July 2008

All Section members are invited and encouraged to attend the Section Business Session at the 2008 ABA Annual Meeting in New York. Engaging debates are slated on topics of patentability of a claim; and protection of fashion design. A Members Forum will present a discussion on Internet keyword advertising. The Section Business Session will be held on Saturday, August 9, 8:30-11:30 a.m. in Starlight Rooms 1-2, 18th Floor at the Waldorf=Astoria Hotel, 301 Park Avenue, in New York.
The morning includes a Keynote Address, Business Session Debates, Members Forum, and Elections.

Keynote Address:
The morning begins at 8:30 a.m. with a keynote speech by Chief Judge Paul R. Michel of the U.S. Court of Appeals for the Federal Circuit presenting “A View From the Bench.”

Business Session Debates:
Immediately following the opening address, the Section’s Business Session will commence. The Section Council met on June 2 and July 8, 2008 to discuss resolutions proposed by the Section Committees for adoption as Section policy. From these resolutions, the Council selected and classified specific ones to be debated and voted upon at the Business Session. You can find complete information on those resolutions classified for debate* at www.abanet.org/intelprop/annual2008/business-session.

*(The remainder of resolutions proposed by the Section Committees that were not classified by Council for full debate were either approved by Council, recommitted to the committees for further consideration, or allowed to rest as committee reports. You will find links to all those resolutions on the same page as those classified for debate. This page also contains information on the resolution, classification and debate process of the Business Session as well as links to the full committee reports.)

Section Members Forum: Internet Keyword Advertising:
Following the Business Session debates, an open Members Forum will provide members with an opportunity to discuss issues related to Internet keyword advertising. A discussion led by Section leaders Antoinette Tease, Michael Potenza and Joseph Gratz will present the issues and varying positions on the claim that use of trademarks to trigger online ads constitute using the mark in commerce. Member participants will be able to weigh in with their thoughtful positions on the issue. In the Section’s tradition of deep thinking and analysis on issues, we will not be making policy nor voting on any position during the Members Forum. Rather, it is an opportunity to present the various positions and hear the differing ideas regarding the issue.

At the conclusion of the Section Members Forum, the formal Business Session will reconvene with Section elections for open elective leadership positions and a vote on amendments to the Section bylaws. Details on the elections and bylaw amendments are provided below.

Section Luncheon:
Following the Business Session elections, all Section members are invited to attend the Section Luncheon at the Waldorf=Astoria Hotel, where there will be a brief awards presentation and a guest luncheon presentation by Doug Coblens of the Discovery Channel on “Business Pragmatism in an Ever Changing Media Law Landscape.” Tickets for the luncheon can be purchased at ABA registration at the New York Hilton, when you stop in to pick up your registration materials. Tickets will also be available at the Section’s IP Central Hospitality Hub at the Waldorf=Astoria, in the Metropolitan Suite, 18th Floor. Tickets are limited and will not be available at the door of the luncheon, so be sure to purchase your tickets early.

Section Annual Meeting Events:

The Section has a comprehensive selection of CLE programming, social networking opportunities and unique events lined up at the ABA Annual Meeting in New York. All Section members are invited and encouraged to attend these events. For complete information on Section events, visit www.abanet.org/intelprop/annual2008.

Section to Vote on By-Law Amendments Establishing a Publications Officer Position

All Section members are notified that there will be a vote on proposed amendments to the Section By-Laws at the Section’s Annual Business Meeting at the ABA Annual Meeting, Saturday morning, August 9, 2008, 8:30-11:30 a.m. in the Starlight Rooms 1-2, 18th Floor, at the Waldorf=Astoria Hotel in New York.

The amendments, approved by the Section Council at its meeting on February 8, 2008, all relate to the creation of a new Section Publications Officer position. The ABA Board of Governors has approved these bylaw amendments subject to a vote of the Section membership at the 2008 ABA Annual Meeting in August.

The Publications Officer position follows from the Section’s Publications Plan, which established a Content Advisory Board and three editorial products boards for books, magazine, and The Annual Report. The amendments to the bylaws propose creation of a voting officer position, the Publications Officer, to oversee these activities and report on them to the Section Council.

The proposed changes are listed below. Added language is underlined and deleted language is struck.

