington, DC George Washington University Law School

Mary Eshaghian Los Angeles, CA Thomas Jefferson School of Law

Dorine Etonga Lansing, MI Thomas M. Cooley Law School Daniel Evans Atlanta, GA Georgia State University College of Law Matt Ferry Studio City, CA University of California at Los Angeles, School of Law Gregory Finch Topeka, KS Washburn University School of Law Jennifer Foy Carlisle, PA Pennsylvania State University, Dickinson School of Law Tiffany Garland Baton Rouge, LA Louisiana State University Law Center William L. Gavatt Oxford, MS University of Mississippi Law School Sammetria Goodson Philadelphia, PA Temple University School of Law Adriane Grace Washington, DC American University, Washington College of Law Meagan Guerzon McLean, VA George Washington University Law School Ingo Hardt Coronado, CA University of San Diego School of Law 2009 mid-winter institute issue


Jonathan A. Hareid Inver Grove Heights, MN University of Minnesota Law School

Nicole Janovick Savoy, IL University of Illinois College of Law

Mary Hargett St. Louis, MO Saint Louis University School of Law

Katherine D. Jochim San Diego, CA University of San Diego Law School

Jennifer Hearne Moscow, ID University of Idaho College of Law Damon Hickman Weatherford, TX Texas Wesleyan University School of Law John Hillert Tallahassee, FL Florida State University College of Law Michael Hope, II Houston, TX Texas Southern University, Thurgood Marshall School of Law Karen Horiuchi Sacramento, CA University of the Pacific, McGeorge School of Law Eric Hsu Cupertino, CA University of California at Davis School of Law Natalie Hudson Houston, TX University of Houston Law Center Thomas D. Huycke Oakton, VA West Virginia University Law School

2009 mid-winter institute issue

Nishla Keiser Cambridge, MA Suffolk University Law School

Chang Sik Lim Ithaca, NY Cornell Law School

Yu Kim-Reynolds Wadsworth, OH University of Akron, C. Blake McDowell Law Center

Erica Lin Glenview, IL Indiana University School of Law-Bloomington

John Clifford Johnston Mount Pleasant, SC Charleston School of Law

John Kirkpatrick Arlington, VA The Catholic University of America School of Law

Karen Lo Seattle, WA Seattle University School of Law

Eric Andrew Jones Lincoln, NE University of Nebraska Law School

Richard S. Kitei Allentown, PA Temple University Law School

J. Brian Loker Chicago, IL DePaul University College of Law

Aimee Joshua Ellicott City, MD University of Baltimore School of Law

Nicholas Kliewer Houston, TX University of Houston Law Center

Adel J. Lomibao Easton, PA Albany Law School

Jamie Joshua Ellicott City, MD University of Baltimore School of Law

Megan Koenig Saint Louis, MO Washington University School of Law

Mudit Kakar Seattle, WA University of Washington School of Law

Jeannette M. Kuhn Perrysburg, OH University of Toledo Law School

Chitra Kalyanaraman Washington, DC American University, Washington College of Law

William P. Laird San Francisco, CA Golden Gate University

Alison Karmelek New York, NY Yeshiva University, Benjamin N. Cardozo School of Law Joshua Kay Scotch Plains, NJ Villanova University School of Law

Jon Larson Cleveland Heights, OH Case Western Reserve University Law School Basil Lashley Roswell, GA John Marshall Law School Robert Lichter Washington, DC George Washington University

Jihong Lou San Diego, CA University of San Diego School of Law Richard B. Mandal Saratoga, CA Thomas M. Cooley Law School Edward Martindale Costa Mesa, CA California Western School of Law Nicholas Maull Cincinnati, OH University of Toledo College of Law Ryan McCleary Royal Oak, MI Thomas M. Cooley Law School Paul McSheffrey, Jr. Allston, MA New England School of Law

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  15


Darrell Messer, II Chicago, IL DePaul University College of Law

Uyen Nguyen Portland, OR Lewis & Clark University Law School

Myshala Middleton Baltimore, MD University of Baltimore School of Law

Quinn Nichols Santa Clara, CA Santa Clara University School of Law

Miriam Milstein San Diego, CA University of San Diego School of Law

Christopher O’Connor White Plains, NY Pace University School of Law

Susan E. Mince Burton, MI Thomas M. Cooley Law School

Dennis Ostrovsky Silver Spring, MD George Washington University Law School

Richard Mitchell St. John, IN Valparaiso University School of Law

Abioye Oyewole Baltimore, MD University of Baltimore School of Law

Brett Mock Valparaiso, IN Valparaiso University School of Law

Min Pan St. Louis, MO Washington University School of Law

Stephen H. Montgomery Vernon Hills, IL John Marshall School of Law

Mital Patel Greensboro, NC Elon University School of Law

Carla Mouta-Bellum Washington, DC The Catholic University of America, School of Law

Kellan Ponikiewicz Boston, MA Suffolk University Law School

Adam Muzika New York, NY New York Law School

Karen Potter San Diego, CA California Western School of Law

David Namgung Wayne, NJ Rutgers State University of New Jersey School of Law

Daniel Richards Berkeley, CA Santa Clara University School of Law

Adam Neal Richmond, VA University of Richmond T. C. Williams School of Law

Daniel Salinas Chula Vista, CA California Western School of Law

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Jeffrey Salomon Washington, DC Franklin Pierce Law Center John Samples Davis, CA Case Western Reserve University Law School Lynn Scanlon-Hernandez Amherst, NH Franklin Pierce Law Center Charles Shonkwiler Spokane, WA University of Oregon School of Law Kenneth A. Smith Dublin, OH Capital University Law School Ryan C. Smith Saint Paul, MN William Mitchell College of Law Benny Spiewak Washington, DC George Washington University Law School Christopher John Thomas Wilmington, DE Widener University Gabrielle Thompson Crestwood, KY Northern Kentucky University Salmon P. Chase College of Law Aidan Toombs Berkeley, CA Georgetown University Law Center Mary Beth Tung Columbia, MD University of Maryland Law School

Cory Valley Silver Spring, MD University of Maryland School of Law Derek Vanbuer Dekalb, IL Northern Illinois University Law School Lindsay Alexis Voirin Tallahassee, FL Florida State University Tam H. Vuong Sugar Land, TX South Texas College of Law Yuke Wang Richardson, TX Southern Methodist University Law School Zoretta Ward-Holloway Westfield, IN Indiana University Law School Arthur R. Weaver Coral Gable, FL University of Miami Law School Geoffrey Weg New York, NY New York Law School Gideon Weinerth New York, NY Yeshiva University Benjamin N. Cardozo School of Law Kimberly Weinreich Washington, DC Fordham University School of Law Rachel Weiss New York, NY Brooklyn Law School

2009 mid-winter institute issue


Lindsey Weisselberg Chicago, IL John Marshall Law School Eric Wendler Arlington, VA George Washington University Law School Randal Whitehead Washington, DC University of Maryland School of Law Kristi M. Wilcox Columbus, OH Ohio State University Law School

2009 mid-winter institute issue

Benjamin C. Wiles Winston Salem, NC Wake Forest University Law School

Christopher Worrel Troy, MI University of Toledo College of Law

Sam Yip San Francisco, CA University of San Francisco School of Law

Seth Wilson Jersey City, NJ Seton Hall University School of Law

Benjamin Wutt Saint Paul, MN University of Minnesota Law School

Richard E. Zelenka Denver, CO University of Denver Law School

Million Woldesenbet Missouri City, TX University of Houston Law Center

Yuji Yamaguchi Falls Church, VA Cornell Law School

Trevor Woodage Saint Paul, MN University of Minnesota Law School

Jeanne Yang San Francisco, CA University of California Hastings College of Law

aipla bulletin

  17


P R O F E S S I O N A L

I N S U R A N C E

S O L U T I O N S

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18 

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2009 mid-winter institute issue


2009 Meeting Dates

board of directors

Wednesday, May 13, 2009 Hotel del Coronado San Diego, CA

Thursday, September 10, 2009 Evening Welcome Reception TBD

Friday, May 15, 2009 Hotel del Coronado San Diego, CA

Friday & Saturday September 11-12, 2009 TBD

Thursday, July 16, 2009 Headquarters Boardroom Arlington, VA

2009 mid-winter institute issue

Thursday, October 15, 2009 Marriott Wardman Park Washington, DC

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news of members Edmund P. Anderson joins Cantor Colburn, LLP as a partner in the Detroit office. He focuses his practice on metallurgy and materials science in a wide variety of applications, including the automotive, aerospace and defense and biomedical arts, as well as the electrical, electro-mechanical and mechanical arts generally. In addition to patent prosecution, he also devotes a significant portion of his practice to client counseling, product clearance investigations and opinions and IP transactions, including due diligence and the drafting and negotiation of a various IP agreements. Mr. Anderson has extensive in-house experience, having previously managed the IP for multi-billion business units of several Fortune 100 companies, as well as extensive private practice experience as a former partner in the IP practice group at Dickinson Wright, PLLC. He received a JD from William Mitchell College of Law; his undergraduate degree is in Metallurgical Engineering from Michigan Technological University. Mr. Anderson is admitted to the bar in Michigan, Minnesota and the US Patent and Trademark Office. _______________________________________________ Stroock & Stroock & Lavan, LLP a national law firm has announced the addition of two AIPLA members to its Intellectual Property Practice Group in New York City. The team includes Partner Ronald M. Daignault who has represented companies across a broad range of industries in a variety of patent, trademark, unfair competition, false advertising, trade secret and copyright cases. Though he has represented clients in various technology areas, including consumer electronics and proprietary business methods, over the past nine years, Mr. Daignault’s practice has focused on pharmaceutical products and ANDA/HatchWaxman litigations, including trials on both the branded and generic sides of the business. Mr. Daignault is involved in domestic and international trademark prosecution, due diligence, counseling, and licensing. He has been involved in combating trademark counterfeiting, and has brought and conducted numerous ex parte seizures of counterfeit goods. Also included is Special Counsel Richard H. An. Mr. Ahn’s practice focuses on all phases of intellectual property litigation with an emphasis on patent litigation. He has litigated patent cases from many different fields, including electrical, mechanical, and chemical engineering, pharmaceuticals, dietary supplements, and Internet technologies. Mr. An’s experience includes the direct and cross-examination of fact and expert witnesses at bench and jury trials and arbitrations; 20 

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first-chair responsibility at summary judgment and Markman hearings; arguing a variety of motions before district courts; and conducting oral arguments on appeal, including before the Federal Circuit. Mr. An is also a registered patent attorney before the United States Patent and Trademark Office and is experienced in the prosecution of utility and design patents and drafting opinions of counsel regarding patent infringement and patent validity. _______________________________________________ Scott A. McBain joins Cantor Colburn, LLP a partner in the Detroit office. As an attorney at Delphi Corporation, he was Division IP Counsel for several different multi-billion dollar business units. At Delphi, Mr. McBain managed both domestic and international IP portfolios and led the IP portfolio development efforts in a wide range of technologies, encompassing automotive safety and comfort and even medical devices. Mr. McBain has supported numerous acquisitions and divestitures and has significant experience in M&A activities, drafting and negotiating technology transfer agreements and other IP agreements. Mr. McBain was also responsible for managing Delphi’s worldwide trademark portfolio for the last four years and was a leader in establishing and implementing Delphi’s worldwide anti-counterfeiting strategy. Prior to his eight years at Delphi, Mr. McBain spent almost nine years at Vickers, Daniels and Young in Cleveland, where he was extensively involved in both patent and trademark litigation in federal court and in the US Patent and Trademark Office. Mr. McBain began his career as an engineer at American Electric Power in Columbus, Ohio. He received his JD from Thomas M. Cooley Law School, from which he graduated magna cum laude, and his BS in civil engineering is from Michigan Technological University. Mr. McBain is admitted to the bar in Michigan, Ohio and the US Patent and Trademark Office. _______________________________________________ The Boston Patent Law Association is pleased to announce its elected officers for 2009. The officers are: President-Elect: Lisa Adams Vice President: J. Grant Houston Treasurer: Neil P. Ferraro Secretary: Joseph M. Maraia Board Member: Leslie Meyer-Leon Board Member: Donna M. Meuth Board Member: Gregory J. Sieczkiewicz Board Member: Erik Paul Belt _______________________________________________ 2009 mid-winter institute issue


Connolly Bove Lodge & Hutz, LLP welcomes several associates and elects two partners as its IP group continues to expand. Jennifer Fraser, Chair of Connoly Bove’s Trademark and Copyright section, represents clients in a variety of areas including trademark prosecution and trademark and copyright litigation. Her practice focuses primarily on the selection, use and enforcement of trademarks including prosecuting US and foreign applications, litigating rights before the courts and the Trademark Trial and Appeal Board, and resolving domain name disputes. She is a former Examining Attorney with the United States Patent and Trademark Office. She is also a member of the Intellectual Property Owners’ Trademark Office Practice Committee. Aaron R. Ettelman practices in Connolly Bove’s Intellectual Property Group. He has a technical background in organic synthesis, vitamins and dietary supplements, agricultural adjuvants and actives, cosmetics and surfactants, measurement devices and sensors, medical devices, fuels and lubricants, coatings, plastics and polymers, electrochemical and battery sciences, semiconductors and non-volatile memory, mineral extraction and textile treatments. Prior to joining the firm, Ettleman was chief intellectual property counsel and assistant secretary for the US subsidiary of a global specialty chemicals company. He is registered to practice before the United States Patent and Trademark office. The new associates to the firm include: Daniel M. Attaway practices in the firm’s Intellectual Property Group in Wilmington. He represents clients in patent prosecution, litigation, and counseling in the chemical and pharmaceutical industries. He received his JD from Chicago-Kent College of Law, where he was an associate editor of the Journal of Intellectual Property, the editor of the Seventh Circuit Review, and editor-in-chief of Access to Justice. He received his BA and BS from Rice University in Chemical Engineering and English. Charles W. Chesney practices in the firm’s Intellectual Property Group in Washington, D.C. He represents clients in a variety of intellectual property matters including patent prosecution, patent litigation, patent counseling and opinions, and trade secrets in the electrical and medical devices arts. Prior to returning to private practice, Chesney was the director and counsel of intellectual property for a 2009 mid-winter institute issue

wireless communications company developing technology for emerging OFDMA based wireless communications networks. Prior to practicing law, Chesney worked as a systems engineer in the telecommunications industry. He received his JD from The University of Virginia School of Law, his MSEE from The George Washington University and his BSEE from The Pennsylvania State University. Peter M. Jay practices in the firm’s Intellectual Property Group in Wilmington. He represents clients in a variety of areas, including patent litigation, patent prosecution and counseling in the chemical and pharmaceutical fields. He received his JD from the State University of New York at Buffalo School of Law, where he was executive publications editor of the Buffalo Intellectual Property Law Journal. He also received his ME and BS from the State University of New York at Buffalo, majoring in Chemical Engineering. _______________________________________________

deceased members

Herbert W. Larson, 74, of Largo, FL died at home March 2, 2009, after a year long illness. Born in New York City, Herb was a 1956 graduate of Northwestern University with degrees in Biology and Chemistry. He completed law school at the University of Pennsylvania in 1961. He was Patent Counsel for the DuPont Company for 24 years before retiring from DuPont in 1985. He then moved to the Tampa Bay, Florida area and opened his own IP boutique law firm, Larson & Larson, P.A. with two of his sons. Herb was a retired Commander in the United States Navy, a U.S. Registered Patent Attorney since 1963 and held memberships in the DC, Delaware and Florida Bars. Herb was also a member of the AIPLA for almost his entire 46 year career as a Patent Attorney. He is survived by his wife of 50 years, Mildred “Middy”; his three sons Bill (Michelle), Eric (Jill) and James (Catalina); and four grandchildren.

