Section Focus

Section Focus

©2015. Published in Landslide, Vol. 7, No. 6, July/August 2015, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Highlights of the 2014-15 Association Year

From its strength within the American Bar Association, the ABA Section of Intellectual Property Law (ABA-IPL) advances the development and improvement of intellectual property laws and their fair and just administration. The Section furthers the goals of its members by sharing knowledge and balanced insight on the full spectrum of intellectual property law and practice, including patents, trademarks, copyright, industrial design, literary and artistic works, scientific works, and innovation. Providing a forum for rich perspectives and reasoned commentary, ABA-IPL serves as the voice of intellectual property law within the profession, before policy makers, and with the public.

Chair Lisa Dunner presided over the ABA-IPL Section during a very active Association Year—working with its Council, Divisions, Committees, Boards, and Action Groups and in collaboration with entities of the American Bar Association. As it worked to serve the entire member community, ABA-IPL advocated for improvements and administrative developments in IP law and policy throughout the nation and globally.

Advocacy

ABA-IPL’s Divisions and Committees regularly monitor emerging IP developments. With the work that results, Section Council is able to consider developing policy in which to advocate within all three branches of government on issues throughout the broad spectrum of IP law. Advocacy is accomplished through comments based on established ABA or Section policy. Where there is only Section policy it must not be inconsistent with the policy of the Association.

This year’s official remarks were provided to numerous governmental entities—and in many cases were developed in cooperation with groups within the American Bar Association.

  • The Section responded to a request for comments from the White House Office of Science and Technology Policy on the development of an updated Strategy for American Innovation. The comments noted that the Section strongly supports the Administration’s efforts to promote lasting economic growth and competitiveness through policies that support transformative American innovation.
  • Chair Lisa Dunner wrote on behalf of the Section to the Honorable Kevin McCarthy, Majority Leader of the U.S. House of Representatives, to express the views of the Section on H.R. 5233, the “Trade Secrets Protection Act of 2014” supporting enactment of the bill and urging that it be scheduled for a House vote as soon as possible.
  • The Section sent a letter to The Honorable Patrick J. Leahy, Chairman and The Honorable Charles E. Grassley, Ranking Member, Committee on the Judiciary, U.S. Senate, supporting enactment of H.R. 5108 which would expand the USPTO Law School Clinic Certification Program to all ABA accredited law schools and give explicit Congressional recognition and approval of the program for a period of 10 years. The Section urged these leaders to take necessary action to bring the bill to a favorable vote in the Senate.
  • The Section provided specific commentary to the Deputy Undersecretary of Commerce and Deputy Director of the USPTO in response to the USPTO request for comments on various matters regarding trial proceedings under the America Invents Act before the Patent Trial and Appeal Board.
  • ABA-IPL wrote to the USPTO Commissioner for Trademarks in response to the USPTO’s Proposal to Allow Amendments to Identifications of Goods and Services Due to Technology Evolution, noting that this proposal outlined “a more detailed and focused amendment process and procedure than that initially contemplated in the previous Request for Comments” to which the Section had responded in 2013.
  • The ABA-IPL Section responded to a USPTO request for input on its next generation of IT implementation with respect to the Trademark Office portion of the USPTO website to streamline accessibility to these resources and to enhance the user experience of searching, filing and otherwise accessing trademark IT resources. The Section included the results of a comprehensive survey of its members who have had experience with these resources.
  • The Section took advantage of the opportunity to comment on Examination under Section 112(a), formally to thank the USPTO for notifying stakeholders in advance of ongoing initiatives and upcoming training modules through postings on the USPTO’s website, and to compliment the Office on the value of the “Ask the Office” series.
  • The Section wrote to the USPTO regarding Patent Trial and Appeal Board (PTAB) alternative dispute resolution (ADR) policies and procedures. The Section recommended that the PTAB “consider promulgating these types of ADR policy and procedures for use in a pilot program to aid in the efficient and early resolution of contested proceedings, and to reduce administrative burden, appeals to the U.S. Court of Appeals for the Federal Circuit and costs for the parties involved in contested proceedings at the USPTO.” 
  • The ABA-IPL Section submitted a letter to the Honorable Robert W. Goodlatte, Chairman, and the Honorable John Conyers, Jr., Ranking Member, U.S. House of Representatives, recommending a legislative resolution of the conflict between two important provisions of U.S. copyright law following the 2013 decision of the U.S. Supreme Court in Kirtsaeng v. John Wiley. The Section recommended national treatment of exhaustion of copyrights and clarification of the interaction between the first sale doctrine espoused in §109(a) of the Copyright Act and the claimant’s right to control importation espoused in §602(a).
  • ABA-IPL Section Chair Lisa Dunner testified at a U.S. House of Representatives Judiciary Committee hearing on "The U.S. Copyright Office: Its Functions and Resources." Three other witnesses included representatives from the American Intellectual Property Law Association (AIPLA), the Software and Information Industries Association (SIIA), and an expert from academia who testified in his individual capacity. The hearing was limited to issues relating to the structure and functions of the Office and the resources needed for its support. Witnesses addressed only issues related to the Office itself, and not on those of the substantive law that the Office implements. Ms. Dunner's testimony called for improvements in three critical areas: greater autonomy in operations and rule-making authority, substantial upgrades in technology, and increased funding and budgeting authority.
  • The ABA-IPL Section addressed a communication to the USPTO Commissioner for Trademarks following a request for comments concerning the Draft Examination Guide on Repeating-Pattern Marks. The Section expressed support of the draft guide and offered comments to clarify and highlight a few important issues.
  • In response to the USPTO’s request, the Section provided comments on the 2014 Interim Guidance on Patent Subject Matter Eligibility that included “Nature-based Product Examples” and “Abstract Idea Examples.” The Section conveyed its support for the Office’s revised test for patent eligibility to determine whether a claim would preempt the use of a judicial exception. It further agreed with the Interim Guidance “that the Supreme Court did not create any per se excluded category to eligibility.” The Section did, however, note its concern that “improper application of the text disproportionately affects certain technology centers, such as those involving business methods and medical diagnostics.” The Section’s detailed comments set forth specific background and recommendations for consideration by the USPTO. The letter conveyed ABA-IPL’s interest in working with the USPTO and Office of Policy and International Affairs to develop advice to the executive branch regarding patent eligibility and noted that the Section is also working to develop recommendations on “what, if anything, Congress should do to clarify the law on patent eligibility.”

