July 2010

All Section members are encouraged to participate in this morning of engaging debate, on Saturday, August 7, 8:30-11:45 am at the Intercontinental San Francisco. The Forum will consist of experts going head-to-head on three controversial IP issues, while Section member input will also be welcome and encouraged. The topics will include:

Perspectives on the Impact of the U.S. Supreme Court's Bilski Decision on Business Methods and Other Inventions
In its June 28, 2010 decision in Bilski v. Kappos, the U.S. Supreme Court affirmed the Federal Circuit’s prior decision holding that Bilski’s invention relating to a method of hedging risk in the energy market did not constitute patentable subject matter. In reaching its decision, however, the Supreme Court rejected the “machine-or-transformation” test applied by the Federal Circuit. The ABA-IPL panel discussion will address, in depth, whether the Supreme Court’s recent decision provides greater or less clarity regarding the patentability of business methods from the perspective of the patent office, a federal court judge, and a law professor. The panel will also address the implications of the Bilski decision for inventions that are not strictly “business methods.”

The Net Neutrality Debate: An IP Perspective
Net Neutrality refers to the concept that network operators should not be permitted to treat different portions of the Internet traffic flowing across their network differently based on the traffic’s source, ownership or destination; or in the words of net neutrality proponents, network operators should be prohibited from "discriminating" against particular types of traffic. Whether and to what extent net neutrality regulations are necessary or appropriate is currently a matter of intense debate involving both the FCC and Congress. There are a number of important public policy issues at stake in this debate. Some of the most interesting involve the impact of net neutrality concepts on intellectual property protection, and in particular the protection of copyrighted works on the Internet.

New Approaches to Improving the U.S. Patent System
The USPTO is proposing radical new ideas to address patent quality and application pendency. The panel will bring the audience up to speed with current developments from the USPTO and debate the efficacy of the proposed programs. Some of the changes could significantly impact US patenting practices.
The discussion will include the following proposed changes:
1. USPTO three track examination
2. Patent quality and metrics
3. Restriction practice in patent applications
4. BPAI practice

The session will conclude with the Annual Business Meeting and the election of Section leaders for the new Association year and voting on Bylaw amendments. All Section members are welcome and encouraged to participate. See details below about the candidates for election, and the amendments to the Section Bylaws.

Further information, schedule, and registration for the Annual Meeting.

ABA-IPL Nominees for open positions; Business Section with Elections to take place at ABA Annual Meeting

Elections for open positions will be held at the ABA Annual Meeting in San Francisco on Saturday, August 7, 2010 at the InterContinental San Francisco Hotel during the Section’s Annual Business Meeting.

E. Anthony Figg, Chair of the Section’s Nominating Committee, reports that the following candidates have been nominated for the 2010-2011 Association year.

Robert ArmitageChair-Elect: Robert A. Armitage , Indianapolis, IN. Mr. Armitage currently serves as the Section Vice-Chair and Chair of the Section’s Long Range Planning Committee. Mr. Armitage served on the Section Council for four years. Prior to serving on the Council, he served as Division Chair of the former Division IX – Publications and Public Education, as Division Chair of Division IV–Related Legal Issues, as Division Chair of former Division X–Biosciences and Chemical Practice, and as Division Chair of Division I–Patents. In addition, he has served as committee chair of numerous committees within all of these divisions, and as Program Chair of the Annual Intellectual Property Law Conference.

Joe PotenzaVice-Chair: Joseph M. Potenza, Washington, DC. Mr. Potenza is the current Publications Officer and Chair of the Content Advisory Board. He served on the Section Council for four years, and as Section Secretary for three years. Mr. Potenza is currently a member of the ABA Standing Committee on the Federal Judiciary, and has been a long-standing member of the ABA Standing Committee on Publishing Oversight where he continues to serve as a Special Advisor. Previously, Mr. Potenza was Program Chair of the Annual Intellectual Property Law Conference and Co-Chair of the former Summer IPL Conference. He also served as Chair of Division VI – Litigation, Alternative Dispute Resolution and Related Issues, and the committees on Patent System Policy Planning, Public Information, Trial and Appellate Rules and Procedure, and Young Lawyers. Mr. Potenza is also a former Chair of the ABA Section of Science & Technology Law.

Council Members
( for a four-year term ending in 2014)

 

Donna SuchyDonna Suchy, Rochester, NY.  Ms. Suchy has served as a member of the Books Editorial Board for three years. She also serves as current Vice-Chair of Committee 805 – Spring Conference. She has served as Chair of Division VI – Litigation, Alternative Dispute Resolution & Related Issues, Chair of the former Special Committee on IP Valuation, Chair of the Membership Committee and as the Law Student Division Liaison to the Section.