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future meetings calendar 2009 April 1 – 3

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Legal Secretaries & Administrators Conference (LSAC), Westin Alexandria Hotel, Alexandria, VA (703-415-0780)

May 13 – 15

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Spring Meeting, Hotel del Coronado, San Diego, CA (703-415-0780)

May 16 – 20

INTA Annual Meeting, Seattle, WA (www.inta.org)

June 6 – 10

FICPI World Congress, Washington, DC (www.ficpi.org)

June 17 – 19

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Legal Secretaries & Administrators Conference (LSAC), Westin Alexandria Hotel, Alexandria, VA (703-415-0780)

July 30 – August 4

ABA-IPL Section Annual Meeting Chicago, IL (www.abanet.org/intelprop)

August 26– 28

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Practical Patent Prosecution Training for New Lawyers (Boot Camp) Alexandria Westin, Alexandria, VA (703-415-0780)

September 13 – 15 IPO Annual Meeting, The Chicago Hilton, Chicago, IL (www.ipo.org) October 14 – 17

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AIPPI Forum, Buenos Aires, Argentina (www.aippi.org)

October 14

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Partnering in Patents XVI, Madison Auditorium at the USPTO Alexandria, VA (703-415-0780)

October 15 – 17

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

October 24 – 28

ASIPI Congress, Lima, Peru (www.asipi.org)

November 4 – 6

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Legal Secretaries & Administrators Conference (LSAC), Westin Alexandria Hotel, Alexandria, VA (703-415-0780)

November 18 – 22

APAA, 15th General Assembly and 56th & 57th Council Meetings, Hong Kong (www.appaonline.org)

2010 January 27 – 30

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Mid-Winter Institute, La Quinta Resort & Club, La Quinta, CA (703-415-0780)

May 6 – 8

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Spring Meeting, New York Marriott Marquis, New York, NY (703-415-0780)

May 22 – 26

INTA Annual Meeting, Boston, MA (www.inta.org)

August 5 – 10

ABA-IPL Section Annual Meeting, Toronto, ON, Canada (www.abanet.org/intelprop)

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September 12 – 14 IPO Annual Meeting, The Hyatt Regency, Atlanta, GA (www.ipo.org) October 1 – 6

AIPPI, 42nd World IP Congress, Paris, France (www.aippi.org)

October 20

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Partnering in Patents XVII, Madison Auditorium at the USPTO Alexandria, VA (703-415-0780)

October 21 – 23

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

2011 February 2 – 5

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Mid-Winter Institute, The Peabody Hotel, Orlando, FL

May 12 – 14

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Spring Meeting, The Palace Hotel, San Francisco, CA

May 14 – 18

INTA Annual Meeting, San Francisco, CA (www.inta.org)

August 5 – 10

ABA-IPL Section Annual Meeting, Toronto, ON, Canada (www.abanet.org/intelprop)

September 11 – 13

IPO Annual Meeting, Los Angeles, CA (www.ipo.org)

October 19

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Partnering in Patents XVIII, Madison Auditorium at the USPTO Alexandria, VA (703-415-0780)

2009 mid-winter institute issue

October 20-22

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Annual Meeting, Washington, DC (703-415-0780)

2012 May 5 – 9

INTA Annual Meeting, Washington, DC (www.inta.org)

October 24

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Partnering in Patents XIX, Madison Auditorium at the USPTO Alexandria, VA (703-415-0780)

October 25-27

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION Annual Meeting, Washington, DC (703-415-0780)

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C.L.E.

2008 Spring Meeting • InterContinental Houston Houston, TX • May 14–16, 2008

update

Alabama................................................... 15.4 (3.8) Alaska.................................................... 15.25 (3.75) Arizona.................................................. 15.25 (3.75) Arkansas.................................................. 15.5 (3.75) California............................................... 15.25 (3.75) Colorado . ................................................. 18.0 (4.5) Connecticut................................................ 15.0 (3.5) Delaware................................................... 15.5 (3.8) Florida........................................................ 18.5 (4.5) Georgia.................................................. 15.35 (3.75) Idaho............................................................... 14.75 Illinois..................................................... 15.25 (3.75) Indiana....................................................... 15.4 (3.8) Iowa......................................................... 15.5 (3.75) Kansas....................................................... 18.5 (4.5) Kentucky.................................................. 15.5 (3.75)

Louisiana................................................. 15.4 (3.75) Maine....................................................... 15.4 (3.75) Minnesota............................................. 15.75 (3.75) Mississippi................................................. 15.4 (3.8) Missouri..................................................... 18.5 (4.5) Montana................................................... 15.4 (3.75) Nevada...................................................... 15.0 (3.5) New Hampshire......................................... 16.4 (4.0) New Mexico........................................... 15.25 (3.75) New York................................................... 18.5 (4.5) North Carolina....................................... 15.25 (3.75) North Dakota......................................... 15.25 (3.75) Ohio....................................................... 15.25 (3.75) Oklahoma.................................................. 18.5 (4.5) Oregon.......16.25 (3.5) also 0.5 practical skills included in the total Pennsylvania............................................. 15.0 (3.5)

Rhode Island............................................. 18.5 (4.5) South Carolina....................................... 15.42 (3.75) Tennessee............................................... 16.42 (4.0) Texas..................................................... 15.25 (3.75) Utah........................................................... 15.4 (3.7) Vermont..................................................... 15.4 (3.7) Virginia....................................................... 15.0 (2.5) Washington.............................................. 15.5 (3.75) West Virginia............................................. 18.5 (4.5) Wisconsin.................................................. 18.5 (4.5) Wyoming.................................................. 15.5 (3.75)

Alabama........................................................... 13.0 Alaska................................................................ 13.0 Arizona.............................................................. 13.0 Arkansas............................................................ 13.0 California........................................................... 13.0 Colorado . ......................................................... 16.0 Connecticut........................................................ 13.0 Delaware................................ accreditation pending Florida................................................................ 16.0 Georgia.............................................................. 13.0 Idaho..................................................................11.5 Illinois............................................................... 12.75 Indiana............................................................... 13.0 Iowa................................................................... 13.0 Kansas............................................................... 15.5 Kentucky............................................................ 13.0

Louisiana........................................................... 13.0 Maine................................................................. 13.0 Minnesota........................................................ 12.75 Mississippi......................................................... 14.0 Missouri............................................................. 15.3 Montana............................................................. 13.0 Nevada.............................................................. 13.0 New Hampshire................................................. 13.0 New Mexico....................................................... 13.0 New York................................................... 15.0/13.0 North Carolina................................................. 12.75 North Dakota..................................................... 13.0 Ohio................................................................. 12.75 Oklahoma.......................................................... 15.5 Oregon............................................................... 13.5 Pennsylvania..................................................... 13.0

Rhode Island..................................................... 15.5 South Carolina................................................... 13.0 Tennessee....................................................... 12.25 Texas................................................................. 13.0 Utah................................................................... 13.0 Vermont............................................................. 13.0 Virginia............................................................... 13.0 Washington...................................................... 12.75 West Virginia..................................................... 15.6 Wisconsin.......................................................... 15.5 Wyoming............................................................ 13.0

2008 Advanced Patent Cooperation Treaty Seminar July 10–11: New York, NY • July 14–15: Denver, CO

2008 Practical Patent Prosecution Training for New Lawyers Alexandria, VA • August 20–22, 2008 Alabama................................................... 22.5 (1.0) Alaska........................................................ 22.5 (1.0) Arizona...................................................... 22.5 (1.0) Arkansas.................................................... 22.5 (1.0) California................................................... 22.5 (1.0) Colorado . ................................................. 27.0 (1.2) Connecticut................................................ 22.5 (1.0) Delaware................................................... 22.5 (1.0) Florida........................................................ 27.0 (1.0) Georgia...................................................... 22.5 (1.0) Idaho......................................................... 22.5 (1.0) Illinois......................................................... 22.5 (1.0) Indiana....................................................... 22.5 (1.0) Iowa........................................................... 22.5 (1.0) Kansas....................................................... 24.0 (1.0) Kentucky.................................................... 22.5 (1.0)

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Louisiana................................................... 22.5 (1.0) Maine......................................................... 22.5 (1.0) Minnesota................................................. 15.0 (1.0) Mississippi................................................. 18.0 (1.0) Missouri..................................................... 27.0 (1.2) Montana................................................... 22.25 (1.0) Nevada...................................................... 22.5 (1.0) New Hampshire....................................... 22.75 (1.0) New Mexico............................................... 22.5 (1.0) New York................................................... 27.0 (1.0) North Carolina .......................................... 22.0 (1.0) North Dakota............................................. 22.5 (1.0) Ohio........................................................... 22.5 (1.0) Oklahoma.................................................. 27.0 (1.0) Oregon....................................................... 24.0 (1.0) Pennsylvania............................................. 22.5 (1.0)

Rhode Island............................................. 20.0 (1.0) South Carolina........................................... 22.5 (1.0) Tennessee............................................... 22.75 (1.0) Texas......................................................... 22.5 (1.0) Utah........................................................... 22.5 (1.0) Vermont..................................................... 22.5 (1.0) Virginia....................................................... 22.5 (1.0) Washington................................................ 22.5 (1.0) West Virginia............................................. 27.0 (1.2) Wisconsin.................................................. 27.0 (1.0) Wyoming.................................................... 22.5 (1.0)

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2008 Partnering in Patents XV Alexandria, VA • October 17, 2007 Alabama.............................................................. 3.8 Alaska................................................................ 3.75 Arizona.............................................................. 3.75 Arkansas............................................................ 3.75 California........................................................... 3.75 Colorado . ........................................................... 5.0 Connecticut.......................................................... 3.5 Delaware............................................................. 4.5 Florida.................................................................. 4.5 Georgia................................... accreditation pending Idaho................................................................. 2.75 Illinois................................................................. 3.75 Indiana................................................................. 3.8 Iowa................................................................... 3.75 Kansas................................................................. 4.5 Kentucky............................................................ 3.75

Louisiana........................................................... 3.75 Maine................................................................. 3.75 Minnesota......................................................... 3.75 Mississippi........................................................... 3.8 Missouri.................................. accreditation pending Montana............................................................. 3.75 Nevada................................................................ 3.5 New Hampshire................................................... 3.9 New Mexico....................................................... 3.75 New York............................................................. 4.5 North Carolina................................................... 3.75 North Dakota..................................................... 3.75 Ohio................................................................... 2.75 Oklahoma............................................................ 4.5 Oregon............................................................... 3.75 Pennsylvania....................................................... 3.5

Rhode Island....................................................... 4.5 South Carolina................................................... 3.75 Tennessee......................................................... 3.92 Texas................................................................. 3.75 Utah..................................................................... 3.5 Vermont............................................................... 3.8 Virginia................................................................. 3.0 Washington........................................................ 3.75 West Virginia....................................................... 4.5 Wisconsin............................................................ 4.5 Wyoming............................................................ 3.75

2008 Annual Meeting • Marriott Wardman Park Washington, DC • October 23–25, 2008 Alabama................................................... 16.2 (1.0) Alaska........................................................ 16.0 (1.0) Arizona...................................................... 16.0 (1.0) Arkansas.................................................. 16.25 (1.0) California................................................... 16.0 (1.0) Colorado . ................................................. 19.0 (1.2) Connecticut................................................ 16.0 (1.0) Delaware................................................... 19.4 (1.2) Florida........................................................ 19.0 (1.0) Georgia................................... accreditation pending Idaho............................................................... 15.75 Illinois......................................................... 16.0 (1.0) Indiana....................................................... 16.2 (1.0) Iowa......................................................... 16.25 (1.0) Kansas....................................................... 19.0 (1.0) Kentucky.................................................. 16.25 (1.0)

Louisiana................................................. 16.16 (1.0) Maine......................................................... 16.1 (1.0) Minnesota............................................... 15.75 (1.0) Mississippi................................................. 16.2 (1.0) Missouri.................................. accreditation pending Montana................................................... 16.17 (1.0) Nevada...................................................... 16.0 (1.0) New Hampshire......................................... 17.3 (1.0) New Mexico............................................... 16.0 (1.0) New York................................................... 19.0 (1.0) North Carolina........................................... 16.0 (1.0) North Dakota............................................. 16.0 (1.0) Ohio......................................................... 16.25 (1.0) Oklahoma.................................................. 19.5 (1.0) Oregon....................................................... 17.0 (1.0) Pennsylvania............................................. 16.0 (1.0)

Rhode Island............................................. 19.0 (1.0) South Carolina......................................... 16.17 (1.0) Tennessee............................................... 17.08 (1.0) Texas......................................................... 16.0 (1.0) Utah........................................................... 16.0 (1.0) Vermont..................................................... 16.0 (1.0) Virginia....................................................... 15.5 (1.0) Washington................................................ 16.0 (1.0) West Virginia............................................. 19.4 (1.2) Wisconsin............................... accreditation pending Wyoming.................................................. 16.25 (1.0) Ethics credit is indicated in a parenthesis and is included in the total.

2009 Mid-Winter Institute • Doral Golf Resort & Spa Miami, FL • January 28–31, 2009

Alabama.................................................... 16.6 (1.0) Alaska........................................................ 16.5 (1.0) Arizona...................................................... 16.5 (1.0) Arkansas.................................................... 16.5 (1.0) California................................................... 16.5 (1.0) Colorado . ................................................. 20.0 (1.2) Connecticut............................. accreditation pending Delaware................................................... 20.1 (1.2) Florida........................................................ 20.0 (1.0) Georgia................................... accreditation pending Idaho............................................................... 16.75 Illinois......................................................... 16.5 (1.0) Indiana....................................................... 16.6 (1.0) Iowa........................................................... 16.5 (1.0) Kansas....................................................... 20.0 (1.0) Kentucky.................................................... 16.5 (1.0)

Louisiana................................................. 16.58 (1.0) Maine......................................................... 16.5 (1.0) Minnesota................................................. 16.5 (1.0) Mississippi................................................. 16.6 (1.0) Missouri..................................................... 20.1 (1.2) Montana................................................... 16.58 (1.0) Nevada...................................................... 16.5 (1.0) New Hampshire......................................... 17.5 (1.0) New Mexico............................................... 16.5 (1.0) New York................................................... 20.0 (1.0) North Carolina........................................... 16.5 (1.0) North Dakota............................................. 16.5 (1.0) Ohio........................................................... 16.5 (1.0) Oklahoma............................... accreditation pending Oregon....................................................... 16.5 (1.0) Pennsylvania............................................. 16.5 (1.0)

Rhode Island............................................. 20.0 (1.0) South Carolina........................ accreditation pending Tennessee............................................... 17.58 (1.0) Texas......................................................... 16.5 (1.0) Utah........................................................... 16.5 (1.0) Vermont..................................................... 16.5 (1.0) Virginia....................................................... 16.5 (1.0) Washington................................................ 16.5 (1.0) West Virginia............................................. 20.1 (1.2) Wisconsin.................................................. 20.0 (1.0) Wyoming.................................................. 16.75 (1.0) Ethics credit is indicated in a parenthesis and is included in the total.

Please check our website at www.aipla.org for current information. 2009 mid-winter institute issue

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At a leading edge of best practice Puhua & Associates a member firm of PRICEWATERHOUSECOOPERS, TAIWAN We support our clients through all stages of the IP cycle, from inception through procurement and exploitation to disposal. Our Services: IP Search & Patent Mapping/Analysis IP Prosecution & Maintenance Patent Invalidation Proceedings, and Trademark Opposition and Invalidation Proceedings IP Litigation Legal & Tax Advisory Related to IP Assignment, Licensing and Management Due Diligence IP Related Tax & Transfer Pricing Consultancy 23/F, No. 333, Section 1, Keelung Road, Taipei, Taiwan, R.O.C. Tel: +886-2-2729-6666 Ext.: 23850 Email: tim.wey@tw.pwc.com

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2009 mid-winter institute issue


classified

advertisements High Quality Patent Searching in the mechanical arts; Washington Associate services (e.g., problem solving to expedite the bureaucratic process; file review; status monitoring; document handling; legalizations, etc.) before USPTO, Copyright Office, FTC, State Department, embassies and consulates, etc. Extensive experience dates back to 1968. BSME and JD. Contact me at (703) 405-9260. GARY L. MANUSE

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copyright office affairs by: Wendi A. Maloney & Judith Nierman (photos below)

Register of Copyrights Issues Decision on Material Questions of Substantive Law Regarding CRJ Decision The Register of Copyrights issued her decision identifying and correcting erroneous resolutions on material questions of substantive law under title 17 that underlie or are contained in the final determination of the Copyright Royalty Judges (CRJs) regarding adjustment of reasonable rates and terms of royalty payments for the making and distribution of phonorecords of musical works. Docket No. 2006-3 CRB DPR, issued November 24, 2008, and available at www.loc.gov/crb/proceedings/2006-3/ dpra-public-final-rate-terms.pdf, sets rates and terms for phonorecords, ringtones, digital downloads, digital phonorecord deliveries, limited downloads, and interactive streams.

The final determination of the CRJs and the Register’s decision were submitted to the Federal Register on January 26, 2009. For further information, go to www. copyright.gov/crb-referrals/115review/ and to www. loc.gov/crb/fedreg/.