International Initiatives

Working with its international patent, trademark, and copyright committees, international liaison representatives, and fellow ABA Sections, the ABA-IPL Section significantly increased its activity this year in international matters and those regarding the global reach of IP law.

The Section frequently cooperated with the Section of International Law on various comments to Canada, the People’s Republic of China, and the European Commission.

  • The ABA-IPL Section and the Section of International Law issued joint comments on Bill C-31, Part 6, Division 25, which had enacted amendments to the Canadian Trade-Marks Act. The comments noted that the Bill “contains several amendments to the Canadian Trade-marks Act which, once in force, will allow an applicant to obtain a trademark registration without any requirement to declare use of the trademark in Canada or anywhere else.” The Sections opposed the Bill by advocating against the changes to be implemented to the Trade-marks Act, which was the result of the Bill being enacted into law. The comments stressed that although passage of the legislation is a setback, various organizations continue to lobby for changes to the Trade-marks Act to remove the new provisions regarding registration of a Canadian trademark without any need to show evidence of use of the mark in Canadian commerce.
  • The Sections of Antitrust Law, Intellectual Property Law, and International Law worked together to provide joint comments on the Canadian Competition Bureau’s White Paper of Patent Litigation Settlement Agreements. The Sections welcomed the Bureau’s efforts to provide guidance for pharmaceutical companies, particularly with respect to the “application of provisions of the Competition Act that have not yet been interpreted by Canadian courts, either generally or in the specific context of patent litigation settlements in the pharmaceutical industry.” However, the joint comments reflected “broad concern with the Bureau’s apparent emphasis on potential criminal prosecution of patent litigation settlements as part of the Bureau’s enforcement policy.” The comments offered “thoughts on the Bureau’s consideration of the regulatory framework, assumptions regarding patent validity and economic effect, and the Bureau’s request for a notification system in Canada.”
  • Joint comments of the ABA Sections of Antitrust Law, Intellectual Property Law, Science and Technology Law, and International Law issued in response to the European Commission’s Consultation on Patents and Standards regarding two key issues: (1) patent transparency and how it can be maintained or increased with respect to standardization, and (2) transfers of standard-essential patent (SEP) licenses. The Sections agreed that the benefits of increased transparency should be weighed against costs, and with regard to the transfer of SEPs to NPEs or PAEs, U.S. law Policy in this area remain unsettled. 
  • A Task Force of ABA Sections of Intellectual Property Law and International Law worked on comments presented jointly regarding a request by the People’s Republic of China for public opinion on draft regulations regarding Inventors Remuneration.
  • The ABA-IPL Section joined its fellow Sections of International Law and Antitrust Law in responding to a request by the People’s Republic of China for public comment on Certain Issues Concerning the Application of Law in the Trial of Patent Infringement Cases.
  • Chair Lisa Dunner, and ABA-IPL liaison to FICPI (Fédération Internationale Des Conseils En Propriété Intellectuelle), Joe Potenza, represented the Section at the 2014 FICPI ExCo meeting in Barcelona, Spain.
  • Section member Phil Swain represented ABA-IPL at the Sixth Global Network Summit in Toronto. The Global Network of National IP Practitioner Associations is a group of IP associations of a number of nations around the globe that communicate together among its member organizations; educate on laws and practice in all countries of the world; collaborate on opinions and information related to IP law; and cooperate on information collection and dissemination.
  • Elizabeth Chien-Hale represented ABA-IPL at the Asian Pacific Attorneys Association (APAA) 63rd Annual Council Meeting in Penang where she delivered a message from the ABA-IPL Section Chair Lisa Dunner.
  • The Section received ABA Board approval for Marina A. Lewis to serve as institutional representative to the Intellectual Property Constituency for a three-year term beginning in July, 2015. The IPC is an international organization formed under the Domain Name Supporting Organization of the Internet Corporation for Assigned Names and Numbers (ICANN) to represent the views and interests of users of intellectual property worldwide with particular emphasis on trademark, copyright and related intellectual property rights and their effect and interaction with the Domain Name System on the Internet. Representation allows the ABA to assume a pivotal role in providing the intellectual property law perspective in discussion and formulation of global Internet issues.
  • Joe Potenza represented the Section at the 2015 FICPI World Congress in Cape Town, South Africa. This year’s theme was “Adapt to Advance.”