 

George JordanGeorge Washington Jordan III, Houston, TX . Mr. Jordan is a member of the Content Advisory Board and member of the Annual Review Editorial Board. He served as Chair of the Annual Review Editorial Board for two years prior to that, being the driving force behind the development and production of the first edition of the Annual Review of Intellectual Property Law Developments, published in 2009. He also served as Co-Chair of Committee 701 – Computer Programs for two years.

 

Amy BenjaminAmy Benjamin, New York, NY. Ms. Benjamin has served as Chair of Division II – Trademarks and Unfair Competition for the past two years. She served as Chair of Division VIII – Meetings and Resolutions for two years prior to that, and also as Assistant to the Secretary for two years. She served as Co-Chair of Committee 805 – Spring Conference for three years. She also served for two years as Chair of Committee 302 – International Copyright Treaties and Laws.

 

Marc TeminMarc Temin, Boston, MA. Mr. Temin serves as Chair of Division VI – Litigation, Alternative Dispute Resolution & Related Issues. He is also a member of the Books Editorial Board, and a member of the Ad Hoc Committee on Social Networking Policy. He served as a member of the Long Range Planning Committee for two years. He has served as Chair of Division VII – Information Technology for two years, and also as Chair of Committee 856 – the Special Committee on the ABA Mid Year Meeting, and Co-Chair of Committee 711 – Online Security and E-Privacy.

In addition, nominated to serve the remainder of the term expiring in 2012, currently held by Antoinette Tease, who has been nominated for Publications Officer:

 

Joan McGivernJoan Morgan McGivern , New York, NY. Ms. McGivern is a member of the Section Council, completing the term vacated by Marylee Jenkins, when she was elected as Vice Chair of the Section. She has served as a member of the Magazine Editorial Board for three years. She served as Co-Chair of Committee 302 – International Copyright Treaties and Laws; Chair and Co-Chair of Committee 301 – Copyright Legislation; Chair of Committee 306 – Broadcast, Sound Recordings and Performing Artists; and Chair of the former Committee 703 – New Information Technologies.

 

Susan Barbieri MontgomerySection Delegate to the ABA House of Delegates (for a three-year term, expiring in 2013): Susan Barbieri Montgomery, Boston, MA. Ms. Montgomery is currently Section Delegate to the ABA House of Delegates, with a term expiring in 2010. She was elected to the Section Council for a four-year term in 2001, and was elected as Vice Chair of the Section in 2004. She was elected Chair-Elect in 2005, and served as Section Chair in 2006-2007. Prior to her election to Council, she chaired the former Special Committee on Security Interests for several years and also the Special Committee on Copyright and the Internet.

 

Adriana LuedkeSecretary: Adriana Suringa Luedke, Minneapolis, MN. Ms. Luedke has served as Secretary for one year. She has been the Chair of Division I – Patents, and the Section Liaison to the ABA Commission on Women in the Profession. She has served as Chair of Division VIII – Meetings and Resolutions. She has also Chaired the Committee on Patent System Policy Planning, the Committee on Government Relations to Patents and the Young Lawyers Committee, and has served as Program Vice Chair for the Annual Intellectual Property Law Conference and Program Co-Chair of the Section Activities at the ABA Midyear Meeting.

 

Theodore DavisFinancial Officer: Theodore H. Davis, Jr., Atlanta, GA. Mr. Davis has served as Financial Officer for three years, and as a Council Member for four years. He Chaired the former Division IX – Publications and Public Education, Division II – Trademarks and Unfair Competition, and the Committees on State Trademark Laws, International Trademark Treaties and Laws, and Federal Trademark Legislation.

 

Toni TeasePublications Officer: Antoinette M. Tease , Billings, MT.  Toni Tease has served as a member of the Section Council since 2007. She has also served as the Vice Chair of the Content Advisory Board since 2007. She was the Chair of Division VII – Information Technology in 2006-2007, and served as a Committee Chair for several committees within that division.

 

Susan E. McGahanMembership Officer: Susan McHale McGahan, Bedminster, NJ. Ms. McGahan currently serves as the Interim Membership Officer for the Section. She also serves as Chair of Division VIII – Meetings and Resolutions. She served as Financial Officer of the Section for three years, from 2004-2007. Prior to that, she served on Section Council from 2000-2004. She has also Chaired Division V – Professional and Section Relations, and the former Division IX – Publications. Prior to that, she served as Chair of the Young Lawyers Committee and the Membership Committee.

 

Marylee JenkinsChair: According to Section bylaws, Marylee Jenkins, New York, NY, current Chair-Elect, automatically assumes the office of Chair for the 2010-2011 Association year.