Copyright Office Solicits Comments for Rulemaking on Exemption from Prohibition on Circumvention of Technological Measures That Control Access to Works In its triennial rulemaking proceeding regarding possible exemption by the Librarian of Congress of certain classes of works from the prohibition against circumvention of technological measures that control access to copyrighted works, the Copyright Office received 19 proposals for classes of works to be subject to exemptions. The Office published The Register concluded that the CRJs erroneously a notice of proposed rulemaking announcing the did not refer two novel questions of law as required proposed exemptions and sought comments from under the statute; that they were in error in their members of the public who support or oppose any conclusions regarding both their and the Register’s of the proposed exemptions. The purpose of this authority to review regulations submitted to them rulemaking proceeding is to determine whether there under an agreement by the participants; and that their are particular classes of works as to which users are, conclusion that they could not review the agreement or are likely to be, adversely affected in their ability submitted by the participants led to the inclusion of to make noninfringing uses due to the prohibition on regulations that constitute erroneous resolution by circumvention. the CRJs of material questions of substantive law All comments proposing classes of works for under title 17. The Register’s decision corrects such exemption are available on the Copyright Office errors and will be made part of the record of Docket website at www.copyright.gov/1201/2008 and at the U.S. Copyright Office. The notice of proposed No. 2006-3 CRB DPR. 28 

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rulemaking was published December 29, 2008, and is available on the Copyright Office website at www. copyright.gov/fedreg/2008/73fr79425.pdf. Comments in support or in opposition to the classes proposed were submitted during the 30-day period that ended February 2, 2009. For further information, go to www. copyright.gov/1201/. Copyright Office Signs Agreement with Chinese Counterpart Register of Copyrights Marybeth Peters signed an agreement on October 25, 2008, in Beijing in which the Office committed to work with the U.S. Patent and Trademark Office (USPTO) and the National Copyright Administration of China (NCAC) to streamline protection of intellectual property. Jon Dudas, director of the USPTO, signed on behalf of his agency, and Liu Binjie, director of the NCAC and minister of China’s General Administration of Press and Publication, signed for the NCAC. Formally titled a “memorandum of understanding for strategic cooperation,” the agreement cites the connection between global economic prosperity and protection of intellectual property, and it calls on the signatories to establish a framework for exchanging information and best practices. Specifically, it advocates the sharing of details about national copyright-related legislation and measures to administer and enforce copyrights, and it encourages

2009 mid-winter institute issue

discussion of ways to deter Internet copyright infringement and piracy across borders. The initiative for the agreement came out of the Intellectual Property Rights (IPR) Working Group of the U.S.–China Joint Commission on Commerce and Trade (JCCT). Established in 1984, the JCCT is a forum for resolving trade concerns and promoting bilateral commercial opportunities. Peters noted that the Copyright Office has maintained a relationship with the NCAC since its founding in 1985. Office Adds MLs to Website The Office has made available an additional 45 MLs on its website. Prior to the development of the Internet and for a few years thereafter, official Office announcements were mailed to interested parties, hence the name “ML” for a document on the mailing list. These documents were numbered consecutively, beginning with ML-1 in November 1954 and ending at ML-711 dated December 2001. The name “ML” lingers although this type of information is no longer mailed but placed on the Office website. View all MLs on the website at www.copyright. gov/history/index.html. These announcements are historical in nature. Many of the regulations, policies, and practices noted in the MLs have been superseded and are no longer in force.

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Legal Secretaries & Administrators’ Conference April 1–3, 2009 The Westin Alexandria Alexandria, VA This conference, co-sponsored by AIPLA and the US Patent & Trademark Office, has been an ongoing outreach program since 1979 and has been a source of help and information for hundreds of Legal Secretaries and Administrators. This conference is provided to offer Legal Secretaries and Administrators from private corporations and law firms training in Patent and Trademark Office operations, services and procedures. For more information, please visit: www.aipla.org 30 

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PROFESSIONAL PATENT SEARCH SERVICES FOR LITIGATION AND PROSECUTION PURPOSES The Governmental administration, Danish Patent and Trademark Office, offers a wide range of technical patent search services. Our search services are based on the philosophy of delivering high quality and customized products to meet your – or your clients’ needs: - The customized patent searches are performed on quotation with state-of-art search tools, in worldwide patent and NPL databases. - We have an ISO 9001 certified quality control management system for all examination and search processes, ensuring the high quality level. - Our services are performed by experienced examination and search experts who possess technical and multi-lingual skills as well as IPR expertise.

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thank you AIPLA 2009 mid-winter institute sponsors! platinum Sughrue Mion, PLLC Sponsor: Corporate In-House Counsel Lunch Thursday Dinner Theme & Entertainment

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

bronze Carlton Fields PA Sponsor: Thursday Lunch Reception

Orrick Herrington & Sutcliffe, LLP Sponsor: Opening Night Reception

Fitzpatrick Cella Harper & Scinto Sponsor: AIPLA Cyber Café

Schwegman Lundberg & Woessner, PA Sponsor: New Member & First Time Attendee Reception

Howrey, LLP Sponsor: Women in IP Law & Diversity in IP Law Breakfast Meeting

Sughrue Mion, PLLC Sponsor: Thursday Lunch Reception

crystal Buckingham Doolittle & Burroughs, LLP Sponsor: Meeting Signage

Crowell & Moring Sponsor: AIPLA Technology Center

pearl McAndrews Held & Malloy, Ltd. Sponsor: Golf Balls for Tournament

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AIPLA 2009

annual meeting leadership

Teresa Stanek Rea, President, AIPLA

Alan J. Kasper, Officer-in-Charge, President-Elect, AIPLA

Brian B. Darville, Program Co-Chair

Not Pictured: Li Chen, Program Co-Chair

Q. Todd Dickinson, AIPLA Executive Director

2009 mid-winter institute photographs by: Richard Burgess and Anna Eliseeva

Myra H. McCormack, Program Co-Chair


a few speakers

Andras Kupecz

Arlene Neal

Caldwell Camero

Honorable Paul R. Michel

Christian Rupp

Denis Khabarov

Dwayne S. Rawlings

Francisco Silva

Friedrich Klinkert

(left to right) Christopher Schulte, Justine Wiebe, Katie Cameron


a few more speakers

Geoffrey Lin

Harley I. Lewin

Harry Moatz

Honorable Marybeth Peters

Leslie Lott

Lisa Tittemore

Maria Eliseeva

Melvin Garner

Michael Grow

(left to right) Gerald Steinberg, Christian Rupp, Lisa Tittemore, Steve Kunin, Gary Griswold and Matthew Zischka


a few more speakers

Poh Chua

Rachel Hughey

Randy Goddard

Maria Aronikova

Ryan Triplette

Susan Barbieri Montgomery

thursdayâ&#x20AC;&#x2122;s plenary session

(left to right) Gary Hnath, Benjamin Sley, Dwayne Rawlings, Hernan Rios


new member/first-time attendee reception

a special thank you to: â&#x20AC;˘Schwegman Lundberg & Woessner, PA for sponsoring the New Member/FirstTime Attendee Reception


wednesday opening night reception “miami spice ”

a special thank you to: • Orrick Herrington & Sutcliffe, PC for sponsoring the Opening Night Reception


thursday evening dinner: â&#x20AC;&#x153;latin nightsâ&#x20AC;?


a special thank you to: â&#x20AC;˘ Sughrue Mion, PLLC for sponsoring the Thursday Dinner Theme and Entertainment


friday networking reception & saturday networking luncheon


awards reception for golf & tennis

a special thank you to: â&#x20AC;˘ Bereskin & Parr for sponsoring the Awards Reception for Golf and Tennis


committee

reports

annual meeting october 23-25, 2008

Anti-Counterfeiting & Anti-Piracy Kieran Doyle, Chair (left photo) Sherri L. Schornstein (right photo)

___________________________________________

T

he Anti-Counterfeiting and Anti-Piracy Committee along with the Copyright Committee and the various Trademark Committees co-hosted a series of presentations on a variety of topics of interest to trademark, copyright and design lawyers. First, Betty Morgan led a discussion of product configuration protection from a multidisciplinary approach. Out of this meeting, the Committees intend to develop a program for the AIPLA Annual Meeting on this topic. Next, Amy Cahill of the Anti-Counterfeiting and Anti-Piracy Committee presented an overview of S. 3325, the Prioritizing Resources and Organization for Intellectual Property Act (“the PRO-IP Act”), signed into law in October 2008.

This legislation strengthens both civil and criminal laws against counterfeiting and piracy. Specifically, the Act increases statutory damage awards in civil counterfeiting cases, it strengthens remedies available in the prosecution of criminal cases involving counterfeiting and piracy, it enhances resources (personnel, training, and equipment) for Department of Justice programs that combat IP theft, and makes permanent the Administration’s Strategy Targeting Organized Piracy (STOP!) Initiative and its inter-agency IP coordination efforts. Next, Deirdre Sheridan gave a brief presentation regarding trademark damages, which included an update on damages case law and a discussion regarding willfulness as a prerequisite to damages.

Trademark Law

Kimberly Van Voorhis, Chair (left photo) Amie Peele Carter, Vice-Chair (right photo) ___________________________________________

T

he Trademark Committees had an active and the Anti-Counterfeiting and Anti-Piracy Committee and the Copyright Committee co-hosted a series productive Mid-Winter meeting. of presentations on a variety of topics of interest to On Thursday, the Trademark Committees along with trademark, copyright and design lawyers.

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First, Betty Morgan led a discussion of product configuration protection from a multidisciplinary approach. Out of this meeting, the Committees intend to develop a program for the AIPLA Annual Meeting on this topic. Next, Amy Cahill of the Anti-Counterfeiting and AntiPiracy Committee presented an overview of S. 3325, the Prioritizing Resources and Organization for Intellectual Property Act (“the PRO-IP Act”), signed into law in October 2008. This legislation strengthens both civil and criminal laws against counterfeiting and piracy. Specifically, the Act increases statutory damage awards in civil counterfeiting cases, it strengthens remedies available in the prosecution of criminal cases involving counterfeiting and piracy, it enhances resources (personnel, training, and equipment) for Department of Justice programs that combat IP theft, and makes permanent the Administration’s Strategy Targeting Organized Piracy (STOP!) Initiative and its inter-agency IP coordination efforts.

regarding willfulness as a prerequisite to damages. Following the presentations, the Committees addressed general committee business, including, for the Trademark Committees, an overview of the current activities by the various committees and requests for volunteers on upcoming projects such as the trademark boot camp, proposed legislation, upcoming professional programs, including on-line programs, a public education project proposed by the Public Education Committee, and ongoing case summaries prepared by the Trademark Litigation Committee. The Trademark Litigation Committee’s January 2009 Case Summary report, covering cases decided in the 4th quarter of 2008, is available on its committee page at the AIPLA website.

On Friday, the Trademark Law Committee held a one-hour working session on proposed legislation to amend the Lanham Act to include protection for well-known marks. The session was well attended and the group had a lively and informative discussion about the proposed changes. The Committee is Finally, Deirdre Sheridan gave a brief presentation presently updating its proposed resolutions based regarding trademark damages, which included an on this meeting and will be voting on them shortly. update on damages case law and a discussion

Trademark Litigation

Stephen P. Meleen, Chair (left photo) Jennifer L. Kovalcik, Vice-Chair (right photo) ___________________________________________ Please see Trademark Law Committee for report.

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Trademark-Relations with the USPTO

Terence Dixon, Chair (left photo) Linda McLeod, Vice-Chair–Inter Partes (center photo) Jody H. Drake, Vice-Chair–Prosecution (right photo) ___________________________________________ Please see Trademark Law Committee for report.

Trademark Treaties & International Law

B. Brett Heavner, Chair (left photo) Janet M. Fuhrer, Vice-Chair (right photo) ___________________________________________ Please see Trademark Law Committee for report.

Trademark Internet

Matthew Nelles, Chair (left photo) Joe Keeley, Vice-Chair (right photo) ___________________________________________ Please see Trademark Law Committee for report.

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Amicus

Patrick J. Coyne, Chair (photo right) Edward Robert Reines ___________________________________________

A

micus participation is a critical component of the AIPLA’s public policy efforts. Too often, however, we find out about opportunities too late in the process to participate effectively. In order to address this concern, the Amicus Committee, in conjunction with the Board, has undertaken five major initiatives since October to attempt to expedite our consideration of the issues in cases in which we may wish to participate.

for rehearing, and the time for filing an amicus brief. In December, AIPLA submitted comments to the Rules Committee of the US Court of Appeals for the Federal Circuit, encouraging the Court to adopt these expanded time limits. In this letter we identified specific cases in which expansion of the time limits as proposed by the Court might have permitted AIPLA to participate in cases in which it did not have sufficient time either to consider its position fully or prepare a suitable amicus filing. AIPLA was among several amicus filers who supported the proposed Amicus Liaison The Amicus Committee has undertaken to involve rule change. various of the substantive law committees in our consideration of cases. Some of these efforts On February 6, 2009, the Federal Circuit issued have been informal, through increased contact with changes to Federal Circuit Rules 35 and 40. substantive Committee Chairs on an ad hoc basis Specifically, the time for filing a petition for rehearing to elicit their views on issues that the Committee is has been revised to 30 days (from 14) after the considering, while others have been more formal. entry of judgment and, in cases in which the United In October, members of the Amicus Committee States is a party, 45 days after entry of judgment. were assigned to a number of the substantive law An amicus brief related to a petition for rehearing committees and the substantive law committees were must now be filed within 14 calendar days (from 7) solicited to appoint liaison members to the Amicus of the date of filing of the petition or response that Committee. This process is now well-underway the amicus curiae supports. and the liaison group is holding monthly telephone conference calls to discuss the Amicus Committee’s These changes will provide AIPLA substantial progress on various substantive issues and to solicit additional time within which to consider participating from the various substantive law committees their in cases that are before the Federal Circuit on a views on cases that are being considered as well petition for rehearing and to file a substantive brief as on new cases in which the AIPLA may wish to with the court. For example, provided AIPLA is consider participating. This process has brought a aware of the case prior to the filing of the petition, number of new cases to the Committee’s attention. these rule changes will give AIPLA up to an A complete list of liaisons is available on the Amicus additional three weeks of time to consider and draft an amicus submission. This will be a huge benefit Committee’s microsite. to the Association and its members. Federal Circuit Rule Change Consideration of Amicus The US Court of Appeals for the Federal Circuit Accelerate Opportunities recently amended its rules to permit additional time for the filing of amicus briefs. In November of last We have attempted to accelerate the time period for year, the Court considered a proposed rule change consideration of amicus participation by attempting that would have expanded the time for filing a petition to identify cases early in the review process, even 48 

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before a petition for rehearing or petition for writ of certiorari is filed. To this end, the Amicus Committee is reviewing a substantial number of cases, many of them prior to the time when petitions for rehearing or a petition for writ of certiorari are actually filed. This has also expanded the time available for consultation with the substantive law committees, for formulating our positions on various issues, and for preparing our amicus submissions. Focus In view of the increasing number of cases enjoying en banc rehearing and Supreme Court review, the number of cases that the Amicus Committee has evaluated has expanded this year, relative to prior years. In order to make these efforts more productive, the Amicus Committee has aligned its focus with the Board’s other public policy outreach programs. AIPLA is currently involved in a number of public policy outreach initiatives with respect to patent reform and the administration of the courts. In October, the Committee identified a number of substantive issues that it was planning to monitor this year. The Committee has followed through on these initiatives but is also mindful of looking for opportunities where amicus filings can strengthen and support the Board’s public policy outreach initiatives. Among the several topics identified in the Committee’s October report, we are particularly mindful of amicus opportunities with respect to issues of fraud and inequitable conduct, and damages. Amicus Network The Board recently instituted a mechanism to coordinate amicus filings among other frequent amicus filers with whom the AIPLA is often aligned. This program will help share resources and coordinate our positions in appropriate cases, hopefully increasing our impact while lessening the burden on the Court of receiving multiple briefs espousing the same position.

Haulapai Tribe v. Grand Canyon West (20091012) is an appeal to the Federal Circuit from a decision of the Trademark Trial and Appeal Board. The Grand Canyon West case involves the trademark “GRAND CANYON WEST” for use in conjunction with air transportation services, an activity that is regulated and requires a license from the appropriate regulatory authorities. The Trademark Trial and Appeal Board held that the applicant committed fraud on the Trademark Office in claiming first use at a time when such use would have been unlicensed and canceled the registrant’s registration for the mark. This case raises issues similar to those in the Bose case in which the Association participated as amicus last year. Bill Barber drafted a brief on behalf of AIPLA articulating the same positions that the Association had previously taken in the Bose case. The brief was filed on December 4, 2008, and the case is currently awaiting decision at the Federal Circuit. Prometheus v. Mayo Labs. (2008-1403) is an appeal to the US Court of Appeals for the Federal Circuit from a decision of the US District Court for the Southern District of California. The Prometheus case is pending at the pre-panel decision level at the Federal Circuit. The case was originally scheduled to be heard last year and the Court continued the briefing schedule in Prometheus in view of the Court’s impending en banc decision in In re Bilski. After the Bilski decision was issued last year, the Court reset the briefing schedule in Prometheus. In Prometheus, the district court held that the intermediate metabolite that was formed by ingesting a drug is a “naturally occurring” substance and therefore unpatentable. At the panel stage, we are, as is the panel, bound by the Court’s en banc ruling in In re Bilski. The Association’s brief, which was drafted by Ed Reines, articulates why the invention at issue in Prometheus is patentable under the standard articulated by the Court in Bilski.

