©2016. Published in Landslide, Vol. 9, No. 1, September/October 2016, 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.
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.
ABA-IPL’s Divisions and Committees regularly monitor emerging IP developments. With the work that results, Section Council is able to consider developing policy with which to advocate in 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 formal remarks were provided to numerous governmental entities—and in many cases were developed in cooperation with groups within the American Bar Association.
- In August, the Section requested renewal of blanket authority to submit to Congress views previously approved by blanket authority on three issues relating to copyright law reform. The U.S. House of Representatives’ Judiciary Committee is considering a wide range of possible reforms to U.S. copyright law and invited the Section to meet with Committee staff to present and discuss its recommendations for legislative reform.
- In October, the Section sent a letter to Senators Chuck Grassley and Patrick Leahy, the chair and ranking member of the U.S. Senate Judiciary Committee, and also to Representatives Robert W. Goodlatte and John Conyers, Jr., chair and ranking member of the U.S. House Judiciary Committee, supporting enactment of S. 1890, the “Defend Trade Secrets Act of 2015.”
- The Section responded to the invitation to comment on the coordination and strategic planning of the federal effort against intellectual property infringement and provided comments to the Office of Management and Budget regarding development of the 2016 Joint Strategic Plan on Intellectual Property Enforcement.
- The Section provided comments to the Director of the United States Patent and Trademark Office (USPTO) on the Section 101 eligibility update, welcoming the opportunity to continue to work with the USPTO in identifying patent-eligible subject matter. While comments focused on the eligibility update, the Section noted that it was also working in parallel to develop recommendations to Congress in order to clarify the law on patent eligibility.
- The Section sent a letter to President Barack Obama, outlining the copyright qualification considerations in the search for a new Librarian of Congress. The Section expressed its great interest in ensuring that, among other credentials, the next Librarian be qualified to oversee the U.S. Copyright Office, currently within the Library of Congress—stressing that its operations are central to the development and implementation of U.S. copyright policy.
- The Section wrote to provide comments in response to the USPTO’s Proposed Rules on Trial Proceedings under the America Invents Act before the Patent Trial and Appeal Board (PTAB).
- In November, the Section provided comments to the Secretary of the U.S. International Trade Commission on proposed amendments to the Rules of Practice and Procedure.
- The Section provided comments to the USPTO’s PTAB on its proposed pilot program exploring an alternative approach to institution decisions in post grant administrative reviews.
- The Section wrote a letter to the USPTO responding to an invitation to comment on proposed trademark fee increases. ABA-IPL generally supported the USPTO on its proposed fee schedule but noted concerns regarding the proposed level of the fees.
- In December, the Section commented to the U.S. Court of Appeals for the Federal Circuit on the proposed amendments to the Federal Circuit Rules of Procedure.
- The Section sent comments to the USPTO on proposed revisions to the Nice Class Headings.
- The Section sent a letter to the USPTO Commissioner for Trademarks concerning the proposed changes to Standard Protective Order of the Trademark Trial and Appeal Board (TTAB).
- In February, the Section wrote to Representatives Robert W. Goodlatte and John Conyers, Jr., chair and ranking member, U.S. House of Representatives Judiciary Committee on Copyright Law Reform, expressing views on the future of copyright law in the United States. The letter advocated Copyright Office independence, adequate resources for the Office, establishment of a small claims copyright court, and specifics regarding proposed orphan works legislation.
- The Section provided comments to Representatives Darrell Issa and Jerry Nadler, chair and ranking member, House Subcommittee on the Courts, Intellectual Property Law and the Internet regarding H. R. 1057, the “Promoting Automotive Repair, Trade, and Sales Act of 2015” (PARTS Act), generally opposing the Act. The Section favored treating patent rights equally regardless of the area of technology to which those rights apply. The Section further expressed its desire to work with Congress to address the concerns.
- The Section addressed a letter to the Commissioner for Patents, USPTO, which provided suggested case study topics to the USPTO for the new pilot program as part of its Enhanced Patent Quality Initiative.
- In March, the Section wrote to the U.S. Secretary of Commerce and the Director of the USPTO to express concerns relative to the USPTO’s consideration of the Department of Commerce’s proposed shared services initiative as it related to human resources, information technology, and procurement functions. In particular, the Section’s comments noted that the America Invents Act requires that all fees collected by the USPTO be used for the expenses of that body. The Section strongly opposed diversion of USPTO user fees to entities outside of the USPTO.
- The Section sent comments to the U.S. Register of Copyrights in response to an inquiry concerning information technology upgrades for a “Twenty-First Century Copyright Office.” The Section’s views expressed support for modernization and increased efficiency.