Ms. Jenkins served as a Section Council member for five years and as Assistant to the Secretary for one year. She has chaired Division VII – Information Technology and the Division’s Special Committee on Trademarks and the Internet, and as the Section’s Membership Committee Chair and Program Chair of Section activities at the 2008 ABA Annual Meeting in New York City. She has served in a number of Section Liaison roles, including to the Young Lawyers Division (YLD), ABA Standing Committee on Technology and Information Systems (SCOTIS), SOC Technology Committee, SOC Liaison to SCOTIS and ABA Commission on Women. She was a committee member of SCOTIS for three years and was appointed ABA Representative to the Intellectual Property Constituency of the Internet Corporation for Assigned Names and Numbers (ICANN) for 6 years by the ABA Board of Governors. Ms. Jenkins has also been a council member, director and chair of the Computer and Intellectual Property Law Committee of the ABA Young Lawyers Division (YLD) and is a Fellow of the American Bar Foundation.

In addition to Chair E. Anthony Figg, Washington, DC, the Nominating Committee is comprised of Pamela Banner Krupka, Los Angeles, CA, Lisa A. Dunner, Washington, DC, Ralph Oman, Washington, DC, and Mark Whitaker, Washington, DC.

Additional nominations for any position may be made by petition signed by no fewer 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 petition must be sent to the Chair and the Secretary of the Section and must 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 7, 2010.


Section to Vote on Bylaw Amendments to Create CLE Officer

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 7, 2010, at 11:30 a.m., immediately following the Section Open Forum, “IP Policy in the Crossfire” at the InterContinental San Francisco Hotel.

The amendments were approved by the Section Council at its meeting on April 10, 2010, and by the ABA Board of Governors in June, contingent upon the Section vote.

The amendments all related to the creation of an officer-level position called Continuing Legal Education Officer. The proposed changes are listed below. Added language is underlined and deleted language is struck out:

Article III

Officers and Council

Section 1.          The officers of this Section shall be a Chair, Chair‑Elect, Vice‑Chair, Immediate Past Chair, Section Delegates to the House of Delegates, Secretary, Financial Officer, Publications Officer, and  Membership Officer and CLE Officer .

Article IV

Duties and Power of Officers

Section 7           CLE Officer.   The CLE Officer shall have responsibility for advancing Section and ABA programming and continuing education goals. The CLE Officer shall oversee the Section’s programming and continuing education through liaison with Section and ABA staff and relevant Section committees. The CLE Officer shall prepare a report on the Section’s programming and continuing education for presentation at each in-person meeting of the Council and shall prepare such other recommendations and special reports on programming and continuing education issues as may be requested by the Chair of the Section.

Article VII

Elections

Section 1.          At each annual meeting of the Section, the Section shall elect:

            (a)              a Chair‑Elect, Vice‑Chair, Secretary, Financial Officer, Publications Officer , and Membership Officer and CLE Officer for a term of one year;

 

  Section 6.               The election of the CLE Officer at the 2011 Annual Meeting shall be deemed in compliance with these Bylaws.

Article VIII
Succession of Officers, Vacancies, Etc.

Section 4.          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, Financial Officer, Publications Officer, or Membership Officer, or CLE Officer, and officers so elected shall serve until the close of the next annual meeting of the Section.

 

ABA-IPL Council Votes to Support Scott Partridge Candidacy

The Section Council voted on July 13 to endorse the candidacy of Scott Partridge, Houston, TX, for one of the open At-Large Delegate slots for the ABA House of Delegates. Mr. Partridge has served on the ABA Board of Governors for the past three years, where he has been the Board Liaison to the ABA Section of Intellectual Property Law.

Voting for the House of Delegates candidates is open to all members of the American Bar Association who are present at the ABA Annual Meeting in San Francisco.

Voting credentials and information will be included with the registration packet members receive upon checking it at the Annual Meeting Main Registration Desk at Moscone Center West.

Other at large candidates for the House of Delegates include Frederic B. Rodgers, Colorado; David Wayne Sterling, Arkansas; John J. Bouma, Arizona; Jose C. Feliciana, Ohio; Kenneth E. Young, North Carolina; Carole L. Worthing, Tennessee; and Katherine H. O’Neil, Oregon.

Bilski v. Kappos decision arrives

On June 28, the final day of its Fall 2010 term, the U.S. Supreme Court announced its decision in Bilski v. Kappos, an important case for drawing lines between that which is patentable and that which is not.

In the past decade, the issuance of patents on various methods of doing business has become both prevalent and highly controversial. The patent claims in the Bilski case fall into this category.