I. Recent Amicus Filings Since October, the Amicus Committee has considered over 40 cases on the merits. Of these, Cardiac Pacemakers v. St. Jude (2007-1296) formal votes have been taken in approximately 30 involves whether Section 271(f) limits the damages that can be recovered for infringement of a method cases. Briefs have been filed in 4 cases. 2009 mid-winter institute issue

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claim. This issue was raised previously in the Union Carbide v. Shell case. The Association participated as amicus in the Union Carbide case but the case was resolved prior to a decision on the merits. The same issue is raised again in Cardiac Pacemakers. In the Union Carbide case, AIPLA filed jointly with the Federal Circuit Bar Association an amicus brief articulating why Section 271(f) should not operate to limit damages in the manner the court below ruled that it did. The Associations again cooperated in preparation of a brief in the Cardiac Pacemakers case, articulating the positions that they had espoused in the prior Union Carbide appeal. In re Bilski. On January 28, 2009, Bilski filed a petition for a writ of certiorari with the United States Supreme Court asking the Court to modify the Federal Circuit’s en banc decision in the In re Bilski case, establishing the “machine-ortransformation test” as the standard for subject matter patentability of a process claim. AIPLA previously filed an amicus brief in the Bilski case when it was pending at the US Court of Appeals for the Federal Circuit. The Federal Circuit, however, declined to follow AIPLA’s recommendations and AIPLA has submitted an amicus brief, pursuing this issue further, on Bilski’s petition for writ of certiorari. AIPLA’s brief, authored by Bill West, was filed on March 2, 2009. II. Cases in Which Cert was Denied The Amicus Committee has also been monitoring a number of cases in which petitions for a writ of certiorari were ultimately denied.

mandamus requiring that the case be transferred to the US District Court for the Northern District of Texas. The plaintiff petitioned for writ of certiorari, which was denied on February 23, 2009. FTC v. Rambus involves participation in consensus standards-setting activity. The Federal Trade Commission held that Rambus had violated the custom and usage of trade by failing to disclose to other members of the standards setting organization (JEDEC) its intellectual property rights that were essential to the standard. The FTC held Rambus’ patents unenforceable. The US Court of Appeals for the District of Columbia Circuit reversed, holding that the Federal Trade Commission had not established that Rambus’ acts were the cause of any injury to competition. The Federal Trade Commission filed a petition for writ of certiorari, supported by numerous amicus filings. On February 23, 2009, the Supreme Court denied the petition for writ of certiorari. Since October, the Committee has considered a number of other cases. III. Pending Cases The Committee is currently monitoring a number of other pending cases. In re Comiskey. In addition to the Bilski decision, the Federal Circuit recently issued an en banc decision in the In re Comiskey case (2006-1286), involving whether claims to an auction process are patentable subject matter. The Federal Circuit has held that under the en banc decision in In re Bilski, certain claims are not patentable and remanded other claims back to the PTO for determination of subject matter patentability. The Comiskey case came to the Federal Circuit on an obviousness rejection. The Board of Patent Appeals and Interferences did not raise an issue of subject matter patentability; the Court raised this issue sua sponte. It is anticipated that a decision by the Supreme Court in the In re Bilski case could have a substantial impact on the outcome in the Comiskey case.

In re Volkswagen involves an appeal from the Fifth Circuit Court of Appeals’ issuance of a writ of mandamus to the US District Court for the Eastern District of Texas requiring that the case be transferred to the Dallas Division. The VW case involved a motor vehicle accident in which the events occurred and the witnesses and participants resided in the Dallas Division (N.D. Tex.). Plaintiff chose to file the case in the Eastern District of Texas, which is typically viewed as a pro-plaintiff jurisdiction. The Fifth Circuit, The Committee has also considered a number in a divided en banc decision, issued a writ of of appeals and petitions relating to inequitable 50 

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conduct issues, including, Praxair v. ATMI We are continuing to monitor cases raising (2007-1483, 1509) and Aventis Pharma, S.A. v. similar damages issues for appropriate cases in Amphastar Pharmaceuticals, Inc. which to participate. In addition, the Committee is carefully screening cases to attempt to identify Lucent v. Dell and Microsoft (2008-1495) an appropriate vehicle for the Court to reconsider is currently pending at the Federal Circuit at its Cybor decision, involving whether or not the pre-panel decision stage. Microsoft and deference should be given to the district court on Lucent settled most of the issues in their case issues of claim construction. and reserved issues relating to infringement damages, a topic that attracted much attention The Amicus Committee continues to solicit input on Capitol Hill during Patent Reform Legislation from all members of AIPLA regarding appropriate deliberations. Microsoft is arguing, among cases. In particular, we are looking for cases other issues, that the quantum of damages for to support the Boardâ&#x20AC;&#x2122;s public policy initiatives. infringement for inducement should be limited to Please feel free to contact Ed Reines or myself if the degree of direct infringement that has actually there are any cases that you feel that we should been proven. consider or wish to participate in our monthly liaison calls.

Mentoring

Troy M. Schmelzer, Chair (left photo) Kristiana M. Brugger, Vice-Chair (right photo) ___________________________________________

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he Mentoring Committee met at the 2009 Mid-Winter Institute. The discussion focused primarily on the Mentor of the Year award, which the Board has approved and will be awarded for the first time at the 2009 Annual Meeting. The Committee discussed how to encourage feedback and return of evaluations by mentors and mentees, which are important to the decision-making process for the award. Theresa Corneau and Daphne Lainson, who were present at the meeting, agreed to help in follow up with mentors and mentees to obtain the needed feedback. The Committee also decided that its business meeting at the 2009 Spring Meeting will be dedicated primarily to Mentor of the Year consideration.

microsite, agreed to help improve the Mentoring Committee site. The Committee discussed its continuing efforts to increase recognition and acknowledgement of mentors. In this regard, the Committee is pleased to report that an insert was included with the 2008 Annual Meeting Bulletin providing a listing of those mentors completing at least one full year as mentors, and recognizing their service and dedication. Finally, the Committee wrapped up its discussion and planning for the Mentoring/Leadership track at the 2009 Spring Meeting.

The Committee also discussed the continuing need to update its Committee microsite and make it more visible and accessible to potential mentors and mentees. Daphne Lainson, who recently upgraded the Women in IP Law Committee 2009 mid-winter institute issue

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Education

J. Timothy Meigs, Chair (left photo) Troy E. Grabow, Vice-Chair (right photo) ___________________________________________

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t the 2009 Mid-Winter Institute, the Education Committee participated in a joint program with the Young Lawyers and Law Students Committees that featured a panel discussion on transitioning inhouse: skills that young lawyers need to develop before making the leap. In particular, Wayne Sobon of Accenture, Manny Schecter of IBM, Guy Donatiello of Endo Pharmaceuticals, James Carruth of Shell Oil, and Education Committee Chair Tim Meigs of BD discussed the type and nature of work perfomed by in-house counsel and the skills needed to work in-house. The panelists also discussed the skills a young lawyer/junior associate should develop if they want to go in-house in the future. Additional details are in the report by the Young Lawyers and Law Student Committees, but the Education Committee would like to thank Ehab Samuel of the Young Lawyers Committee for moderating this lively and interesting panel discussion. I. Practical Patent Prosecution Training for New Lawyers Program (“Boot Camp”). The Education Committee is actively planning for this year’s AIPLA Practical Patent Prosecution Training for New Lawyers Program (“Patent Boot Camp”), which is scheduled for August 26-28, 2009, at the Westin Alexandria. The Patent Boot Camp has been offered annually for several years, and includes instructional sessions and hand-on claims drafting workshops taught by skilled and experienced private and corporate practitioners. This popular three-day program hit a new record in August, 2008, with over 200 in attendance. We anticipate at least as much interest next year in view of the various actual and proposed changes in the PTO’s rules and the patent laws. We have started a new subcommittee for planning of the Boot Camp; please let us know if you would like to volunteer. Another way for committee members to get involved would be to attend or serve as an instructor at the Patent Boot Camp. Please be 52 

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sure to look for our upcoming announcements and encourage your friends and colleagues to attend. II. Trademark Boot Camp. To increase awareness of AIPLA as a preeminent organization and resource for U.S. trademark attorneys and to further the AIPLA strategic mission of enhancing knowledge for a diverse IP community, the Education Committee is assisting the Trademark Committee in organizing a one-day Trademark Boot Camp program, which will be held at the Westin Alexandria on June 17, 2009. Generally following the format of the Patent Boot Camp, the Trademark Boot Camp will cover basic trademark prosecution techniques and will be primarily directed to young attorneys or attorneys new to the area of trademark prosecution. Please contact one of us or Kim Van Voorhis if you are interested in getting involved. III. The Coordination Role of the Education Committee: The Education Committee will continue to serve as a communication, networking and teaching resource. The Committee plans to continue its liaison activities with the substantive committees and hold joint meetings with other Committees on topics of interest to a cross-section of attorneys. For example, in addition to the in-house panel discussion at the 2009 Mid-Winter Institute, the Education Committee joined with the Young Lawyers Committee at the 2008 Spring Meeting for a program on e-discovery. We worked with the Online Programs committee to develop the June 2008, live online seminar: “Initial ‘Inventor’ Interview: Practical Legal and Business Considerations,” which served as a “teaser” for the 2008 Patent Boot Camp. And, at the 2008 Annual Meeting, the Education Committee participated in a joint program with the Young Lawyers and Law Students Committees on how to get involved in the leadership of the AIPLA. Finally, the Education 2009 mid-winter institute issue


Committee is in the process of forming several subcommittees relating to educating law students, law school administrators, and others concerning careers in intellectual property law. Please let us know if you would like to volunteer. Once again, we are always looking for new ideas so let us know if you have any suggestions.

For information on the Education Committee, please contact: Tim Meigs (timothy_meigs@bd.com) or Troy Grabow (troy.grabow@finnegan.com).

IP Law Associations

Philip T. Petti, Chair (left photo) Fraser Roy, Vice-Chair (right photo) ___________________________________________

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ur committee meeting at the January 2009 Mid-Winter was used as a planning and organizational meeting resulting in the creation of three sub-committees (E-Mailer Sub-Committee, Micro-Site Sub-Committee, and Regional Roundtable Sub-Committee) and updating of AIPLA Committee Liaison appointments and Regional Association assignments. To briefly summarize our meeting:

Micro-Site Sub-Committee – Charged with maintaining accuracy of committee’s microsite, including developing and updating content with committee information, reports, and minutes and increase accessibility to regional and local associations. RegionalRoundtableSub-Committee–Charged with developing discussion topics and organizing and hosting regional roundtable discussions with leaders of regional and local associations using GoToMeetings, Webinairs, etc.

I. Welcome and introductions – We welcomed the members of the committee and discussed the charge of the committee to enhance the relationships and communications between the local and regional associations and III. AIPLA Committee Liaison Appointments the AIPLA. Identified the need for additional – Appointment of new liaisons for the following members, with two current openings for committee AIPLA Committees: Biotechnology, Diversity in IP members. Law, Law Student, Mentoring, Women In IP Law, Alternative Dispute Resolution, Online Programs, II. Sub-committee Creation and Professional Programs. – Identified specific sub-committees, sub-committee members, and associated responsibilities, focuses, IV. Roundtable Topic Development and purposes. These sub-committees included: – We briefly summarized our committee’s goal with the roundtables to enhance communication E-Mailer Sub-Committee – Charged with between geographically positioned regional and crafting e-mailers to the regional and local local associations and AIPLA. Committee members associations, including obtaining content for will host roundtables for their local and regional the emailer, such as Patent and Trademark associations and develop roundtable topics beneficial Boot camp updates, invitation to Women in IP to those associations. national dinner, and AIPLA’s request for support to oppose legislation or participate as a signatory A complete list of Sub-Committee assignments and to an Amicus brief. duties will be posted to our Committee’s microsite. 2009 mid-winter institute issue

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Membership

Jerry Selinger, Chair (left photo) Bryan W. Bockhop Vice-Chair (right photo) ___________________________________________

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he Membership Committee met during the MidWinter Institute. One topic we discussed was the ongoing Membership Video project, which is being coordinated by the Online Programs Committee. Shannon Bates, Vice Chair of the Online Programs Committee, attended the meeting. Cheryl Agris is spearheading the project for the Membership Committee. The outside consultant responsible for that project also attended the committee meeting and shared his insights and expertise with us. We discussed the issue of reduced dues for senior members who have not completely retired. It was noted that there is a mechanism to accommodate people having financial hardships; and information on this mechanism on renewal cards will be included. The Committee has been asked to

consider the possibility of creating an “associate membership” classification for non-attorneys who are not registered United States Patent Agents. Associate members could include anyone who has an interest in IP law. Jerry Selinger will take the laboring oar on this issue. Finally, we discussed programs for the Spring Meeting and the Annual Meeting. Our Spring Meeting will be a networking reception for solo and small firm practitioners. We had a very successful reception at the Annual Meeting, but thought west coast members who are solo or small firm practitioners might not have had an opportunity to participate in that event. We expect to have a sponsor for that event.

Online Programs

James E. Ruland, Chair (left photo) Shannon Beech, Vice-Chair (right photo) ___________________________________________

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ur Mission is to provide high quality, affordable preparation and presentation of live online CLE education by means of an online media. programs. Our program on PCT Updates on April 9, 2008 had the largest attendance for any regularly Our vision is to develop and prepare technological scheduled online program to date with 410 sites options and vendors to be able to work with other and 1272 attendees. Our program on A Practical groups within the organization to identify, develop, Response to KSR on August 6, 2008 was also very and provide, efficiently and effectively, online well received with 395 sites and 1189 attendees. program content to the AIPLA as a whole and to The program with the largest attendance to date is their constituents and to facilitate others in the our program on the proposed USPTO rules put on in AIPLA to utilize online media for program delivery. September 2007 with over 650 sites registered and 3,194 attendees. We conducted twelve programs EXECUTIVE SUMMARY in 2008, two of which were quick turnaround The focus in the past calendar year has been the programs, and we will be conducting eleven 54 

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scheduled programs in 2009 with at least one or two additional quick turnaround programs (with one such program being presented in January 2009). Moreover, the Committee is developing expertise in the delivery of live online programs through other low cost vehicles in cooperation with other AIPLA Committees. As the number of programs has grown, Online Programs has been working to increase not only the number, but the practice diversity of our coordinators. The Committee is initiating use of the TSC liaison program to accomplish this goal. Additionally, Online Programs continues to work to build and maintain an active and growing catalog of enhanced recorded content from the Stated Meetings, previous online programs and other AIPLA educational events. Further, in cooperation with the Membership Committee, Online Programs is creating a video for new and potential members to be placed on AIPLA’s website with capture for this video being performed at the 2009 Spring Meeting. Previously recorded online programs are being marketed for re-sale in packages during the winter of 2009. In sum, Online Programs is steadily expanding interactive content. SPECIFIC TASKS UPDATE AND GOING FORWARD The Online Programs Committee has taken on the following specific tasks to advance the overall goal of the Committee to put on high quality, diverse and financially responsible live, interactive programs. Our goal is to maintain our pace of about one program a month with the flexibility to do 1-3 additional rapid response programs. We are working with other substantive committees to develop online content.

already been completed for the Corporate Practice Committee. The subcommittee is working with the Electronic and Computer Law Committee to develop webinars for members of that committee. The goal is to have subcommittee members available as a resource to assist other AIPLA committees to use the Citrix platforms and reduce the workload on AIPLA headquarters staff. In response to the changing economic environment, starting on January 23, 2009 AIPLA is sponsoring a Career and Practice Management series of webinars that will be complimentary to all AIPLA members. This series will be performed on the GoToWebinar program with one program offered every 1-2 months. The first program on January 23, 2009 was very successful. The second program was held on March 19, 2009 and attendance grew from the January program. The work on reinvigorating the microsite is ongoing with a subcommittee ensuring that procedures, quality data and attendance parameters for completed programs are updated on an ongoing basis. We will also assist with identifying solutions and evaluating platforms for improving systems for improving customer services and processing customer requirements, such as CLE applications. OVERALL APPROACH: The Committee continues to pursue three major avenues of approach to providing online programs.

Recorded Live Presentations AIPLA is continuing to explore various platforms for With the license for the GoToMeeting and recording live meeting content, including recording GoToWebinar products we have been focusing from live streaming video of the meeting. on developing expertise on GoToWebinar and accompanying procedures through our Live Moderated Online Programs subcommittee. The general GoToWebinar The Committee continues to work with KRM to procedures are now complete. This subcommittee produce and deliver high-end, live, interactive has been assisting the Corporate Practice online CLE programs. The subject matter has Committee in performing online programs with Citrix been diverse  and the response has been pretty GoToWebinar. An appendix to the GoToWebinar uniformly positive. The financial results have procedures will be developed in cooperation with provided not only payback of direct costs, but have other AIPLA Committees as needed and has also made an overhead contribution to indirect 2009 mid-winter institute issue

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costs while providing a profit to AIPLA.  We have various programs already in different stages of development for 2009. We will try to maintain our pace of one program a month with the flexibility to do 1-3 additional rapid response programs. Internally Administered Web-based Programs Two trial programs utilizing Genesys were performed on May 15, 2007 and November 8, 2007. However, with the license from Citrix GoToWebinar, Genesys is not currently being utilized. Rather, we have started using Citrix GoToWebinar as our platform for future low cost programs with the first such program conducted February 14, 2008. We have appointed Committee members under the guidance of the Chair and Vice-Chair to help with coordinating this class of online programs, and as numbers increase likely several members will rotate through this role for respective programs.

