ABA Section of Intellectual Property Law
December 2005

In this issue:

- New Section Publications

- Chair's Bulletin Goes Electronic

- Section Leadership Nominations

- January ABA Connection

- Section Co-sponsors LEI CLE Program

- Full Funding for USPTO in Coming Year

- IPL Roundtables

- 21st Annual IPL Conference

- Judicial Internship Opportunity Program


Chair's Bulletin

The November 2005 issue of the Chair's Bulletin is now available on the Section website. The printed version will arrive in members' mailboxes shortly. Please note that the Chair's Bulletin will be going electronic as of the January issue - the December issue will be the last to be sent in hard copy.



ABA Midyear Meeting
February 8-13, 2006
Hyatt Regency Chicago
Chicago, IL
(IPL Council Meeting on February 11)

21st Annual Intellectual Property Law Conference
April 6-8, 2006
Crystal Gateway Marriott Hotel
Arlington, VA

2006 Summer IPL Conference
June 21-24, 2006
Marriott Copley
Place Hotel
Boston, MA

Please stay tuned to the Section website for more information on these meetings as it becomes available. Once again, we hope to see you there!


Mark Your Calendar for the 21st Annual Intellectual Property Law Conference

Mark your calendar for the 21st Annual Intellectual Property Law Conference, April 6-8, 2006. This is the one annual conference that IP lawyers cannot afford to miss. The Annual Intellectual Property Law Conference of the ABA Section of Intellectual Property Law provides a gathering of the foremost authorities on the state of intellectual property law.

This year’s conference includes a focus on in-house counsel issues, and as such, many of the panels include prominent in-house counsel representatives. Featured guest luncheon speakers include Tommy Warlick, Assistant General Counsel of NASCAR, and Oliver Mitchell, Chairman of the Dealer Policy Board of Ford Motor Company.

The conference will address recent developments in IP law and will cover these current IP topics:

· Best Practices for an IP Trial as Viewed from the Bench and Bar

· Anti-Counterfeiting Strategies, Legal Remedies and Government Initiatives

· Patent Politics: Issues and Implications of Patent Law Reform

· Grants, Restrictions, and Circumventions: Strategies for the Distribution and Use of Digital Content

· IP Franchising

· Patent Infringement At The Borders

· Interference Issues In A First-Inventor-To-File World

· Ethics: IP Lawyers Under Attack - Why so many disqualification motions, malpractice suits and discipline investigations are aimed at us

· Hot Topics In Antitrust and Intellectual Property Law

· Reverse Engineering

· Developments in Copyright Law - The view from the Copyright Office; The Google Print for Libraries Project - fair or foul?; Grokster assessed: new rules for copyright liability in the digital age?

· Patent Litigation Fundamentals, including: Markman Marks Ten Years - Are We Better Off?: The Bench, The Litigator, And The Client Weigh In; and, The Doctrine of Equivalents: what’s left, how best to preserve, and how best to defeat

· Corporate Counsel Issues

As in past years, the ABA Section of Science & Technology Law joins with the Section of Intellectual Property Law as a co-sponsor of the conference. A special session on reverse engineering will be presented, coordinated by both sections.

Registration for the conference will be available on the Section website at www.abanet.org/intelprop by early January. Watch our website for full conference and registration information as it becomes available.

Special One-Day Program: Practical Tips on Intellectual Property Law

A separate one-day program, Practical Tips on Intellectual Property Law, will be held at the Crystal Gateway Marriott Hotel on Wednesday, April 5, 2006, on the day before the 21st Annual Intellectual Property Law Conference.

This program provides background patent and trademark law information for new practitioners in IP law practice in light of current developments in the field.

The special guest luncheon speaker at this one-day program is Sean Carter, “Humorist at Law,” author of a weekly syndicated legal humor column titled “Lawpsided.” "Lawpsided" has been published in newspapers in 30 states and on many websites.

For information and a registration form for this Practical Tips program, visit our website at www.abanet.org/intelprop, or e-mail us at intelprop@abanet.org. This program will also offer CLE credit.

Information on the Judicial Internship Opportunity Program Now Available

The Judicial Intern Opportunity Program is a full-time, six-week minimum, summer internship open to all first- or second-year minority or financially disadvantaged law students who want to do legal research and writing for state or federal judges in participating cities. Participating judges are from Illinois, Texas, Miami, FL, Phoenix, AZ and Los Angeles, CA and include judges from the United States District Court for the Northern and Central Districts of Illinois, U.S. Bankruptcy Court for the Northern District of Illinois, Illinois Circuit Courts, United States District Court for the Southern District of Texas, Texas Civil District Court, Texas District Court and state and federal courts in Miami, FL, Phoenix, AZ and Los Angeles, CA. Students may indicate geographic location preferences on their applications. Interns will receive a stipend of $1,500 for the entire summer. If law school credit is desired, students may choose not to receive a stipend, but must indicate this choice at the time of application. Students must work directly with their individual schools to determine credit requirements. The program does not provide housing.

The program seeks to provide internship opportunities for minority or financially disadvantaged law students - those who are members of traditionally underrepresented groups in the legal profession.

The program is only open to students who have not previously participated as an intern in the program. Go to www.abanet.org/
for more information.


Two New Publications
on the Radar

With an anticipated release at the end of the year, Patent Litigation Strategies Handbook, Second Edition gives you both the "how-to" and the "why-to" of patent litigation, with specific, proven tactics for protecting your clients' interests. Members of the Section, chosen because of their expertise in this field, give you practical, winning answers to questions like "Why sue in the first place?" "Should you consider ADR instead?" "What are your burdens of proof?" "What types of damages should you seek?" and more.

