February/March 2009

2009 marks the Section’s 24th Annual Intellectual Property Law Conference, April 1-4, at the Crystal Gateway Marriott Hotel in Arlington, Virginia. Recognized for its national and international scope and preeminent programming, this two and one half day conference provides a gathering of the foremost authorities on the state of intellectual property law.

More than twenty CLE programs will feature expert panelists in the arenas of patent, trademark, copyright, corporate counsel, alternative dispute resolution, litigation and ethics. Complete program schedule.

This year we are offering a new and unique session: a mock appellate argument at the U.S. Court of Appeals for the Federal Circuit with the participation of Chief Judge Paul R. Michel, Senior Circuit Judge S. Jay Plager and Circuit Judge Randall R. Rader. Attendees will also have the opportunity to be sworn in by Chief Judge Michel for admission to the bar of the Federal Circuit. Check the appropriate box on the registration form to sign up(transportation provided).

Our valuable networking events offer the opportunity to socialize with colleagues and meet top IP practitioners:

Wednesday, April 1 – Avatars at the Bar: Welcome Reception— come have some real and virtual fun, presented by the ABA-IPL Young Lawyers Committee (complimentary)

Thursday, April 2 – Luncheon with guest speaker Christopher Benson, Fulbright & Jaworski, L.L.P., “Flash of Reality: The Intermittent Windshield Wiper Case” (tickets required)

Thursday, April 2 – Reception at the U.S. Court of Appeals for the Federal Circuit (tickets required, transportation provided)

Friday, April 3 – Luncheon with guest speaker Sherry Knowles, GlaxoSmithKline, “Are Governments Overreaching? Current Challenges to our Intellectual Property” (tickets required)

Friday, April 3 – Cocktail reception (complimentary)

Saturday, April 4 – Networking buffet luncheon (tickets required)

Register before March 17 to receive the special discount registration rate.

A block of rooms is being held at the special conference rate of $202 at the Crystal Gateway Marriott Hotel, 1700 Jefferson Davis Highway, Arlington, Virginia. Make your reservation online at www.marriott.com/wasgw with group code “AABAABA”, or call 800-228-9290 or 703-920-3230. The cutoff date for the room block is Monday, March 9, 2009. After this date, reservations can be made at the conference rate on a space-available basis only.

Register today!


Nominating Committee Announces Candidates

William L. LaFuze, Chair of the Section’s Nominating Committee, reports that the following candidates have been nominated for the 2009-2010 year.

Chair-Elect: Marylee Jenkins, New York, NY. Ms. Jenkins currently serves as the Section Vice-Chair and Chair of the Section’s Long Range Planning Committee. Ms. Jenkins has 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.

Vice-Chair: Robert A. Armitage, Indianapolis, IN. 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.

Council Members
(for a four year term, ending in 2013)

Mark K. Dickson, San Mateo, CA. Mr. Dickson currently serves on the Content Advisory Board. He served three years as the Section Financial Officer, and four years as the Annual Publications Editor. He has served as a Vice-Chair of the Annual Report Committee, and as chair of a number of other Section committees. He has also served as a Liaison to the Section of Real Property Trust and Estate Law, and as the Liaison from the Law Student Division.

Lisa A. Dunner, Washington, DC. Ms. Dunner has served as Chair of the Magazine Editorial Board, and as a member of the Content Advisory Board. Prior to the inception of the Section’s new magazine, Landslide, last year, Ms. Dunner was the Editor for five years of its forerunner, the IPL Newsletter. She has also served as the Section Liaison to the ABA Commission on Women in the Profession.

Nancy J. Linck, Washington, DC. Ms. Linck served as Chair of the Corporate Practice Committee for two years, and as the Section Liaison to the U.S. Patent and Trademark Office for three years. She has also served as chair of the former Inventors Committee of the Patents Division.

Ralph Oman, Washington, DC. Mr. Oman is Chair of Division III – Copyrights. He also has served as Liaison to the WIPO Standing Committee on Copyrights and Related Rights. Mr. Oman has served as Chair of the Committees on University Intellectual Property Law, Copyright Legislation, Government Relations to Copyrights, Authors, and International Copyright Treaties and Laws.

Section Delegate to the ABA House of Delegates (for a three-year term, expiring in 2012): Donald R. Dunner, Washington, DC. Mr. Dunner is currently Section Delegate to the ABA House of Delegates, with a term expiring in 2009. He has served as Delegate since 2002. A past Chair of the Section (1995-96), Mr. Dunner also served on the Section Council for a four-year term. He has chaired Division IV – Related Legal Issues, and served as Chair of the Special Committee on the Court of Appeals for the Federal Circuit, and numerous other committees within the Section over the past 40+ years.