Ranging Activities

The ABA, through its Section of Intellectual Property Law, continued its activities as a founding member of the America Invents Act (AIA) Pro Bono Advisory Council. As developed from stipulation in the AIA, the Pro Bono Advisory Council (PBAC) provides support and guidance to existing IP pro bono programs throughout the country, and the ABA-IPL Section established its ongoing commitment to increased activity and cooperation. This year the Section hosted joint meetings of the PBAC with ABA-IPL's Pro Bono Committee, and the Section is furthering other associated pro bono.

  • Section Chair Lisa Dunner participated in a panel of four female IP attorneys at the William Mitchell Intellectual Property Law Institute in Minneapolis where the discussion focused on women in IP, mentoring, career advancement, and the importance of staying involved in professional and bar organizations.
  • The Section once again cosponsored the Law Education Institute’s (LEI) Conference in January in Colorado in conjunction with the Colorado Bar Association.
  • ABA-IPL, in cooperation with the Colorado Bar Association and the Stanford Law School’s Program in Law, Science and Technology, co-sponsored the 13th Annual Rocky Mountain Intellectual Property & Technology Institute.
  • The ABA-IPL Section again joined with the U.S. Patent and Trademark Office and several other IP organizations in sponsoring the 9th Annual USPTO Design Day. The theme of this year's Design Day was "Designs Worth Protecting."  
  • The Copyright Office Affairs Committee held its annual meeting with the U.S. Copyright Office’s senior staff in March. Among the attendees were Maria Pallante, Register of Copyrights, Karen Temple Claggett, Associate Register of Copyrights and Director of Policy and International Affairs, Jacqueline Charlesworth, General Counsel and Associate Register of Copyrights, Rob Kasunic, Director of Registration and Associate Register of Copyrights, Bill Roberts, Director of Public Information and Education and Associate Register of Copyrights, David Christopher, Chief of Operations, Sy Damle, Deputy General Counsel, and Doug Ament, Chief Information Officer. Topics addressed included the proposed modernization of the Copyright Office and related budget constraints as well as the long-awaited Third Edition of the Compendium of U.S. Copyright Office Practices.
  • The Section joined the USPTO at its fall National Trademark Expo by participating as an exhibitor and providing information about the legal importance of trademarks.
  • Former Section Chair Marylee Jenkins was named vice chair of the USPTO Patent Public Advisory Committee (PPAC), and she was appointed by U.S. Secretary of Commerce Penny Pritzker to a two-year term beginning in December, 2014.
  • The Section’s CLE Officer, Jonathan Hudis, was appointed by Secretary Pritzker to a three-year term to the USPTO’s Trademark Public Advisory Committee (TPAC).
  • Lisa Dunner and Section Chair Elect, Ted Davis, represented the ABA-IPL Section at a U.S. Patent and Trademark Office stakeholder briefing on developments of the TM5 group of trademark offices.
  • Lisa Dunner, Ted Davis, and Section CLE officer Jonathan Hudis attended a Trademark User Association Meeting in Arlington, Virginia on behalf of ABA-IPL.
  • On behalf of the Section, Ted Davis and Rebeccah Gan participated in a roundtable on Evolving TTAB Processes to assist the TTAB to continue improving public-facing IT systems and appeal and trial processes.
  • Jonathan Hudis and Erik Pelton represented the Section in an Electronic System for Trademark Trials and Appeals (ESTTA) Users Forum and a Roundtable on Evolving TTAB Processes to assist the TTAB to continue improving public-facing IT systems and appeal and trial processes.
  • Lisa Dunner represented the ABA-IPL Section at the INTA Annual Meeting in San Diego, California.