We are continuing to work with the Corporate Practice Committee and the Electronic and Computer Law Committee to put on regular programs for members of these committees on topics of interest. The following is our schedule of upcoming programs for 2009: ONLINE PROGRAMS SCHEDULE May 6, 2009 - Initial Considerations in Seeking Trademark Protection Cooridinators: Jim Ruland, Cheryl Agris June 3, 2009 - Patent Prosecution Highway Cooridinators: Shannon Beech, Jennifer Rogers July 1, 2009 - Confidentiality Agreements Cooridinators: Noel Humphreys, Tracey Harrach

August 5, 2009 - User Generated Content PROGRESS REPORT ON LIVE, INTERACTIVE Cooridinators: Darren Frankling, Brian Bockhop ONLINE PROGRAMS: September 2, 2009 - Subject Matter Eligibility Financials Cooridinators: Shannon Beech, Cheryl Agris We have revised the current pricing structure with a goal of obtaining a break-even point at about 100 October 7, 2009 - Foreign Law and Trademarks sites. We are continuously monitoring our financial Cooridinators: Jim Ruland, Michael Ballard returns to ascertain the economic success of the programs. November 4, 2009 - Year End Review Cooridinators: Brad Chin, Arlene Neal Quality (Absolute) The reviews from the attendees through the December 2, 2009 - Email Ethics evaluations have been very good, with a high Cooridinators: Phil Petti, Hetal Kushwaha percentage filling out the online evaluation (compared with the percentage who evaluate the We are working with the Trademark Committee stated meetings). The quality has been about the to present a program on a quick turnaround basis after the anticipated Bose decision. same or better than the stated meetings. The Programs A history of the live interactive seminars that Online Programs has completed since December 2004 is available on the committee microsite.

We are also anticipating a quick turnaround program on the patent reform bill when it comes out. We continue to have dialog with various committees about content they would like to see and/or help develop.

Future We are working with the IP Law Association Committee to explore promoting programs to nonAIPLA groups. We are working toward a long-term goal of a program every month while avoiding the stated meetings.

To increase coordinators and to better the content of programs to the varied AIPLA membership, Online Programs is initiating the TSC Liaison Program with the collective trademark committees to expand the online offerings to members in the trademark practice groups.

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IP Practice in Europe

James D. Carruth, Co-Chair (left photo) Jonathan M. Madsen, Co-Chair (right photo) ___________________________________________

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he IP Practice in Europe Committee works to establish and maintain relations with professional societies in Europe whose members are interested in intellectual property law. Committee members study European 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 Europe, if called upon to do so. This Committee coordinates its activities with the International and Foreign Law Committee. The Committee has been active in working to accomplish committee objectives. At the Mid-Winter Institute we held a CLE session focused on IP Enforcement in Europe, where a panel of speakers presented on topics such as: EPO Opposition Practice vs. Litigation; The Enforcement Directive; Recent Developments in European IP Protection; and Managing European Patent Litigation from a US Perspective.

amicus submittals in pertinent proceedings involving European IP practice. For example, Committee members have worked to provide comments to be submitted on behalf of AIPLA at the request of the European Commission and with regard to the recent Preliminary Report on the European Commission’s Pharmaceutical Sector Inquiry. In addition, Committee members have provided feedback for an amicus submission in the present matter before the EPO Enlarged Board of Appeals regarding the patentability of computer programs in Europe. The Committee continues to seek the input of its members to help AIPLA influence the ever-changing landscape of intellectual property law.

At the Spring Meeting, the Committee has organized a special Joint CLE session with the Chartered Institute of Patent Attorneys (CIPA). Members of CIPA will present topics about Practical European Patent Issues. In return, our Committee members will present topics to CIPA on issues relative to current US patent practice. The Joint CLE session marks the second time in recent years that our Committee has teamed with CIPA to provide broadDuring the first week of March (March 2 – March based educational training about IP matters that 6), the Committee is holding its second Annual span the Atlantic. European Trip. This year more than twenty delegates representing both the Committee and To keep on pace with our goal of providing CLE AIPLA in general will travel to Europe to meet training at every Committee meeting, we plan on with various European intellectual property law holding another Joint Committee CLE session at organizations, such as: the Chartered Institute the 2009 Annual meeting with the Biotechnology of Patent Attorneys based in the UK; the French Committee and the IP Practice in Japan Committee. Corporate Patent Attorney’s Association; the We also plan to hold another separate educational German Patent Attorneys Association, the European session just with our committee. Patent Office, and the Swiss and European Patent Attorneys Association (VESPA). The delegates will give formal presentations on various IP topics. The Committee has been and will continue to gather information and commentary for inclusion in possible 2009 mid-winter institute issue

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IP Practice in Japan

David Schnapf, Co-Chair (left photo) Mark A. Guetlich, Co-Chair (right photo) ___________________________________________

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he IP Practice in Japan Committee held its customary one and a half day “premeeting” prior to the AIPLA’s 2009 Mid-Winter Meeting in Miami. The pre-meeting, held on Tuesday and Wednesday January 27 and 28, 2009, was attended by more than 25 committee members and a dozen delegates from Japan. This is considered to be a solid turnout for the committee’s Mid-Winter pre-meeting, especially in a down year. The Japanese delegates included representatives from the Japan Patent Attorneys Association (JPAA) and AIPPI/JFBA Japan. The meeting was presided over by Committee CoChairs David Schnapf and Mark Guetlich. As usual, committee members and Japanese delegates alternated giving presentations on topics concerning US and Japanese law and practice of interest to the group. Copies of the presentation materials from the pre-meeting have been posted on the committee section of AIPLA’s web site. After welcoming remarks from both sides, the Tuesday morning session included presentations by Ranja Sourirajan (2008 Federal Circuit Review), Tom Engellener (Mars v. Coin Acceptors – Damages where patent held by subsidiary), Sumiko Kobayashi (Appeal Proceedings before the JPO), Mercedes Meyer (Update on USPTO Rulemaking Initiatives), Yoshi Inaba (Correction of Claims Against Invalidation Defense), Shinichi Kimura (Invalidation before JPO) and Doug Sorensen (Texas Venue Decisions).

Takamura (Amendment Procedure after Invalidating Decisions in Invalidity or Opposition Proceedings), Takahiro Fujioka (Attorney-Client Privilege from JP Perspective), Joe Calvaruso (Qualcomm Decision and Inducement) and Austin Renfroe (Comparison of U.S. and European eBay Decisions). The group then adjourned for dinner at Texas de Brazil. Thanks to Chris Fildes for organizing the dinner event. The meeting resumed Wednesday morning with presentations by Richard Beem (Obviousnesstype Double Patenting), Darryl Webster (Patent Term Adjustment), Masashi Yanagida (Accelerated Examination and Super Accelerated Examination) and Bill Boshnick (U.S. Inter Partes Reexamination). The session ended with a second panel discussion on the “Intersection of Trademarks, Copyrights and Design Patents,” with panelists Mark Guetlich (moderator), Fumihiko Hirose, Dave Hill, George Lewis and Kozo Yabe. This year’s Mid-Winter pre-meeting was considered to be very successful by all those who attended. The committee wishes to thank all those who gave presentations or who helped with the events. Questions regarding the committee and its activities can be addressed to either of the current Co-Chairs David Schnapf or Mark Guetlich.

The committee joined with the Electronic and Computer Law and the IP Practice in Asia Committees for a two-hour education meeting on software patents held on Thursday, January 29. After a committee sponsored lunch, the afternoon There is a separate report for that joint meeting. session opened with a panel discussion on “Software and Business Method Patents,” with It is with deep regret that the committee recently panelists David Schnapf (moderator), Hung learned of the death of Shinichi Kimura, who gave Bui, Kay Konishi, Shoiichi Okuyama and Neil an informative presentation at the pre-meeting. Henderson, followed by presentations by Steve Mr. Kimura was a frequent attendee and presenter Meyer (ITC Exclusion Orders), Masaharu at committee events and will be missed by all. 58 

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The committee is currently working on its annual plan to hold a meeting at the AIPLA Spring Meeting trip to Tokyo. In view of the effort involved in in San Diego. planning the Tokyo trip, the committee does not

IP Practice in Latin America

James A. Larson, Chair (left photo) Roberto Capriotti, Vice-Chair (right photo) ___________________________________________

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t the Mid-Winter Meeting, the IP Practice in Latin America Committee (“LAC”) conducted a one-hour business meeting. The meeting was chaired by Mr. James Larson.

Following the presentation, the chair introduced to the committee the concept of starting two subcommittees, one focused on Mexico/Central America, the other focused on South America. The role of the committees would be to report on changes in laws, regulations, case law, IP trends, etc. in those regions. The committee discussed the workings of such subcommittees and how often each subcommittee would report.

The meeting included a presentation by Mr. Richard Browne of De Sola, Pate & Browne of Caracas, Venezuela on recent changes in Venezuela’s IP laws along with general discussion of the same. The presentation was well received, and the LAC wishes to thank Mr. Browne for his Finally, a brief update on the Latin America committee time and insights. trip was provided, along with a discussion of upcoming topics for committee meetings.

International Education

William S. Boshnick, Chair (left photo) Marc Hubbard, Vice-Chair (right photo) ___________________________________________

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n different occasions in 2008, members of the Committee met with delegates from People’s Republic of China and South Korea to discuss US intellectual property policies and regulations and US governmental support and protection of intellectual property. For the upcoming year, the International Education Committee intends to continue to meet with such delegates.

session, moderated by Vice-Chair Marc Hubbard, was entitled, “PCT Issues and International Education Joint Committee Education Session: A Global Patent Application.”

For the 2009 Mid-Winter Institute, the International Education Committee conducted a joint session with the Chemical Practice Committee and International and Foreign Law Committee, entitled For the 2008 Annual Meeting, the Committee held “The Effect of Recent Changes in the Obviousness/ a well-attended joint CLE educational session with Inventive Step Analysis on the Chemical and the PCT Issues Committee. The program for the Pharmaceutical Industries – An International 2009 mid-winter institute issue

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Perspective.” This panel discussion was moderated by Mr. Michael Dzwonczyk of Sughrue Mion PLLC, and international panelists included Dr. Denis Schertenleib of Hirsch & Partners, who provided a French perspective; Mr. David Wilson of Herbert Smith, who provided a UK perspective; Mr. András Kupecz of Freshfields Bruckhaus Deringer LLP, who provided a Dutch perspective; and Michael E. Charles of Bereskin & Parr, who provided a Canadian perspective.

series of intellectual property lectures in Asia, and is currently directing its attention to the development of intellectual property laws and regulations in the African continent.

The International Education Committee, in response to requests, arranges seminars and lectures domestically and in foreign countries in order to educate those nations on the U.S. intellectual property law system. This committee also coordinates its activities with the other foreign For 2009, the International Education Committee law committees. intends to continue to make arrangements for a

International and Foreign Law Thomas T. Moga, Chair (left photo) Maria Eliseeva, Vice-Chair (right photo) ___________________________________________

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he International & Foreign Law Committee held a very successful joint committee meeting at the Mid-Winter Institute with the Chemical Practice Committee and the International Education Committee. The title of the program was “The Effect of Recent Changes in the Obviousness/ Inventive Step Analysis on the Chemical and Pharmaceutical Industries – An International Perspective.” The program was moderated by Mr. Michael Dzwonczyk of Sughrue Mion PLLC. The panel included Michael E. Charles of Bereskin & Parr (Canada), András Kupecz of Freshfields Brukhaus Deringer, LLP (Germany), Denis Schertenleib of Hirsch & Partners (France), and David Wilson of Herbert Smith (United Kingdom).

The International & Foreign Law Committee will hold a joint committee meeting with the Emerging Technologies Committee at the Spring Meeting. The topic will be the state of software protection in China, Europe, India, Latin America, and the US. Looking ahead to the Annual Meeting, the I&FLC is assisting the Industrial Designs Committee and the Copyright Law Committee in formulating a program focused on the very timely and interesting topic of the intersection of design patent, copyright and trade dress laws and practice. We hope to see all of you at the Spring Meeting in San Diego.

Chemical Practice

Jeffrey A. Lindeman, Chair (left photo) Michael R. Dzwonczyk, Vice-Chair (right photo) ___________________________________________ See International and Foreign Law Committee for report. 60 

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Patent Cooperation Treaty Issues Carl Oppedahl, Chair (left photo) Jay A. Erstling, Vice-Chair (right photo) ___________________________________________

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he Corporate Practice Committee and the A PCT applicant may now obtain SISs, which are PCT Issues Committee met in joint session. supplemental searches in addition to the search carried out based upon the initial filing of a PCT Samson Helfgott was thanked for his service to application. This might for example permit an the PCT Issues Committee as chair. Succeeding applicant to obtain art in different languages than him as chair is Carl Oppedahl, and Jay Erstling is the language or languages initially searched. now vice-chair of the PCT Issues Committee. Members of the committees compared their Matthew Bryan of WIPO presented on recent experiences with various International Searching changes and developments for PCT. One Authorities, particularly Korea. important recent development is the availability of Supplemental International Searches.

Corporate Practice

Chen Wang, Chair (left photo) Georgann S. Grunebach, Vice-Chair (right photo) ___________________________________________ Please see Patent Cooperation Treaty Issues Committee for report.

Copyright Law

Elizabeth Ann Morgan, Chair (left photo) Harry M. Barton, Vice-Chair (right photo) ___________________________________________

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o begin the year, the Copyright Law Committee is working with members of the AIPLA’s Professional Programs Committee to coordinate 1.5 hours of CLE presentation related to copyright law for the Spring Meeting, to be held in San Diego from May 13-15, 2009. The Committee also anticipates coordinating copyright related programming for the

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AIPLA’s 2009 Annual Meeting. Specifically, the Copyright Law Committee is collaborating with the Trademark Law, Anti-Counterfeiting and Anti-Piracy and Industrial Design Committees to plan a program concerning product configuration protection from a multidisciplinary approach, specifically related to funcitonality. In addition to these educational program aipla bulletin

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efforts, the Committee will work with the Trademark committees on strategic planning and increasing membership and participation in AIPLA by copyright and trademark practitioners as well as academics. The Copyright Law Committee participated with the Trademark committees in the past year to survey AIPLA’s academic community to seek ideas for programming, prospective legislation and additional participation. Members of the committee are encouraged to contact the chair, Elizabeth Ann “Betty” Morgan and the vice chair, Harry M. Barton, with ideas for programs and to volunteer for projects such as monitoring legislation. In early 2009, the Copyright Law Committee spearheaded the process of collecting input from AIPLA members related to the Copyright Office’s Notice of Proposed Rulemaking for Exemption to Prohibition on Circumvention of Copyright Protection Systems for Access Control Technologies. The Copyright Office solicited comments from interested parties related to proposed exemptions to the Digital Millennium Copyright Act’s Anti-Circumvention provisions for certain classes of works. After soliciting input from the members of the Copyright Committee, Betty Morgan and Harry Barton drafted a resolution concerning the AIPLA’s positions on a number of the proposed exemptions, which Betty Morgan presented to the AIPLA Board at the MidWinter Institute. The Board did not formally adopt the resolution, but Todd Dickenson sent correspondence to the Copyright Office’s General Counsel expressing the AIPLA’s positions concerning the proposed exemptions. The Copyright Law Committee will continue to actively seek such opportunities to make the AIPLA’s positions on proposed legislation known.

At the 2009 Mid-Winter Institute, the Copyright Law Committee, along with the Anti-Counterfeiting and Anti-Piracy Committee and various Trademark Committees co-hosted a series of presentations on a variety of topics of interest to trademark, copyright and design lawyers. First, Betty Morgan led a discussion of product configuration protection from a multidisciplinary approach. Out of this meeting, the Committees intend to develop a program for the AIPLA Annual Meeting on this topic. Next, Amy Cahill of the Anti-Counterfeiting and AntiPiracy Committee presented an overview of S. 3325, the Prioritizing Resources and Organization for Intellectual Property Act (“the PRO-IP Act”), signed into law in October 2008. This legislation strengthens both civil and criminal laws against counterfeiting and piracy. Specifically, the Act increases statutory damage awards in civil counterfeiting cases, it strengthens remedies available in the prosecution of criminal cases involving counterfeiting and piracy, it enhances resources (personnel, training, and equipment) for Department of Justice programs that combat IP theft, and makes permanent the Administration’s Strategy Targeting Organized Piracy (STOP!) Initiative and its inter-agency IP coordination efforts. Next, Deirdre Sheridan gave a brief presentation regarding trademark damages, which included an update on damages case law and a discussion regarding willfulness as a prerequisite to damages.

Women in IP Law

Daphne C. Lainson, Chair (left photo) Carey C. Jordan, Vice-Chair (right photo) ___________________________________________

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early 100 participants gathered at the Daphne Lainson, chair of the Women in IP Law January AIPLA joint meeting of the Women Committee and Diallo Crenshaw, Chair of the in IP Law and Diversity Committee Meeting. Diversity in IP Law Committee provided updates 62 

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on the activities of their committees. Check out the committee websites for information on these activities! Special thanks to Howrey, who has graciously sponsored this breakfast meeting for many years!

establish a plan to build their own practice that they can see with one, three and five year goals. Time should be taken every day to build your practice – this is paying yourself first! Manage your workload so that you can invest in your future.