Secretary: Adriana Suringa Luedke, Minneapolis, MN. Ms. Luedke is the current 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.

Financial Officer: Theodore H. Davis, Jr., Atlanta, GA. Mr. Davis has served as Financial Officer for two 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.

Publications Officer: 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.

Chair: According to Section bylaws, Don W. Martens, current Chair-Elect, automatically assumes the office of Chair for the 2009-2010 Association year. Mr. Martens has served as Chair of the Section’s Task Force on Patent Law Reform. He has served on the Section Council, and as Committee Chair for the Committee on University Intellectual Property Law, Special Committee on Site Selection, Committee on Arbitration and Other Alternative Procedures, Committee on the Court of Appeals for the Federal Circuit and Division Chair for Division I – Patents, Division VI – Litigation, Alternative Dispute Resolution & Related Issues, and Division IV – Related Legal Issues.

In addition to Chair William L. LaFuze, Houston, TX, the Nominating Committee is comprised of Pamela Banner Krupka, Los Angeles, CA, June M. Besek, New York, NY, Kristine Boylan, Minneapolis, MN, and Craig Summers, Irvine, CA.

Elections for open positions will be held at the ABA Annual Meeting in Chicago on Saturday, August 1, 2009 at the InterContinetal Chicago Hotel during the Section's Annual Business Meeting.

Additional nominations for any position may 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 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 1, 2009.


Susan Barbieri Montgomery Appointed as Third Section Delegate to the ABA House of Delegates

Susan Barbieri Montgomery, Boston, MA, was appointed by the Section Council at the recent ABA Midyear Meeting in Boston, in accordance with Section Bylaws, to be the Section’s third Delegate to the ABA House of Delegates to serve the balance of the ABA-established term ending in 2010, at which time the position will be up for election for a three-year term.

Ms. Montgomery 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 succeeded to the Chair position the following year. 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. Susan currently serves the Section as a member of the Patent Law Reform Task Force and as Chair of the Committee 201 Subcommittee tasked with studying and proposing resolutions regarding application in the US of the ‘famous marks’ doctrine.


Just published!
Annual Review of Intellectual Property Law Developments

The Annual Review of Intellectual Property Law Developments: 2006-2008 is the reference for any lawyer or practitioner who handles intellectual property law issues. This new, annual publication provides information on key legal developments in the courts, agencies, and legislatures, keeping you current in every area of IP law. The Annual Review provides comprehensive coverage including:

  • Proposed legislation and agency rules
  • Recent Supreme Court patent cases, including eBay v. MercExchange, KSR v. Teleflex and Quanta v. LG Electronics
  • Recent Federal Circuit en banc decisions including Egyptian Goddess
  • Recent Federal Circuit decisions on business method patents, such as In re Bilski
  • New PTO and TTAB rules
  • Recent patent developments concerning standards setting organizations including Rambus and N-Data
You might also be interested in two other recent publications: Drafting Patents for Litigation and Licensing (co-published with BNA Books) and Distance Learning and Copyright: A Guide to Legal Issues.


Section Provides Comments to U.S. Senate on Inequitable Conduct

The ABA Section of Intellectual Property Law has provided comments to key leaders of the U.S. Senate Judiciary Committee on the Section’s policies relating to inequitable conduct before the U.S. Patent and Trademark Office in a February 18 letter.


It's Not Too Late! Nominations For Division and Committee Chairs for 2009-2010

Section Chair-Elect Don Martens is still considering applications and nominations for division and committee chair appointments for the 2009-2010 ABA year. A recommendation form for these positions can be found on the Section website, along with complete information on procedure. All current division and committee chairs, liaisons, and others are invited to make recommendations, including placing their own names forward, for these positions. To make a recommendation, visit www.abanet.org/intelprop/newappts/appointments1.html.


Support the Section - Become a Law Firm Patron

Sponsorship dollars help us to provide renowned cutting-edge CLE programs and valuable networking opportunities.

As a Law Firm Patron at the $2,500 level, your firm can showcase its commitment to the advancement of IP law. In exchange for this support, your firm will receive many options for visibility at either the 24th Annual Intellectual Property Law Conference in April or the 2009 ABA Annual Meeting in July/August.

View a list of benefits or secure a sponsorship as a Law Firm Patron

For questions or other sponsorship opportunities, contact Program and Event Director Darla Brown at 312-988-5595.


Mark Your Calendars for May 5 Webinar – Import Infringement Investigations with the ITC

The U.S. International Trade Commission (ITC) is increasingly the forum of choice for litigation directed against importers and distributors of products that infringe U.S. patents, trademarks or copyrights, or that are otherwise somehow tainted by unfair methods of competition. This webinar will be presented by a Senior Official of the ITC’s Office of Unfair Import Investigations and an attorney in private practice who has successfully handled scores of these cases. It will allow attendees to get up to speed quickly in an interactive environment permitting them to have their questions answered immediately.