As urged in an amicus curiae brief filed by the ABA, the Court rejected the use of a single rigid test for patent eligibility of all methods of doing business. As also urged in the ABA brief, the Supreme Court ruled that the Court of Appeals for the Federal Circuit reached the correct result by rejecting this patent application, because the claim sought to patent an abstract idea in violation of existing Supreme Court precedent. Having so ruled on the Bilski method of hedging claim, the Court left it to lower courts, particularly the Federal Circuit, to provide on-going guidance for identifying claims to abstract ideas that are not patent eligible.

The ABA brief recommended that any test for patentability not include fixed and specific requirements that rule out yet-to-be conceived but deserving inventions in emerging or unknown technologies. In its ruling the Court stated that “Congress plainly contemplated that the patent laws would be given wide scope…in order to ensure that ingenuity should receive a liberal encouragement.”  

An ABA-IPL Teleconference on July 21 will showcase the Bilski decision. The teleconference features discussion of the details of the Court’s decision and its potentially far-reaching implications. Panelists includes Denise DeFranco, counsel for Petitioner in Bilski vs. Kappos; Thomas Goldstein, the author of the American Bar Association’s amicus brief; and William Teoli, who will provide the in-house counsel perspective.

Sign up and participate in this engaging teleconference.

Selection Committee Names New Young Lawyer Fellows

The ABA-IPL Young Lawyers Fellows Selection Committee announced that it has selected Monisha Deka and Matthew Asbell as the new Young Lawyer Fellows to the Section. They will serve a three-year term. They join the current Young Lawyer Fellows Sharra Brockman and Christina Scelsi.

The Young Lawyers Fellows program was created to develop future participation and leadership within the Section. Young Lawyers Fellows participate in the meetings of the Section, and involve themselves in committee activities of the Section. They are also active in recruiting new members to the Section and to its committees, and they make a commitment to mentor future fellows and new members of the Section.

Each year, the Young Lawyers Activity Group initiates the call for nominees for Young Lawyer Fellows, and candidates are selected in the Spring. To qualify for a Fellow position, candidates must be members of the ABA-IPL Section and of the ABA Young Lawyers Division. They must have a previous demonstration of leadership qualities and commitment through work in the Section or Young Lawyers Division, and in other bar organizations, and professional or pro bono activities.

This year, the committee was chaired by Christopher Bullard, and members included David Dawsey, Adrienne Fields, Janet Hendrickson, Emile Losa, and Matt Kohner.

For information on next year’s nominations process, email iplaw@abanet.org.

Kate Spelman Re-appointed to AIPLEF Trustee Board

In June, the ABA Board of Governors voted for reappointment of Katherine C. Spelman to a new three-year term as Trustee of the American Intellectual Property Law Education Foundation (AIPLEF), representing the ABA.

The ABA Section of Intellectual Property Law, through its institutional membership in the American Intellectual Property Law Education Foundation, provides $10,000 annually toward the Sydney B. Williams Intellectual Property Law Scholarships and an additional $2,500 toward the Jan Jancin Award. AIPLEF is an organization formed by the ABA Section of Intellectual Property Law in conjunction with the American Intellectual Property Law Association to grant scholarships to encourage racial and ethnic minority law school students to study the field of intellectual property law and select it as a field of practice, and also to award excellence in the study of intellectual property law.

Ms. Spelman has served as a trustee to AIPLEF since 2004. In addition to her work with AIPLEF she has served in a number of leadership roles within the ABA-IPL section, including a term on Section Council.

She is a founding partner of the Cobalt LLP firm in Berkeley, California.

Wayne Sobon Receives In-House Counsel Award

The National Lesbian, Gay, Bisexual & Transgender (LGBT) Bar Association announced Wayne P. Sobon (Associate General Counsel and Director of Intellectual Property for Accenture), among the recipients of the organization’s 2010 Out and Proud In-House Counsel Award. Throughout the year, the LGBT Bar recognizes LGBT corporate attorneys for their contributions to equality in the legal profession.

Mr. Sobon serves as the ABA Section of Intellectual Property Law Liaison to the ABA Commission on Sexual Orientation and Gender Identity.

The LGBT Bar singled out Mr. Sobon for his commitment to championing LGBT issues within Accenture (as the Senior Executive Sponsor for its LGBT employee network), the American Bar Association (as a liaison to the ABA’s Commission on Sexual Orientation and Gender Identity), and the American Intellectual Property Law Association (where he spearheaded the formation of a new subcommittee on LGBT issues).

The Out & Proud In-House Counsel Award will be presented on August 17, 2010 at a reception in San Francisco. For more information about the event, please visit: http://www.lgbtbar.org/events/InHouseCounselReception.htm.

The National LGBT Bar Association is a national association of lawyers, judges and other legal professionals, law students, activists, and affiliated lesbian, gay, bisexual and transgender legal organizations. The association promotes justice in and through the legal profession for the LGBT community in all its diversity.

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