• In Slow Times: Credential yourself. Learn, write articles, and attend business meetings. Sharon R. Barner, a partner with Foley & Lardner, Create efficiencies in your work, which will LLP and Chair of the firm’s 250 member Intellectual be needed to sustain your career. Be the Property Department, spoke on “Management architect of your own career. Have a Plan B. Tales from the Front Lines.” Although it is not possible to do justice to her talk in such a short format, Ms. Barner covered the following essential • Be Bold: Manage yourself and others by seeking and providing regular, real-time points: transparent feedback and constructive criticism. Flexibility in the legal practice will • Welcome to the Future: During the last 15 help firms and attorneys get through these years, the legal profession has been in an tough times. Technology doesn’t require unsustainable growth pattern. So how do you attorneys to be in the office every day. sustain your career path in these times? • Have a Forward Focus: The conversations • Be a good Corporate Citizen. Be a part of your community at large – not just the legal need to be around getting out of the denial community. Good citizens are needed now phase and moving on. Get back to delivering more than ever. good quality legal service and value to the clients. A strict focus on numbers needs to be balanced with the quality of work and quality • Connecting with Millenials: Harkening back to the qualities of old, a profession that allows us of life for all firm members. A law firm’s long to use our scientific abilities and service abilities term viability will depend on effective lawyer will help us to reconnect with Millenials. utilization, management of and investment in people, and clearly communicated expectations and performance feedback. Ms. Barner’s talk was followed by a vigorous question • Build a Sustainable Business, Practice and and answer session. Our special thanks to Ms. Barner Career: These things can and must be taught for sharing her valuable insights with us. to others in the firm. Each person needs to

Diversity in IP Law

Diallo Crenshaw, Chair (left photo) Neema R. Desai, Vice-Chair (right photo) ___________________________________________ Please see Women in IP Law Committee for report.

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Electronic & Computer Law

Manny Schecter, Chair (left photo) Jacques L. Etkowicz, Vice-Chair (right photo) ___________________________________________

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t the 2009 Mid-Winter Meeting, the Electronic and Computer Law, IP Practice in Japan, and IP Practice in the Far East Committees hosted a joint two-hour session titled “Patentability of Computer Implemented Inventions Domestically and Internationally.” Skip Fisher and Jim Hallenbeck (Schwegman, Lundberg & Woessner) were the principle organizers of the session and Mr. Hallenbeck served as the session moderator. The distinguished speakers included Professor Ann McCrackin (Franklin Pierce Law School and Schwegman, Lundberg & Woessner), Doctor John Collins (Marks & Clerk), Kazunori Kurusu (Kurusu Patent Law Office), and Robin Zhao (Jeekai & Partners). The focus of the session was a comparison of the scope of patentable subject matter in the US, Europe, Japan, and China. Ms. McCrackin opened the presentations with a review of US jurisprudence relating to computer implemented inventions. After reviewing 35 USC 101, she explained that the relevant USPTO Examination Guidelines are currently being revised. Ms. McCrackin then briefed the audience on In re Bilski. In Bilski, the CAFC recently held an abstract claim to a method of managing commodity consumption risk to be outside the scope of patentable subject matter and established the “machine or transformation” test for process claim patentability. In addition, the CAFC held that mere field of use limitations and insignificant extra-solution activities are insufficient to render patentable an otherwise unpatentable claim. Ms. McCrackin explained that subsequent lower court and USPTO Board of Patent Appeals and Interferences decisions have inconsistently interpreted the impact of Bilski on the patentability of machine-readable medium claims – even though such claims are not drawn

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to processes. She also referenced In re Nuitjen as establishing that claims drawn to signals are not patentable. Mr. Collins followed with a review of current jurisprudence in Europe. Mr. Collins cited the Comvik case for the current test for patentable subject matter in the EPO, requiring both technical content and a technical solution to a technical problem (ignoring non-technical features). He then contrasted the Comvik case with the status of the law of EPO member states Germany, France, and the United Kingdom. In an attempt to harmonize differences in the state of the law, particular with respect to the UK, Alison Brimelow, president of the EPO, recently referred a series of questions relating to the patentability of computer programs to the enlarged EPO Board of Appeals. Mr. Collins also indicated that claims directed to a computer program product, a computer readable medium having a computer program thereon, and a signal carrying a computer program are all patentable subject matter in the EPO. The claim adjudicated in Bilski was thought unlikely to qualify as patentable subject matter in the EPO or the major member states. Mr. Kurusu summarized current jurisprudence in Japan. He explained that an invention in Japan must be technical. In addition, a software invention must either employ laws of nature or employ hardware resources interrelated with the software. Because business methods do not employ the laws of nature, business method claims require hardware recitations to be patentable. Mr. Kurusu indicated that claims directed to a computer program product or a computer readable medium having a computer program thereon may be patentable, but that claims directed to a signal carrying a computer 2009 mid-winter institute issue


program are not patentable in Japan. The claim respective jurisdictions. In a demonstration of adjudicated in Bilski was thought unlikely to the inconsistency across jurisdictions, one claim which was found patentable in the US was also qualify as patentable subject matter in Japan. thought to be of patentable format in China, but Mr. Zhao completed the presentations with a not of patentable format in the EPO or Japan. review of current jurisprudence in China. Mr. Zhao The session concluded with the panel responding indicated that an invention in China must be a to questions from the audience. new technical solution using technical means and achieving a technical result. He explained that Related Matters claims directed to a computer program product, The Electronic & Computer Law Committee is a computer readable medium having a computer working with the Amicus Committee, Patent Law program thereon, and a signal carrying a computer Committee, and others on input for an AIPLA program are not patentable in China. The claim amicus brief relating to the petition for cert in In adjudicated in Bilski was thought unlikely to qualify re Bilski. Also, the Electronic & Computer Law Committee is working with the Amicus Committee, as patentable subject matter in China. IP Practice in Europe Committee, and others on At the conclusion of the presentations, Mr. input for an AIPLA submission to the enlarged Hallenbeck presented claims recently adjudi- EPO Board of Appeals relating to the referral on cated in the US and asked the non-US panelists software patentability by Alison Brimelow. to speculate as to their patentability in their

Emerging Technologies

Raymond Van Dyke, Chair (left photo) Brian H. Batzli, Vice-Chair (right photo) ___________________________________________

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t the 2009 Mid-Winter Institute, the Emerging • Mr. Bryan Geurts (Chief Patent Counsel, Technologies Committee conducted an Goddard Space Flight Center, NASA). Mr. Geurts’ spoke on the results, methodology educational meeting followed by a brief business and licensing structure associated with a meeting. The meeting was chaired by Mr. Brian recent patent license auction for underutilized Batzli, the Vice Chair of the Emerging Technologies Committee. Goddard Space Flight Center patents. After the welcomes and introductions, Mr. Batzli Outlines of the presentations will be posted on introduced two speakers from NASA’s Goddard the Emerging Technologies Committee website shortly. The presentations were both well received, Space Flight Center: and the Emerging Technologies Committee wishes • Ms. Nona Minnifield Cheeks (Director to thank Ms. Minnifield Cheeks and Mr. Geurts for Innovative Partnerships Program Office, their contributions. Goddard Space Flight Center, NASA). Ms. Minnifield Cheeks described a number of At the conclusion of the educational portion of the programs included within the Innovative the meeting, Mr. Batzli led a brief discussion of Business Practices group at the Goddard the Emerging Technologies Committee plans for 2009. In the coming year, the Committee expects Space Flight Center. 2009 mid-winter institute issue

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to continue to study and provide educational be held at the Spring Stated meeting. The joint opportunities. A joint educational meeting with meeting will focus on emerging technology updates the International and Foreign Law Committee will from around the world.

Patent Agents

John Orange, Chair (photo right) Esther M. Kepplinger, Vice-Chair (photo left) ___________________________________________

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he Patent-Relations with the USPTO and 6. an increase in the number of applicants (FY Patent Agents Committees held a joint meeting. ’08 - 1905 applicants) have used the provisions Continuing the tradition of having a USPTO official of Rule 138(d) to abandon applications before report on the status of operations at the USPTO, examination that were filed on/after December Robert Oberleitner, Acting Deputy Commissioner 8, 2004 and obtain a refund of any search and for Patent Operations, provided an informative excess claims fees paid in that application; and review of PTO operations. A copy of his powerpoint 7. those applicants electing accelerated presentation is posted on our committee page. examination can expect an average pendency of 194 days to complete prosecution, and those Some of the highlights of USPTO patent activities applications experienced an allowance rate of include: 69.7% in FY ’08. 1. a growth of 6.1% in the number of patent applications filed in FY ’08 compared to FY ’07, Our committee prepared comments in response although the number of applications filed in the to the USPTO request for views on deferred first quarter of FY ’09 was down 1% from the examination. While AIPLA has traditionally opposed deferred examination due to concerns over delayed same quarter last year; determination of the scope and content of patent 2. filings of RCEs have tripled in the last ten years rights and the increased uncertainty that such delay creates, AIPLA expressed a willingness to take a to 24% of filings in FY ’08; fresh look at the issue given the USPTO’s continuing 3. the examining staff now totals over 6,000 struggle with pendency. A copy of the text of those examiners with a 9.5% attrition rate in FY ’08 - comments is posted on the AIPLA website. the average number of years of service for each examiner is 5.73 years; 4. the rate of allowance of applications continues to fall to 42% in the first quarter of FY ’09 from about 72% in FY ’00 - among other adverse affects, this reduces the fee income to the USPTO for issue and maintenance fees; 5. the rate of affirmance and affirmances-in-part at the Board of Patent Appeals has grown to 74% in FY ’08 from about 40% in FY ’02;

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Patent-Relations with the USPTO Charles E. Van Horn, Chair (left photo) Gregory D. Allen, Vice-Chair (right photo) ___________________________________________ Please see Patent Agents Committee for report.

Young Lawyers

Alyson Barker, Co-Chair (left photo) Michael A. Valek, Co-Chair (right photo) ___________________________________________

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he Young Lawyers Committee had a very productive meeting in Miami. Thanks to the organizational efforts of Ehab Samuel, the YLC hosted a Joint Meeting with the Law Student Committee on what young lawyers need to know if interested in a future career in-house. Ehab lined-up an all star group of panelists, including Manny Schechter (IBM), Guy Donatiello (Endo Pharmaceuticals), Wayne Sobon (Accenture), Timothy Meigs (Becton, Dickinson & Co.), and James Carruth (Shell Oil Company). Ehab served as moderator and had a series of probing questions for our panelists that led to an interesting and informative discussion. The YLC also announced plans to increase opportunities for YLC members to interact with members of the Electronics and Computer Law Committee. The ECLC requested YLC volunteers to help coordinate a program on green technologies at the 2009 Annual Meeting and over 30 YLC members answered the call. The YLC and ECLC will continue to find opportunities for all of our interested volunteers. Thank you to Michael Nguyen and David Potashnik, our liaisons to the ECLC, for being proactive in reaching out to the ECLC. We encourage all of our liaisons to follow Michael and David’s lead and reach out to committee chairs to identify opportunities where you and other members of the YLC can get involved. 2009 mid-winter institute issue

The YLC is currently in the grading period for the Annual Giles Rich Moot Court competition. Special thanks to Kimberly Van Voorhis for graciously volunteering to continue her tenure as National Director of the competition. With Kim at the helm the competition is always a great success. In addition, thank you to all of our regional directors and graders for taking time to participate in the competition. Plans are already underway for next year’s moot court competition. If you are interested in helping to co-author the problem for next year, please contain Alyson Barker (barkera@howrey. com) or Michael Valek (mvalek@velaw.com). The Watson Writing Competition is just around the corner and we have two new co-chairs, Jen Kuhn and Janet Gongola, for the YLC subcommittee that oversees the judging of submissions. Thanks Jen and Janet for volunteering to head this up. As we move into Spring, the YLC has an exciting line-up of programs at the Spring Meeting in San Diego. Following a plenary session on Best Practices in Taking and Defending Depositions (moderated by YLC member Stephen Stout), the Young Lawyers Committee and the Education Committee will hold a joint-meeting to provide a hands-on opportunity for improving your deposition skills. We will have mock witnesses and a mock set of facts and YLC members will have an opportunity aipla bulletin

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to depose and defend the witnesses. Seasoned If you are interested in helping to organize this litigators will be on-hand to provide constructive program, please let Alyson or Mike know. feedback for improving your deposition skills.

Law Students

Christopher McKeon, Co-Chair (left photo) Jesse Ormsby, Co-Chair (right photo) ___________________________________________

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urrently the Law Student Committee is developing a network of student representatives at law schools across the country to increase involvement in AIPLA. Student representatives will be responsible for: 1. Correlation between your organizations and AIPLA;

student

IP

2. Communicating of-interest information from the Student Committee to your student body; 3. The local promotion of IP scholarship and student interest in IP law by hosting at least one event at your law school per semester as an AIPLA event. These can be as simple as an informational lecture from a professor or practicing IP attorney, a meet-and-greet with local practitioners, etc. The event may also be co-hosted with your local IP student org, and law schools in the same city may work together if they’d like; and 4. Promoting student AIPLA membership. We have volunteers from the following schools: University of Virginia School of Law Santa Clara University School of Law Texas Wesleyan School of Law University of Michigan Florida Coastal School of Law Southwestern Law School 68 

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George Washington University Law School Michigan State University Tulane University Law School Chicago-Kent College of Law George Washington University Law School Suffolk University Law School Golden Gate University School of Law St. John’s University School of Law University of Houston Law Center American University, Washington College of Law Indiana University School of Law, John Marshall Law School Yeshiva University, Benjamin N. Cardozo School of Law Abraham Lincoln Law School Stanford University Law School University of Maryland School of Law DePaul University College of Law New York Law School University of Baltimore, School of Law Case Western Reserve School of Law University of San Francisco University of the Pacific, Mc George School of Law William Mitchell College of Law Texas Tech School of Law South Texas College of Law Brooklyn Law School New York Law School We are always looking for lawyers who are interested in working with the students. If you are interested in presenting or participating in student events at any of these schools, please email the Student Committee Co-Chairs. 2009 mid-winter institute issue


Alternative Dispute Resolution Rex B. Stratton, Chair (left photo) Harrie R. Samras, Vice-Chair (right photo) ___________________________________________

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he ADR committee reviewed and discussed at the proposed neutral certification program for ADR mediators who are AIPLA members and who have committed to mediation training and experience. The committee also discussed implementation of a new registry. A draft report was presented to the committee for review and comment and will be revised and then presented to the committee for further before the 2009 Spring Meeting in San Diego, California. The draft, as revised, is posted on our microsite for comment by active committee members before the Spring Meeting.

The committee also discussed the need to facilitate ADR-specific CLE that is not redundant of previous programs and to broaden the base of educational opportunities offered for ADR specific education. The Committee discussed presenting a two hour joint committee meeting with the Corporate Practice Committee at the 2009 Spring Meeting and to participate in a three hour breakout with the Trademark Committees at the 2009 Annual Meeting. The Committee also addressed doing a three hour breakout session at the 2010 Mid-Winter Institute at La Quinta.

Biotechnology

DeAnn F. Smith, Chair (left photo) Mercedes K. Meyer, Vice-Chair (right photo) ___________________________________________

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he Patent Law and Biotechnology Committees held a joint meeting focusing on the recent en banc Federal Circuit opinion, In re Bilski. Interestingly enough, our joint Committee Meeting was held the day after a petition for certiorari was filed with the Supreme Court raising two basic questions. First, whether the Federal Circuit erred by holding that a process must be tied to a particular machine or apparatus or transform a particular article to be eligible for patent protection. Second, whether the machine or transformation test for patent eligibility contradicts the clear Congressional intent that patents protect methods of conducting business under 35 U.S.C. § 273.

his presentation on what might happen to business methods and software after In re Bilski. Dr. Hans Sauer spoke to the implications that Bilski might have on biotechnology inventions. John Love addressed the Patent Office’s need to have clear standards for an examining core exceeding 6000 Examiners.