Serving Members and the Public

In addition to advocacy and policy work, the volunteers and staff of the ABA Section of Intellectual Property Law serve a diverse community of nearly 23,000 members and international associates and multiple public constituencies in providing vital programs, publications, educational and public outreach initiatives.

  • In furthering the Section’s commitment to the ABA Goal III for increasing diversity in the profession, the Diversity Action Group (DAG) presented a Diversity Roundtable at this year’s annual spring conference called "Increasing Diversity and Awareness in Legal Organizations." DAG also hosted the annual LGBT Diversity Reception at the Section’s 30th Annual Intellectual Property Law Conference in Bethesda. ABA-IPL is also an event co-sponsor for the Annual Minority Counsel Program (MCP), this year in Chicago
  • ABA-IPL continues to participate as a founding partner of the American Intellectual Property Law Educational Foundation (AIPLEF) whose mission is to increase the diversity of the IP bar by providing scholarships and mentoring to underrepresented minority law school students pursuing careers in IP law. The Foundation was established in 2001 in partnership with ABA-IPL, AIPLA, the Minority Corporate Counsel Association, and Johnson & Johnson (the founding corporation). A partnership with the Thurgood Marshall College Fund also was established to assist in administering the Foundation’s scholarship program through publication and processing of scholarship applications and initial review of the applications. AIPLEF awards the Sydney B. Williams scholarship to assist underrepresented minority law students entering intellectual property law. Its Jan Jancin Award is presented annually to an outstanding IP law student. This year, AIPLEF awarded 22 law students with the Sidney B. Williams, Jr. Intellectual Property Law Scholarship, a prestigious honor that includes a $10,000 award.
  • The Section is continuing as co-sponsor with the Section of Litigation in the annual Judicial Intern Opportunity Program (JIOP) which provides students who are members of racial and ethnic groups that are traditionally underrepresented in the profession with full-time, six-week summer internships with state or federal judges. In 2015, JIOP placed over 175 first- and second-year law students with 150 judges across the country. Over 150 applicants expressed particular interest in intellectual property law, and 37 were selected and placed in IP-focused internships.
  • ABA-IPL’s Law Student Action Group (LSAG) increased its activities to further involve students in the Section and to develop future leaders. LSAG’s successful Law Student Reporter Program serves as a gateway for law students to become active and involved members of the Section. At this year’s spring conference, 13 reports produced 2,762 tweets using the #iplspring hashtag reporting on events in real time via Twitter, blogs, and LSAG Tumblr.
  • ABA-IPL’s publishing enterprise grew the ABA-IPL books portfolio to nearly 50 titles, including a growing number of internationally focused books. Landslide® magazine, the Section’s flagship periodical, is entering its eighth year of high-profile publication.
  • The Section published its A Section White Paper: A Call for Action on Online Piracy, representing the work of ABA-IPL’s Online Piracy Task Force, led by Christina Frangiosa and Chris Katopis.
  • In the spring, ABA-IPL’s 30th Annual Intellectual Property Law Conference was highlighted by a wide range of comprehensive CLE programs as well as events and opportunities to network with experts, colleagues, and potential clients from around the world.
  • The Section’s Mark T. Banner Award honors an individual or group that has made an impact on IP law and/or practice. Distinguished 2015 honorees are Jane C. Ginsburg, Morton L. Janklow Professor of Literary and Artistic Property Law, Columbia Law School, Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, and Tony Dutra, Legal Editor, BNA's Patent, Trademark & Copyright Journal®. They join nine previous distinguished recipients.
  • The Section’s Young Lawyers Action Group (YLAG) helped further another successful Conference Connections program at the spring conference where young lawyers network with expert member leaders. YLAG also held a series of Lunch & Learn presentations, intended as informal roundtable discussions on skills and topics geared to the interests of young lawyers.
  • 2014-15 marked the tenth year of the ABA-IPL Young Lawyer Fellows Program. The program selects two young lawyers each year for three-year terms and provides them with funding and opportunities to develop into future leaders of the Section. This year’s new fellows are Franklin Graves, Naxos of America, Inc. and Anna (AJ) Oakes, Thomson Reuters.
  • The International Associations Action Group (IAG) continued its important work in furthering the reach of the Section’s international partners and global community of Section affiliates. IAG’s electronic publication, International IP Legal Updates, is now on its eighth edition.
  • The ABA-IPL Section expanded its commitments toward public outreach and public service initiatives. The focus is on education, action, and financial commitment towards select work that promotes an understanding, awareness and appreciation of intellectual property law and its system, and distinguishes ABA-IPL to the public.