Organization and Procedure was amended to add Publications Officer as a voting officer position. Further, as a result of the new Publishing Plan, there will no longer be an Annual Report or an IPL Newsletter. Consequently, the current non-voting officer positions of Annual Publications Editor and Newsletter Editor are disbanded:

Organization and Procedure

The officials include a Chair, Chair-Elect, Vice-Chair, Secretary, Financial Officer, Publications Officer, Section Delegates to the House of Delegates, Immediate Past Chair, and Council.  The Chair-Elect may also appoint, to serve during his or her term as Chair, an Assistant to the Secretary , Annual Publications Editor and a Newsletter Editor.

Article IV was amended to add the following Section 6 to describe the duties of the new Publications Officer position:

Section 6.  Publications Officer.  The Publications Officer shall oversee development of Section content in all formats and shall oversee development and implementation of a Section publication plan.  The Publications Officer shall also, upon request of the Chair, report to Council on the Section’s present and projected publication plan; and shall, at least once each year, prepare and submit a proposed plan to the Council for approval or modification at the time of the annual meeting or at such other time as may be expressly fixed by the Council.  The Publications Officer shall also prepare and submit to the Section, at the annual meeting, a report on the Section’s publication plan and shall prepare such other recommendations and special reports on publication affairs of the Section as may be requested by the Chair.

Article VII, Section 1 was amended as follows:

Section 1.  At each annual meeting of the Section, the Section shall elect:
(a)  Chair-Elect, Vice-Chair, Secretary and , Financial Officer, and Publications Officer for a term of one year.


In addition, Article VII was amended to add the following Section 6:

Section 6.  The election of the Publications Officer at the 2008 Annual Meeting shall be deemed in compliance with these Bylaws, if such election and the preceding nomination therefore shall have complied with these Bylaws as otherwise amended at such Annual Meeting.

Finally, Article VIII, Section 3 was amended as follows:

Section 3.   Council .  (a)  The Council, during the interim between annual meetings of the Section, may fill vacancies in its own membership or in the offices of Secretary or , Financial Officer, or Publications Officer, or, in the event of a vacancy in all of the offices of Chair, Chair-Elect and Vice-Chair, may fill vacancies in the offices of Chair and Vice-Chair.  Members of the Council and officers so elected shall serve until the close of the next annual meeting of the Section.

Section Elections to be Held at ABA Annual Meeting

Section elections for open elective leadership positions will be held at the ABA Annual Meeting in New York City on Saturday morning, August 9, 2008 at the Waldorf-Astoria Hotel during the Section’s Annual Business Meeting.

The following candidates have been nominated for the 2008-2009 year:


DonChair-Elect: Don W. Martens , Irvine, CA. Mr. Martens is currently Section Vice Chair and chair of the Section’s Task Force on Patent Law Reform. In the past, he has served on the Section Council, and as Committee Chair for committees 402 – University Intellectual Property Law, 852 – Special Committee on Site Selection, 602 – Arbitration and Other Alternative Procedures, 604 – Court of Appeals for the Federal Circuit and Chair for Division I – Patents, Division VI – Litigation, Alternative Dispute Resolution & Related Issues, and Division IV – Related Legal Issues.


Todd DickinsonVice Chair: Q. Todd Dickinson , Fairfield, CT. Mr. Dickinson is a current member of the Section Council. He also serves as the Section’s Liaison to the WIPO Standing Committee on Patents. He is immediate past Deputy Secretary of Commerce and Director of the United States Patent and Trademark Office, a position he held from 2001- 2003.


Robert LindefjeldSecretary: Robert O. Lindefjeld , Pittsburgh, PA. Mr. Lindefjeld was re-nominated to his position as Secretary. He has served on the Section Council, and as Committee Chair for committees 104 – Patent Inter Partes Proceedings and 805 – Spring CLE.



Theodore DavisFinancial Officer: Theodore H. Davis, Jr., Atlanta, GA. Mr. Davis was renominated to his position as Financial Officer. He is a former Council Member and has served in the past as Committee Chair for committees 201 – Federal Trademark Legislation, 202 – International Trademark Treaties & Laws, 204 – State Trademark Laws and Chair for Division II – Trademarks and Unfair Competition and Division IX – Publications.


Joe PotenzaPublications Officer: Joseph M. Potenza , Washington, DC. Mr. Potenza is nominated for the newly created (pending Section and Board of Governors approval) officer position of Publications Officer. He currently serves as the Chair of the Content Advisory Board of the Section and as a member of the Section Council. Among many past positions he has held, he is a former Secretary of the Section, Chair of Division VI, Committees 108 – Patent System Policy Planning, 510 – Young Lawyers, 601 – Trial and Appellate Rules and Procedure, 801 – Summer IPL Conference, 805 – Spring Conference, former Liaison to the Section of Business Law. He served as Section Chair of the Section of Science & Technology Law, and is currently Special Advisor to the ABA Standing Committee on Publications Oversight.