Mr. Forrest is a registered patent attorney and shareholder of Schwegman, Lundberg & Woessner. His practice is focused on patent prosecution for complex technologies, IP counseling and IP strategy formation, and opinion work and licensing. He is currently Vice Chair of the AIPLA Electronics and Computer Law Committee, and is an active Three speakers addressed In re Bilski from speaker and publisher on all areas of intellectual different perspectives. Bradley Forrest focused property protection. 2009 mid-winter institute issue

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As part of his presentation, Mr. Forrest gave a comprehensive review of how the Bilski opinion dealt with the early decisions of Benson, Flook and Diehr over patentable subject matter. Mr. Forrest highlighted in his presentation that it was only 35 years ago (in 1972) when the Benson Court grappled over whether software should be patentable at all. Relying on the Supreme Court in Gottschalk v. Benson, the Bilski majority held that a claimed process is surely patent-eligible under §101 if it is tied to a particular machine or apparatus, or transforms a particular article into a different state or thing. The Federal Circuit further acknowledged that a claim might contain statutory subject matter if it describes how to select the appropriate margin of safety, such as adjusting an alarm system or other variables articulated in Flook. Mr. Forrest further identified the tests rejected by the Bilski court including the Freeman-WalterAbele test (e.g., is the recited algorithm applied in any manner to physical elements or process steps?), and the State Street Bank test (e.g., does the transformation of data produce a useful, concrete and tangible result?). In his discussion on In re Abele, Mr. Forrest pointed out that the otherwise unpatentable display of the value of a difference as a point in a picture may be made patentable by displaying the same on a display device. He pointed out that the court noted that the transformation could apply to intangible subject matter representative of or constituting physical activity or objects. Mr. Forrest also spoke to field of use limitations and the possibility that such limitations may be considered a pre-emption. Finally, Mr. Forrest reviewed Board cases since Bilski and provided advice on what to claim now, particularly in the high tech area and until we receive further guidance. Hans Sauer, Ph.D., J.D., offered a perspective from the biotech industry on Bilski. Dr. Sauer is the Associate General Counsel for Intellectual Property for the Biotechnology Industry Organization (BIO), a trade organization representing more than 1200 biotechnology companies, academic institutions, state biotechnology centers and related organizations across the United States and in more than 30 other nations. 70 

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Dr. Sauer began his presentation with a comparison of the clearly limited scope of the claims of Diehr with the broadly claimed, abstract and mathematical algorithm of Benson. Dr. Sauer then addressed the issues presented in Bilski: (1) whether the claim recites a fundamental principle and (2) if so, does the claim pre-empt substantially all uses of that fundamental principle. He spoke to how the court’s opinion linked preemption to a machine or transformation, and discussed what is not preempted. Dr. Sauer commented on the view of several of the Supreme Court Justices dissenting in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. that the claim to a method for detecting a deficiency of cobalamin or folate in warm-blooded animals was unpatentable subject matter. He also spoke about certain case law decided since Bilski including Classen v. Biogen Idec and Ex Parte Roberts. He introduced the Committees to some of the Patent Office’s efforts to implement Bilski (which was further expounded upon by our last speaker, John Love) and discussed in detail the Prometheus v. Mayo appeal and different positions taken by the Amicus Briefs submitted. Dr. Sauer mentioned the pending appeal in Ariad v. Lilly and noted that there were many questions raised by Bilski. John J. Love was named Deputy Commissioner for Patent Examination Policy for the United States Patent and Trademark Office (USPTO) in January 2007. He is responsible for changes in patent practice, rules of practice and procedures, examining priorities, and classification of technological arts. He leads the operations of the Patent Legal Administration, Patent Cooperation Treaty (PCT) Legal Administration, and the Office of Petitions. Mr. Love’s presentation went straight to the heart of the Patent Office’s attempt to implement the Bilski decision and its struggle to draw lines around whether a fundamental principle recited in a claim would “pre-empt substantially all uses of that fundamental principle if allowed.” Mr. Love informed the Committees that the USPTO was in the middle of its analysis to revise the guidelines with respect to software inventions. For this purpose, the Patent Office has engaged a cross functional team from 2009 mid-winter institute issue


External Affairs, the Board of Appeals and others. Once the guidelines are written, the Patent Office will seek public opinion. Mr. Love was not certain as to when this might happen. He noted that the petition for certiorari would complicate the timing of the revised guidelines process.

Mr. Love discussed two difficulties in applying Bilski. First, how much matter do you need to get into a claim? For example, if the process is tied to a computer, is this enough? Must it be a general purpose computer, or a particular computer? Second, do treatment claims (methods of treatment) represent a transformation of a particular article? Mr. Love indicated that he was a proponent of the useful, concrete and tangible result test. Mr. Love also suggested that diagnostic tests were at risk under Claussen. Lastly, Mr. Love suggested that, in his opinion, correlation claims in the life sciences are more likely to make their way to the Supreme Court.

To give some insight on how difficult it is for the Patent Office to draft guidelines, Mr. Love walked the Committees through an analysis of: What is a machine? For example, is a transistor a machine? What about an integrated circuit or a data base? Does a system claim having method steps or physical structure fall under this statutory category of invention? What case law governs subject matter eligibility of a machine? Will Bilski creep Copies of the PowerPoint presentations made by Mr. Forrest and Dr. Sauer are available on the into machine claims? Patent Law Committeeâ&#x20AC;&#x2122;s microsite.

Patent Law

Nicholas P. Godici (left photo) Barbara A. Fiacco, Vice-Chair (right photo) ___________________________________________ Please see Biotechnology Committe for report.

Interference

W. Todd Baker, Chair (left photo) Herbert D. Hart, Vice-Chair (right photo) ___________________________________________

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he Interference Committee held an open 1. How can the contested case rules and the discussion regarding how to improve rules governing inter partes reexamination be inter partes reexaminations conducted by the better integrated and/or formulated to ensure Central Reexamination Unit and appeals of the full, fair, and expeditious resolution of inter reexaminations to the Board of Patent Appeals partes reexamination issues? and Interferences. The discussion focused on the following eight questions. 2009 mid-winter institute issue

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Several committee members discussed the merits of making inter partes reexamination follow similar procedures as interference practice. In particular, many members opined that case management techniques used by the BPAI to adjudicate interferences could improve inter partes reexaminations. Other members expressed concern that such a dramatic change would not be well received by a broader cross-section of the bar.

One committee member indicated the PTO has hired several “patent attorneys” to assist the APJs with ex parte appeals. The patent attorneys at the Board could serve as nonexaminer interlocutory decision-makers. However, the statutes provide for appeals to the BPAI. Thus, if an APJ or patent attorney served in this capacity, then that APJ or patent attorney would have to be excluded from the appeal process.

2. Should the rules create a form of “motion 5. What level of decision-maker would be practice,” resembling that in current interference appropriate? What qualifications should such practice, which will set the stage for a decision a decision-maker have? by the Office as to whether or not to grant the Several committee members indicated that request for reexamination? it is beneficial to have the same person Several members of the committee indicated that determine whether a substantial new question implementing a motion practice would improve of patentability has been presented and how the patentability issues to be considered examine the case. In any event, the decisionby the CRU are framed. If the request for maker should be a high level examiner (e.g., a reexamination is granted, then following a CRU examiner), an APJ, or a patent attorney motions type practice will result in a case having working at the BPAI. well defined issues for appeal. However, one committee member noted that the CRU would 6. Are there any Appointments Clause issues raised by the use of such a decision-maker? be overwhelmed by the volume of work product created by a motions type practice. One member expressed the view that, as in interferences, decisions in inter partes 3. Could a “motions list” procedure eliminate the reexaminations will affect the substantive rights opportunity and/or incentive for a requester to of the parties. For that reason, the decisionfile multiple requests that rely on closely-related maker would likely have to be appointed by the grounds of alleged unpatentability? Secretary, as are APJs. In interference practice, the BPAI requires each The discussion then turned to a question of party to identify – at the beginning of the case – how far the procedural rules can be changed all motions it intends to file for approval/rejection without stepping beyond what the statute by the APJ managing the case. The committee allows. One committee member discussed discussed the potential benefits of reducing the recommendations that included, among other chances for a “second bite at the apple” in inter things, the BPAI controlling all parts of the partes reexamination by employing a similar proceeding and the requester proposing the procedure. There was also a discussion of first Office Action. what changes could be made within the current regulations and statutes to reduce multiple However, the discussion then returned to the closely related requests. question of how the BPAI could control inter partes reexamination proceedings without 4. For example, could the rules grant authority to running afoul of the statutory requirements a non-Examiner interlocutory decision-maker for examination and appeal to the BPAI. over proceedings to determine whether or not To address the need for “examination,” a the request is granted? 72 

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committee member suggested that the senior examiners that are currently in the CRU could be managed by the BPAI. In the alternative, the patent attorneys that currently work with the BPAI could be designated as “Examiners.” 7. Would the express adoption of the evidentiary rules presently in place for interferences for inter partes reexamination facilitate the creation of a better record for decision and review? Several committee members expressed their support for this idea. 8. Should time limits, parallel to those in place for interferences, be adopted for inter partes reexamination? Several committee members expressed their support for this idea. The Interference Committee and the Patent Law Committee have agreed to hold a two hour joint committee meeting at the upcoming Spring Meeting. During the meeting we will hold a town hall forum to continue discussing improving the

inter partes reexamination process. This portion of the meeting will begin with vice chair of the Interference committee, Herb Hart of McAndrews Held & Malloy, and past chair of the Interference Committee, Gene Rzucidlo of Hunton & Williams, reporting on the discussion at the ABA-IPL Committee 104 – Patent Inter Partes Proceedings CLE Roundtable. It is planned that members of a newly-formed joint subcommittee on inter partes reexamination will also present some specific ideas and proposals for improving the inter partes reexamination process. Topics for discussion will include questions such as where should jurisdiction for reexamination lie, what level of decision-maker is appropriate to pre-order practice, what standard should be used for deciding whether to initiate a proceeding, what is the best time table for a proceeding, what are the best practices/rules for expediting proceedings, and how appeals can be streamlined or expedited. With patent law reform back on the legislative agenda, there is a great deal of debate surrounding inter partes proceedings and the proposed post-grant review procedures. We expect this discussion will be lively and very relevant to all patent practitioners, and we welcome everyone’s participation.

Professional Programs

J.Michael Martinez de Andino, Chair Steve Malin, Vice-Chair ___________________________________________

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t the 2009 Mid-Winter Institute in Miami, the Professional Programs Committee conducted a successful one-hour business meeting. The meeting was chaired by J. Michael Martinez de Andino and Steve Malin. Various issues were discussed during the meeting, including (1) a discussion of the Committee’s goals for the current year, which include focusing on copyright, trademark and trade secret presentations, as well as patent presentations; (2) continuing the planning work for the Annual 2009 Program, including identifying coordinators and potential speakers for the Annual Meeting Program; (3) finalizing

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details regarding the 2009 Spring Program. To assist the Committee in accomplishing its goals and objectives, we discussed the continuing use of the Speaker Topic Suggestion Form and the improved use of the Committee’s website for publishing more information. The Committee meeting was well attended with 36 members present at the meeting and 12 members attending by telephone. Questions regarding the Committee and its activities can be addressed to either Mike Martinez or Steve Malin. aipla bulletin

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Law Practice Management

Ashok Mannava, Chair (left photo) Manisha Chakrabarti, Vice-Chair (right photo) ___________________________________________

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he Law Practice Management Committeeâ&#x20AC;&#x2122;s main focus this year is the preparation and the distribution of the results of the 2009 AIPLA Report on the Economic Survey. The preliminary draft of the 2009 Report will have been forwarded to the LPMC and AIPLA for review prior to the Spring Meeting. We will discuss making survey data from the 2009 Report available online and more specifically, consider what data to make available

and in what format. We will also discuss any other outstanding issues associated with the preparation of the final draft of the Report for 2009 before it is sent to the printers. We also intend on holding presentations and panel discussions at future meetings. We will discuss potential topics, and will also explore joint programs with other AIPLA committees.

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

Welcome he committee would like to welcome two new members. Welcome to Kristen Harkins of the Conley Rose firm who would like to participate on the Best Practices subcommittee and to Lizbeth Hasse of the Creative Industry Law Group who would like to participate on the Trademark & Copyright subcommittee. Thank you for attending the 2009 AIPLA Mid-Winter meeting and joining our committee.

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2009 Mid-Winter Meeting The Licensing and Management of IP Asset Committee held a working meeting at the 2009 AIPLA Mid-Winter Meeting. The discussion focused on reviewing the present and future subcommittees, their chairs, and the specific future activities. It was discussed that the Licensing and Management of IP Asset Committee would continue to participate in planning and presenting 74â&#x20AC;&#x192;

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various informational and/or educational programs at the upcoming 2009 AIPLA Spring Meeting and the 2009 AIPLA Annual Meeting, and should try to have two programs per year and one working session meeting per year. This year at the 2009 AIPLA Spring Meeting the Licensing and Management of IP Asset Committee will present a joint committee CLE program entitled Licensing Patents for Standards in conjunction with the Antitrust and the Electronic and Computer Committees. The topic for the Annual Meeting program is presently under discussion but includes topics such as a panel discussing some unique aspects of Licensing and Management of IP Assets around the world (e.g., Latin and South America, Asia, Europe, etc.), presentation of Unity of Invention issues and United Nations security interest, and a panel discussion or presentation of the current value of

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IP protection in various countries around the world. It was agreed that the Licensing and Management of IP Asset Committee should continue to include all the present subcommittees and begin working on deliverables again including sample materials and best practices. There was discussion that the Committee should commend the creation of a list of licensing and MIPA materials presently available from our past works and programs, perhaps using members of the Young Lawyers Committee. Further, the Committee noted that involvement with legislation and/or law developments may occur via the new liaisons with the Amicus Committee (see below).

Robert Silverman, Millennium Pharmaceuticals Cambridge, MA The subcommittee has been commissioned to coordinate a future educational session on tracking, managing, and analyzing costs related to identifying, creating, maintaining, and leveraging IP. Diversity Bill “Skip” Fisher, Schwabe, Williamson & Wyatt Seattle, WA

The subcommittee has been commissioned represent the Committee as liaison to the Diversity Committee (DC), to report to the Committee on issues and developments of the DC, and to coordinate activities There was a brief discussion of the involvement of the Committee in support the DC. of the Committee with other bar organizations, e.g., the IPO, LES, INTA, local bars, etc. The Young Lawyers Committee Vice-Chair, Kevin Wolff, met with a Ankur Shah, Freddie Mac representative of the LES (Licensing Executive McLean, VA Society) after the Committee meeting, along with leaders of the AIPLA including Teresa Stanek Lesley Craig Rea, Q. Todd Dickenson, Vincent Garlock and Jonathan Richards met with a representative of The subcommittee has been commissioned LES, Tom Filarski. The group decided that the represent the Committee as liaison to the Young AIPLA and LES would try to coordinate meeting Lawyers Committee (YLC), to report to the schedules so that at least one of the leaders Committee on issues and developments of the from each organization could attend the others YLC, and to coordinate activities of the Committee meetings. The AIPLA Licensing and Management in support the YLC. of IP Assets Committee will follow-up with the LES to determine if there are aspects of each group Trademark & Copyright where further coordination and cooperation are Gretchen Prochaska Testerman, Qwest Communications possible and synergistic. More to follow. Denver, CO With respect to subcommittee structure, in this regard the Committee will now determine The subcommittee has been commissioned to whether the presently identified subcommittee monitor and report to the Committee on issues and chair persons are still interested in continuing developments affecting creation, maintenance, as chairs. The list of subcommittees and their licensing, and enforcement of trademarks and chairs will be revised over the next year and as copyrights. presently understood follow. Formalities Marc Hubbard, Gardere, Wynne Sewell LLP SUBCOMMITTEE LIST AND PRESENTLY Dallas, TX CHAIRS IP Costs Domenic Leo, DataCert Inc. Houston, TX 2009 mid-winter institute issue

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The subcommittee has been commissioned to The subcommittee has been commissioned to take meeting minutes, collect necessary formal facilitate sharing of best practices and networking materials, and work with the Internet subcommittee among in-house members of the committee. to post updated materials. • Richard was in attendance at the Mid-winter • Attended Mid-winter meeting. Will continue meeting and will continue as chair. He raised as chairs. Need to add the chairs of this the issue of the topic current value of IP subcommittee to the AIPLA administration protection in various countries around the distribution list so that they can help prepare world. Proposal presented about possibly the Committee reports to the AIPLA. providing legal case summaries. Also, question about including Corporate Practice Internet subcommittee within IP Protection and Salvatore Anastasi, Barley Snyder LLC Maintenance subcommittee. Berwyn, PA Capturing IP Value The subcommittee has been commissioned to Previous Chairs: Tom Isaacson, Greg Novak, and maintain the committee’s micro site (http://www. Gina Durham. Salvatore Anastasi interested in aipla.org/MSTemplate.cfm?Site=Management_ being new chair. of_IP_Assets1). This subcommittee had previously put together • In attendance. Will continue as chair of best practice flow charts and procedures related subcommittee. to capturing IP value. Some parts may need revision and there was a recommendation to International take the revisions and any new best practices in Robert Bauer, Lackenback Siegel, LLP smaller chunks for deliverables. Scarsdale, NY IP Protection & Maintenance Jackie Klosek, Goodwin Proctor LLP Previous Chairs: Kevin Wolff New York, NY This subcommittee had previously developed a The subcommittee has been commissioned to check-list for due diligence studies. New chair monitor and report on international issues and needed for this subcommittee. Perhaps the developments that significantly affect creation, Corporate Practice subcommittee chairs can chair maintenance, licensing, and enforcement of IP this and role the two subcommittees together. assets. Competitive Assessments • Robert was in attendance and will continue Previous Chairs: Robin Coster and Craig Larson as chair. Brought up the discussion of issues relating to Unity of Invention and United This subcommittee had previously developed best Nations security interest. practices related to comparing patents, patent families, and patent portfolios. For example, Corporate Practice various patent mapping techniques were created Richard Ludwin, IBM and identified. Chairs were not present at MidArmonk, NJ winter Meeting. Determine if new chairs are needed. Mike Noonan, Freescale Semiconductor Austin, TX