And - most importantly - this book focuses on resolving legal disputes efficiently, effectively, and professionally.

The book will be available shortly - stay tuned for details, or visit www.abanet.org/abastore to check for availability.

Also, the Section just published The Intellectual Property Handbook in cooperation with the ABA's Forum on Franchising. The book is a single-volume resource on all major components of intellectual property. Written by intellectual property and franchise lawyers, this new book features an overview of domestic and international trademarks, domain name and “cyberlaw” issues, copyrights, patents, trade secrets, and the important analysis of the intersection of intellectual property issues and cutting-edge technology. The book provides substantive and practical guidance to a wide audience of non-IP specialists: franchise practitioners and general practitioners; in-house counsel; paralegals and new IP practitioners looking for a practical overview. Order your copy today at the ABA webstore.

More Information Coming Faster to You!

The December issue of the Chair’s Bulletin will be the last printed edition you’ll receive. Future editions will be coming to you exclusively by e-mail.   We appreciate your continued membership and continually strive to add even more value to your membership in our Section and the ABA.

Please make sure we continue to have your current e-mail address. Updating is easy:

·    Online : Log into the ABA website, update your member profile and set your e-mail preferences at:
common/MyABA/ home.cfm

·    By phone : Call 1.800.285.2221 and ask to update your e-mail address.

·    By e-mail : include your name, ABA ID#, and e-mail address and send to coa@abanet.org.

·    By fax : Provide your name, ABA number, and correct e-mail address and fax to 312-988-5528.
P.S. Whether you log into the web site, call 800 - 285 - 2221, or reply by fax or e-mail, be sure to reference your name and your ABA ID Number .

Find out how you can become involved in Section leadership by going to www.abanet.org/
intelprop/ newappts/
. Chair-Elect Susan Barbieri Montgomery gives specific suggestions on how you can make the most of your Section membership.

January ABA Connection

On January 18, 2006, at 1:00 pm Eastern, the Section will co-sponsor a one-hour CLE teleconference "Seeking a Sea Change in Patent Law."

In February, 2005, the ABA House of Delegates endorsed the enactment of federal legislation that would adopt a "first to file" rule for granting patents in the United States to replace the current system of granting patents to the "first inventor." The Section and other advocates of changing the rule say that, in addition to eliminating the need for costly investigations to determine the "first inventor," the "first to file" rule would bring U.S. patent law into closer accord with the patent laws of most other major nations. Opponents, however, contend that a "first to file" approach doesn't reflect the uniquely American system in which small inventors can thrive and would put them at a major disadvantage against large corporations in the race for patents. The proposed legislation would implement other major changes in the patent law system, as well. The ABA Journal story and CLE teleconference will take an in-depth look at the current system for granting patents and the impact that the legislation would have. CLE credit will be given in states that accept the teleconference format. For registration information, go to www.abanet.org/intelprop/

Co-sponsors Law Education Institute's CLE Program

January 3-7, 2006
(Aspen), CO

Don't miss this i ntellectual p roperty CLE program in the spectacular mountain setting of Snowmass - located near Aspen, Colorado. This is an ideal opportunity for intellectual property practitioners to experience outstanding continuing legal education in a world - class recreational venue, while earning 20-24 CLE credits - plus ethics credits.

The educational programs will feature the latest updates on trademarks, copyrights, patents, internet law, complex litigation, Federal Circuit practice and advocacy, plus more!

The roster of speakers includes:

- Donald Dunner , Roderick McKelvie, plus many other leading national practitioners

- The Honorable James Rogan, former Director of the U.S. Patent and Trademark Office and former U.S. Congressman

- John Whealan, PTO Solicitor and former clerk to CAFC Judge Rader

- Jan Horbaly, Circuit Executive and Clerk of Court for the U.S. Court of Appeals for the Federal Circuit

Visit www.lawedinstitute.com for complete agenda details and to register today! Also f ind out more on discounted lodging and lift tickets at Snowmass Village (Aspen), by selecting " lodging” at www.lawedinstitute.com.

Full Funding for USPTO in Coming Year

On November 4, House and Senate conferees announced agreement on a conference report to accompany H.R. 2862, the Science, Departments of State, Justice, and Commerce, and Related Agencies Appropriation, 2006. The bill would provide funding for the USPTO in fiscal year 2006, which began October 1, 2005. The bill calls for funding of $1,703,300,000 for the PTO. This same amount was called in H.R. 2862 as passed by the House on June 16 and by the Senate on September 15. This is $159 million above the current year funding, and equals the amount requested by the Administration. Based on expected user fee collections, no diversion would take place in FY 06.

IPL Roundtables

The Intellectual Property Litigation Committee of the ABA Section of Litigation invites you to participate in the 2005-2006 Roundtables. The topic for the upcoming November-December Roundtable is: "The Dilution Dilemma - Litigating Dilution Claims and the Trademark Dilution Revision Act of 2005." The Roundtables are being held in many cities around the country beginning November 17. Please click on www.abanet.org/
litigation/committee/ intellectual/
  for a complete listing of host cities and dates. Contact Mary Ellen Roy ( roym@phelps.com) or Stephanie Skaff ( sskaff@fbm.com) if you have ideas for January roundtables. Topics being considered are in the copyright, internet or licensing areas.

   Contact Information
Section of Intellectual
Property Law
321 N. Clark St.
Chicago, IL 60610
p 312-988-5598
f 312-988-6800
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Alice Bare

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