Members of the Section Council for a four-year term ending in 2012:


Antoinette TeaseAntoinette M. Tease, Billings, MT. Ms. Tease is currently a member of the Council, serving the balance of the term vacancy created by Don Martens when he was elected to the position of Vice Chair in 2007. She is also the Vice Chair of the Content Advisory Board of the Section.



Gary GriswoldGary L. Griswold, St. Paul, MN . Mr. Griswold is a past Division Chair of Divisions IV, VII, and X, as well as a past Committee Chair of Committees 108 – Patent System Policy Planning, 401 - Confidential Rights of Contractors with the Government, 404 - International Technology Transfer, 409 – Antitrust Matters, and 553 - Special Committee on Corporate Practice.


Philip SwainPhilip C. Swain, Boston, MA . Mr. Swain is a member of the Books Editorial Board, and the Section’s Liaison to the SOC Ad Hoc Committee on Ethics and Professionalism. He is a past Committee Chair of Committees 502 – Ethics and Professional Responsibility, 601 – Trial and Appellate Rules and Procedure, and 604 - Federal Appellate Practice and Procedure and served on the Nominating Committee in 2004-05


Donna GiesDonna Gies, Minneapolis, MN . Ms. Gies is currently the Chair of Division III – Copyrights. She is a former Division Chair of Division VII – Information Technology, and has served as Committee Chair for Committees 301 – Copyright Legislation, 304 – Visual Arts and Dramatic Works, 702 - Databases.



GordonAccording to Section bylaws, Gordon Arnold, current Chair-Elect, automatically assumes the office of Chair for the 2008-2009 Association year.

The Nominating Committee is chaired William L. LaFuze, Houston, TX. In addition  to the Chair, the Nominating Committee is comprised of E. Anthony Figg, Washington, DC, Cynthia E. Kernick, Pittsburgh, PA, Theodore H. Davis, Jr., Atlanta, GA and Mark Whitaker, Washington, DC.

As noted in a previous e-News message to the Section, additional nominations for any position are to be made by petition signed by not less than 100 members of the Section, listed by their ABA ID number. The 100 names must be representative of at least three states and must indicate that the individual has agreed to the nomination. The petitions are to be sent to the Chair and the Secretary of the Section and are to be received by these individuals not less than four months before the Opening Assembly of the Annual Meeting. The Opening Assembly will be held on Saturday, August 9, 2008.


Minority Speaker Database Launched

The Committee on Minorities in the Profession has developed an online self-nomination form for the creation of a minority speakers database resource to be used by Section members as they plan conferences, teleconferences, and other educational programming for which there are speaker opportunities. Anyone interested in being listed in the database can complete the self-nomination form at: www.abanet.org/intelprop/committees/msb504.shtml.

In keeping with Goal IX of the American Bar Association, “to promote full and equal participation in the legal profession by minorities, women and persons with disabilities, and persons of differing sexual orientations and gender identities,” the database has been established to further this participation within Section events, by providing the resource to planners. Planners are encouraged to visit the database page at the link above when they are selecting speakers for their programs.

The Committee on Minorities in the Profession is co-chaired by Lisa Marks, Washington, DC, and Abdul Zindani, Irving, TX.

Join a Section Committee for the 2008-2009 Association Year

Committee activity is the lifeblood of the Section. Section members are encouraged to participate more fully in Section activities by joining one or more of our more than 60 committees, each dealing with a special aspect of the law as it relates to intellectual property under the statutes, common law and the provisions of international treaties. The Committees are organized into eight major divisions in order to deal most effectively with the extensive, highly specialized matters that command Section attention. To review committee scopes and activities, visit the committees page on the Section website at www.abanet.org/intelprop/committees.html, and locate a division and click on that division, which will bring up a list of committees in that division. To join a committee online, click on that committee’s page, where you can then locate the “Join Our Committee” link.

ABA Offices In Chicago Have A New Zip Code

The American Bar Association Chicago headquarters zip code has been changed to 60654-7598 effective July 1, 2008. Mail using the old zip code will continue to be delivered for one year after the change goes into effect. This zip code change is effective for all Section staff based in Chicago. Please note this change in any address books, lists, or databases you maintain.

ABA Annual Meeting 2008 … Register now!

ABA Annual Meeting - Section of Intellectual Property Law

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