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Committee to the Amicus Committee. In this role, they participate in a monthly conference call with all of the committee liaison members to revise and update the list of issues that the Amicus Committee is tracking; to identify potential amicus This subcommittee is directed to IP monetization opportunities; and to identify potential drafters. strategies. Best practices using various approaches have been developed and need to be determined where they are now. The chairs 2008 Annual Meeting were not present at the Mid-winter Meeting and it The Licensing and Management of IP Asset Committee held a 1 1/2 hour CLE-requested is suggested that new chairs may be needed. meeting featuring speakers on licensing royalty rates and the effects of the Supreme Court Liaisons to the Amicus Committee Christopher Day of AOL and Jeff Sheldon of decision in the Quanta case. See our report in Sheldon Mak Rose & Anderson are the liaisons the 2008 Annual Meeting Bulletin for details. of the Licensing and Management of IP Asset Leveraging IP/Strategy (Formerly IP Value Extraction) Previous Chairs: Gerald Welch and Lena Vinitskaya

Patent Litigation

Philip S. Johnson, Chair Robert W. Payne, Vice-Chair (photo right) ___________________________________________

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he Patent Litigation Committee met in a well No written description can do justice to Mr. Ritter’s attended session at Mid-Winter Meeting on visual presentation, which focused not only on the “what” of demonstrative exhibits, but also Friday afternoon, January 30, 2009. on the “why” and “how” of getting a judge or jury Members of the Committee interested in working to understand complex technical and/or legal on the updating of AIPLA’s Model Jury Instructions concepts with the help of properly conceived and were asked to contact Vice-Chair Robert Payne, executed visuals. who is leading this project. Following Mr. Ritter’s presentation, an active The remainder of the meeting was devoted to discussion ensued where committee members a presentation by G. Christopher Ritter, Esq., shared their views and experiences in different Member and Chief of Visual Trial Strategy at jurisdictions with different forms of demonstratives. Focal Point. Mr. Ritter is a former trial lawyer who The discussion would have lasted longer, but for is now applying his considerable experience to the fact that the room was otherwise committed. the development and provision of demonstrative The Chair received numerous comments throughout exhibits and visual aids for use in trials, particularly the remainder of the meeting that the presentation patent trials. was one of the best and most entertaining that they had seen at any AIPLA meeting in recent recollection. 2009 mid-winter institute issue

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Public Education

Michael Piper, Chair (photo left) Evelyn McConathy, Vice-Chair (photo right) ___________________________________________

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ision: Educate the public and its representatives further efforts developing as interest and ideas grow. on IP and its value in cooperation with the rest of Finally, the Committee leadership with the help of the the IP community. Board, the ExCo, and AIPLA Headquarters will reach out and leverage relationships in the IP Community to Strategic Goals to Achieve Vision: further their specific goals and missions. • Develop a simple consensus message on the value and history of Intellectual Property & Theme & Story Development: Patents At the Annual Meeting Committee Leadership made a presentation to the Board of a refined version of the • Find creative ways to distribute the message Theme and Logo. These are now approved. Now across multiple channels of communication to a that the theme has been finally selected, the goal spectrum of audiences is to start integrating the theme to ongoing efforts such as the Youth Education effort and the nascent • Work to cooperate with other members of the IP independent website. community to learn from their experience and align messages and efforts towards common Distribution Channel Development: goals Initially, the Committee is focusing on three distribution channels (Youth Education (sub-committee chair Sal • Both implicitly and explicitly, depending on the Anastasi), Corporate (new sub-committee chair to audience, enhance the profile of AIPLA and its be named to interact with the Corporate Practice roles and provide understanding of what the Committee), Internet (sub-committee chair Emily organization is able to provide to its members, the Johnson)) with others to follow as help and experience IP community, the government, and the public is gained and/or as specific needs and volunteers arise (such as a proposed “Hill Day” below). The subSubstantive Tasks from Mid-Winter Meeting: committees will each start by identifying what they will To take the overall vision and place it in a manageable need to best succeed in distribution and in what form and scalable form, the current plan is to work in to help in development and tailoring of the message parallel on several levels of development. This to suit the appropriate distribution channel. Committee needs to work with AIPLA and the various committees, groups, and resources within AIPLA The Youth Education sub-committee under Sal to develop, refine, and select themes and stories Anastasi successfully presented a live demonstration and other material supporting those themes. At with specific teaching examples and a citation list for the same time the Committee will begin to develop finding additional materials to use in the committee a better understanding of the means to effectively session at the Spring Meeting in Houston. A refined communicate the message and distribute materials and enhanced version of the presentation was made to the identified target audiences, primarily initially to to spouses and children of AIPLA members at the build an understanding of the needs of key distribution Annual Meeting and significant additional feedback channels to better guide theme and message was gathered which we are confident will result in development. Creativity in Bloom has been chosen substantial further ideas and improvements. More as the theme and initial sub-committees have been feedback and volunteers are being gathered to work established to develop the channels of distribution with towards a goal of continuing to develop additional

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resources and find ways to organize them for ease of use as well as get permissions from selected sources to incorporate their materials into pre-made packets for distribution to volunteers wanting to go into schools and make presentations about IP law. The sub-committee is also specifically working to interact with representatives of the PTO who came to the Annual Meeting and of the InventNow group within the National Inventor’s Hall of Fame for their insight into successfully getting out into the schools and effectively reaching the students as well as reaching out to the Copyright Society for insight into their antipiracy outreach to students. While initially focused on younger children, the sub-committee has also started efforts to build resources for university students as well. In a recent development, the head of the PTO’s University Outreach program has inquired about finding ways to work together which may provide an opportunity to jump start efforts on the education at the University level. The Internet sub-committee under Emily Johnson launched an effort with the AIPLA Fellows coordinated by Freddie Park to set up and train a group of volunteer Fellows to begin interacting with Wikipedia definitions of key IP terminology in an attempt to provide a balanced viewpoint informed with the wisdom of the Fellows in those definitions. The Internet sub-committee in cooperation with Ken Nigon is also working on procedures to enlist volunteers to monitor many of the major IP blogs and identify areas of interest both for information and also over time for potential response. Finally, now that we have locked down approval for a theme, the sub-committee is working with AIPLA Headquarters, Committee Leadership, and the other sub-committees to define and build a separate web presence within AIPLA’s servers but with relevant alternative URL’s to publish the work of the committee and of its sub-committees to more general audiences as well as AIPLA members and friends. This effort may also provide the opportunity to leverage, display, and distribute the recorded speech of Judge Rader on the generational gift of IP and relevant accompanying materials both potentially on our own web site as well as through possible posting on relevant blogs or other more mainstream collective internet sites.

leadership of the Corporate Practice Committee and other active and involved members of the Corporate Practice Committee to try and understand how best to spur, enable, and leverage the energy and interest of our members in corporate life and their companies. The Vice-Chair, Evelyn McConathy, is also working on a proposed project to develop procedures and support for a “Hill Day” potentially to occur in coordination with the WIPO World IP Day. While probably initially starting on a more limited basis, in the long run it is hoped to mature and grow to provide an opportunity for AIPLA members more generally to visit their individual representatives to increase awareness and education on Intellectual Property and its value and impact to them and other constituents. The Committee and HQ would help coordinate the effort of getting appropriate appointments as well as organizing a social event at or around HQ for those members who travel to participate. The goal would be to find a way to set this up on a recurring, possibly annual basis, and do so in a way which reduces possible negative impacts to specific AIPLA lobbying efforts and instead maintains a much more general, consensus, theme level approach to the interactions. Because of timing and change in leadership at WIPO the Committee is starting work now to lay ground work for a first Hill Day in 2010 on World IP Day. A sub-committee for Congress & the Courts identified previously may be created to help with this and future efforts in this channel or direction. Jeff Lewis has also expressed an interest in the education of Judges in support and cooperation with an effort he is already involved in. Evelyn McConathy is also spearheading the committee’s potential involvement here which could also eventually move into the Congress & the Courts sub-committee.

In a new initiative, the Committee will investigate how AIPLA can help assist agencies like the USPTO in responding to specific inquires by the press on specific issues in IP. The Committee is beginning to assess how to organize and present collections of articles and papers which have been identified by various members and friends into a form which can provide a reference base or set of links to help respond to issues and “negative perceptions” which arise in the media or otherwise. In a similar vein, the Committee The Corporate sub-committee is again in transition as is targeting a free online seminar for summer by we work to best determine how to leverage the new Professor Lisa Dolak regarding the appearance of 2009 mid-winter institute issue

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IP in the media to better understand how IP is being reported on. A later paper and presentation are being developed hopefully using an all-star cast each working on selected points to educate AIPLA members and friends on detailed facts and arguments to help them effectively rebut some of the negative perceptions about the IP system as they circulate through their respective communities and relationships. This could be presented online and could also include a paper for ease of reference. The results would also be posted in one of the Committee websites and snippets of video or audio could be posted more broadly on the internet or made available through podcasts. Ultimately this suite of projects could fall under the proposed subcommittee for Press and the Media. Cooperation/Contact with the IP and Innovation Community: The Committee is working with AIPLA Headquarters and its Board liaisons to coordinate contacting other organizations, such as the National Inventors Hall of Fame, the Federal and District Courts, the PTO and Copyright Offices, IPO, ABA-IL, INTA, and the

Copyright Society to reach out for shared insight and to establish a foundation for potential cooperation. Once contacts are established, the Committee will identify a liaison for each group it has or builds a relationship with (possibly one with a pre-existing relationship which can be leveraged) to have a single point of contact to reduce potential confusion and avoid overloading or interfering with mutual efforts. The Committee leadership should make sure each sub-committee and working group knows who the liaisons are. A growing and evolving detailed structured outline which includes potential themes, the distribution channels and potential initial and long-term tasks, and groups for contact by the Committee and potential liaisons is available for HQ, Committee Members, and others who are interested. The outline tries to capture and prioritize many of the possible or feasible ideas addressed in any significant detail since the initiation of the Special Committee. Similarly the Youth Education Sub-Committee has a working document setting out their goals and directions which is also available on request.

International Trade Commission Tom. M. Schaumberg, Chair (left photo) L. Scott Oliver, Vice-Chair (right photo) ___________________________________________

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he Committee on the International Trade Commission (ITC) met at the AIPLA’s 2009 MidWinter Institute. The Committee’s meeting was presided over by its Chair, Tom M. Schaumberg and Vice-Chair, L. Scott Oliver. The committee members discussed the impact of the U.S. Court of Appeals for the Federal Circuit’s Kyocera v. International Trade Commission decision. The committee members discussed the effect that the decision has on the ITC’s authority to issue downstream relief against non-parties. The committee members discussed legislative relief to address the impact of the Kyocera decision.

proposed legislation to provide additional funding to the United States Customs and Border Protection, including the Office of Regulations & Rulings, IPR Branch and the Office of Field Operations, the departments that administer and process exclusion orders issued by the ITC (“Customs”). It was decided that the Committee would consider drafting legislation addressing both post-Kyocera downstream relief and additional funding for Customs and send a survey to its committee members once the proposed legislation is drafted.

Finally, the Committee will re-visit its latest proposed draft White Paper on Procedural Innovation at the In addition, there was a discussion of submitting ITC at the next meeting. 80 

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Special Committee on the FDA Myra H. McCormack, Chair (left photo) Freddie K. Park, Vice-Chair (right photo) ___________________________________________

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he committee held its inaugural meeting January 29, 2009, at the Mid-Winter Institute in Miami. Prior to the meeting, Kurt Karst of Hyman Phelps & McNamara, a member of the Committee and the Hatch-Waxman Subcommittee, prepared draft comments on FDA’s implementation of Section 4 of the QI Act, which amends Section 505 of the FDCA Act and made Hatch-Waxman benefits available for so-called “old” antibiotics. A core group of Hatch-Waxman Subcommittee members reviewed the comments and finalized them for submission to the AIPLA Board for

consideration at the Mid-Winter Institute. The AIPLA Board approved the comments, which were then forwarded to the FDA. Section 4 of the QI Act, Section 505 of the FDCA Act and the Final Comments as submitted to the FDA by the AIPLA are posted on the Committee’s webpage. In addition, Denise Kettelberger of Faegre & Benson and Co-Chair of the Follow-On Biologics Subcommittee, presented a discussion on Hot Topics in Biosimilars -2009. Denise’s presentation is posted on the Committee’s AIPLA webpage.

Special Committee on Legislation Sharon A. Israel, Co-Chair Rick D. Nydegger, Co-Chair (photo right) ___________________________________________

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he Special Committee on Legislation is a newly formed special committee established to assist the AIPLA with its advocacy efforts. The Committee’s goals are two-fold: (1) As requested, this Committee will work with the appropriate substantive committees to help prioritize and analyze issues and proposed positions, both pro and con, relative to legislative proposals which come before the Board for its consideration; and (2) the Committee also will serve as a resource to assist the Board, as instructed or requested from time to time, in developing a proposed agenda of legislative matters for the Board’s

consideration and possible adoption. The Committee structure includes a Core Group and Working Groups for specific substantive areas, with Core Group liaisons to each Working Group. The Committee currently has 5 Working Groups: Patents/Litigation, PTO Agency/Practice, Copyrights, Trademarks, and Industrial Designs. The members of the Legislation Committee come from the leadership of substantive committees, the AIPLA Fellows, and others with specialized knowledge.

The following Committees had no business to report from the 2009 Mid-Winter Institute: Antitrust, AIPLA Fellows, Industrial Designs, Inventor Issues, IP Practice in the Far East, Mergers & Aquisitions, Public Appointments, Professionalism & Ethics and Trade Secret Law. Be sure to visit all of our committees online in our Committee Center at www.aipla.org. 2009 mid-winter institute issue

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Our goal is simply to be the best in intellectual property law. We need people committed to excellence for practice in the fields of litigation, interference law and patent prosecution.

Contact: Joan Daniels Legal Recruiter 703.413.2220 Fax jdaniels@oblon.com

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AIPLA call

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

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AIPLA

career center

Have you seen our online Career Center? The AIPLA Career Center helps job seekers in the intellectual property law industry find new employment opportunities. The job board allows members of the association, and site users, a place to post their resumes for free. Along with a resume bank, the site offers listings of career opportunities. To get started you need to first set up an account. There is a â&#x20AC;&#x153;Job Alertâ&#x20AC;? system that notifies job seekers by email of new job opportunities that match their search criteria and an anonymous resume feature that enables job seekers to list their experience and qualifications in a protected environment. By giving both active and passive job seekers the ability to anonymously post their resumes, the Career Center allows job seekers to stay connected to the employment market while maintaining full control of their confidential information. Employers can easily post job opportunities and review resumes. Once you set up an account, you can: gain access to active and passive job seekers; search resumes for FREE and only pay for the candidates we connect with you; and you can purchase a single job posting or a package and give our job seekers access to view your posting. Your job will also be emailed out to our job seekers through our Job Alert system. To view resumes you need to go through a one-time verification process that takes just a few minutes. Visit http://careers.aipla.org to view this service.

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AIPLA

2009 patent cooperation treaty seminar

PCT has become the worldwide standard

I best write my PCT application so that it will

for foreign filing patent applications. More

be easily prosecuted in foreign patent offices

companies are using it! More clients are

such as the EPO? How may I use the newly

inquiring about it! More countries are joining!

established Supplemental Search procedure?

If you aren’t using it yet – YOU SHOULD BE! If you are using it, are you aware of all the

A panel of active PCT patent attorneys

changes? Are you using it effectively? What

from US and Europe are preparing two (2)

strategies should be implemented?

days of presentations, discussions and debate for your active participation. Officials

july 16-17 arlington, va

for more information, visit: www.aipla.org or call 703.415.0780 96 

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Bringing together some of the greatest US

from the US Patent and Trademark Office

experts on PCT, this program will teach you

(USPTO) and US Consultants from the World

anything and everything you ever wanted to

Intellectual Property Organization (WIPO)

know about PCT. For novices and experts, it

have been invited to offer explanations about

will be an exceptional learning experience.

PCT procedures, reforms, office policies and

Not only will the program cover the initial

other invaluable information. This Seminar

steps of filing your PCT application, choosing

is designed for practicing attorneys, patent

the Receiving Office, selecting the Search

agents, paralegals and administrators who

and Examination Authority and entering the

are learning about PCT, as well as those who

national phase, but it will also address highly

have a deep understanding and experience

sophisticated areas of PCT practice.

with the substance of PCT.

In addition to reviewing the procedures,

The seminar will run two (2) days from

timing, latest fees, and statistics, the program

9:00 am – 5:00 pm, with registration/

will address some new and ongoing concerns

continental breakfast starting at 8:00 am,

in working with the PCT. For example, should

lunch from 12:00 Noon – 1:00 pm, two

I choose Korea as the searching authority?

breaks and lunch each day included in

Which Searching Authorities are available,

your registration cost. The program will be

and which Searching Authorities will best

conducted to permit questions as they arise.

serve my clients needs? What strategy should

Active audience participation is encouraged;

I use for filing? Should I base my PCT on a

several topics include discussions by the

provisional or non-provisional? How do I select

panelists on strategies and experience in the

foreign countries for national-stage entry at the

use of PCT. Comprehensive written materials

end of the PCT international phase? Can the

will be provided.

WIPO databases help me with searching and monitoring of competitors patents? How can

2009 mid-winter institute issue


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2009 AIPLA Mid-Winter Institute Bulletin