Marylee Jenkins, Arent Fox LLP

Ralph Mittelberger, Arent Fox LLP

Monte Fusco, U.S. International Trade Commission

Watch the Section website for complete program details and registration information.

2009 ABA Annual Meeting Chicago: July 30-August 2

Make your plans now to join the ABA Section of Intellectual Property Law as we convene at the 2009 ABA Annual Meeting in Chicago.  

At this annual meeting, you have the opportunity to gain a year’s worth of CLE credit in just two days as you keep up-to-date on the latest IP issues critical to your practice, including:

  • IP Valuation & Audits
  • Grey Market Goods – Selling Products Across Borders
  • Green Marketing – Update on the Federal Trade Commission’s Green Guides
  • Listen to the Sound of Music - Recent Pitfalls in Online Music Distribution

On Sunday, August 2 at 10:30 a.m., the Section will present one of the ABA’s specially selected Presidential Showcase Programs - Blogomania: Managing User-Generated Content Risks.

Plan to attend our valuable networking events, including the Joint Reception with the Section of International Law at the InterContinental Chicago and the Section Celebration: Neighborhoods of Chicago at Soldier Field (Home of the Chicago Bears).

Other unique programs include the lively Section Debates and Members Forum, a Professional Development Program, and Section-level CLE Roundtables.

The InterContinental Chicago will be the Section’s headquarters hotel.

Register and order your event tickets online


Upcoming Teleconferences

The Section is planning four exciting upcoming teleconferences. Three will be held during the 24th Annual Intellectual Property Law Conference,April 1 - 4, at the Crystal Gateway Marriott in Arlington, Virginia. You can register for these three teleconferences from the Conference home page.

Thursday, April 2
The Year In Trademark
10:15 am - 11:45 am Eastern Time

Friday, April 3
Earn Your Passport Stamp: Learn Best Practices for Using Arbitration in International IP Disputes (No Visa Required)
1:45 - 3:15 p.m. Eastern Time

Friday, April 3
Best Practices: Developing a Legal Presence in the Virtual World
3:30 - 5:00 p.m. Eastern Time

In addition to the teleconferences live from the 24th Annual Intellectual Property Law Conference, a live session presented in cooperation with the World Intellectual Property Organization will be available also be teleconference. The program on The Madrid System and Hague Agreement— An Update of Recent Developments and Changes on the Horizon, will be held in Chicago at The John Marshall Law School, on Monday, May 11 in the afternoon.

Check the Section Conference site for complete program and registration information, as well as teleconference registration information, as it becomes available.

Teleconferences are an easy and cost-effective way to earn CLE credit. If your committee would like to plan a teleconference, please contact Megan Potter at potterm@staff.abanet.org or 312-988-6254.

Madrid System and Hague Agreement Joint Program with WIPO Planned in Chicago

The Section teams up with World Intellectual Property Organization (WIPO) to present a special continuing legal education program on “Madrid System and Hague Agreement – An Update of Recent Developments and Changes on the Horizon”.

The program is slated for May 11, 2009 at The John Marshall Law School in Chicago, but will also be available via teleconference. Program details will soon be available on the Section website. Mark your calendars today!


Committee News

Anthony Biller, Chair of the Special Committee on Trademarks and the Internet (Committee 254), moderated a webinar co-sponsored by the ABA-IPL Section and Pike & Fischer on February 5, 2009.

The interactive webinar, entitled “ Taking Trademarks to the Top Domain: Opportunities and Risks in the New gTLD Space,” was assembled to assist trademark owners with ICANN’s forthcoming roll-out of new generic top-level domains (gTLDs). The webinar covered topics like factors to consider before applying for a gTLD, requirements and restrictions for potential applicants and domain strings.

Featured speakers included J. Scott Evans, Senior Legal Director-Global Brand and Trademark, Yahoo! Inc., Jeffrey J. Neuman , Vice President, Law & Policy, NeuStar, Inc., Tamara Reznik, Senior Corporate Counsel, Expedia, Inc., and Kristina Rosette , Special Counsel, Covington & Burling, LLP. The successful webinar had over 90 participants.

ABA Section of Intellectual Property Law 2009 Conferences… Make your plans now!

24th Annual - IPL Conference

More than just continuing legal education … a unique IP experience

Mark your calendar and watch for complete conference and
registration information on our website as it becomes available.

24th Annual Intellectual Property Law Conference April 1-4, 2009
Crystal Gateway Marriott Hotel
Arlington, Virginia

ABA Annual Meeting & ABA-IPL Section Programs
July 30 - August 4, 2009
Intercontinental Chicago Hotel
Chicago, Illinois