- In April, the Section sent a letter to Representatives Robert W. Goodlatte and John Conyers, Jr., chair and ranking member of the U.S. House of Representatives Judiciary Committee, expressing its support for the enactment of H.R. 4241, the “Copyright Office for the Digital Economy Act” (CODE Act). The Section noted that the Act would bring necessary and positive change to the copyright system, allowing greater flexibility in addressing concerns of the copyright community.
- In June, the Section sent a letter to the U.S. Commissioner for Trademarks concerning proposed changes to the TTAB’s Rules of Practice. The Section expressed some concerns regarding specific rule changes while largely supporting what was proposed.
- The Section sent a letter to the U.S. Commissioner of Patents in response to the Proposed Guidelines Regarding the Application of the Written Description Requirement to Specific Situations in Design Applications.
As important intellectual property-related issues emerge in court cases, particularly in cases in the U.S. Supreme Court or the U.S. Court of Appeals for the Federal Circuit, the Section develops and recommends policy positions which the ABA House of Delegates adopts as ABA policy. Policy established in this manner then forms the basis of an amicus brief that the Section asks the ABA to file in the Supreme Court or Court of Appeals for the Federal Circuit.
- In July, the American Bar Association filed an amicus brief in the United States Supreme Court in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC. The ABA’s brief for the petitioner supports interpretation and application of the statutory six-year patent damages period (35 U.S.C. § 286) as limiting availability of the judicially created laches defense as a bar to legal damages for patent infringement.
This year, working with its international patent, trademark, and copyright committees, international liaison representatives, and fellow ABA Sections, the ABA-IPL Section produced initiatives that increased its influence in international matters and those regarding the global reach of IP law. The Section frequently cooperated with the ABA Sections of Antitrust Law, International Law, and Science and Technology Law on various comments to Canada, Korea, the People’s Republic of China, and the European Commission.
- In August, the ABA-IPL Section joined with the Sections of Antitrust Law and International Law to provide comments on the Canadian Competition Bureau’s Draft Updated Intellectual Property Enforcement Guidelines.
- In October, the Sections joined together to transmit commentary in response to a questionnaire on China’s National Development and Reform Commission on IP misuse antitrust guidelines.
- In October, Thomas Stoll, ABA-IPL legislative consultant, represented the Section at a meeting between officials from the Japan Patent Office (JPO) and representatives of major U.S. IP organizations in Washington, DC to discuss JPO’s new quality initiatives.
- Phil Swain represented the Section by attending the AIPPI World Congress in Rio de Janeiro, Brazil.
- In December, Fred Koenig represented the Section in a Symposium of the SIPO/US Bar Liaison Council with China’s State Intellectual Property Office (SIPO), at USPTO headquarters in Alexandria, Virginia.
- In January, ABA-IPL collaborated with the Sections of Antitrust Law, International Law, and Science & Technology Law to provide joint comments to the Korea Fair Trade Commission regarding its proposed amendments to the Review Guidelines on Unfair Exercise of Intellectual Property Rights.
- In February, ABA-IPL once again joined with the Sections of Antitrust Law, International Law, and Science & Technology Law to send comments to China’s National Development and Reform Commission on the Anti-Monopoly Guidelines on Intellectual Property Abuse.
- In April, these four Sections worked together again to submit comments to the government of India, Department of Industrial Policy and Promotion of the Ministry of Commerce & Industry on its “Discussion Paper on Standard Essential Patents and their Availability on FRAND Terms.” In the letter, the Sections respectfully suggested a careful approach to any legislation addressing breaches of fair, reasonable, and non-discriminatory (FRAND) terms and conditions. The letter noted that standards play an important role in the economy and that there is a strong relationship between standards development and patents.
- In May, the Section worked with the Section of International Law to send a letter to the Minister of Innovation, Science, and Economic Development of the government of Canada addressing amendments made by Bill C-31 to the use requirements of the Canadian Trade-marks Act. The two Sections expressed concern about the amendments and stated that those relating to use should be repealed or not brought into force.
- Section Chair Ted Davis traveled to Ottawa, Canada to represent ABA-IPL at the 2016 Federal Courts Judges’ Dinner of the Canadian Bar Association National IP Section.
Wide Ranging Activities
- Lisa A. Dunner was appointed by the U.S. Secretary of Commerce to serve a three-year term, effective December 1, 2015, as a member of the USPTO’s Trademark Public Advisory Committee (TPAC).
- In August, the Section co-sponsored with the Section of Administrative Law the 10th Annual Homeland Security Law Institute in Washington, DC.
- In September, the Section co-hosted with the USPTO “Trademark Day: Behind the Scenes at the USPTO.”
- In October, ABA-IPL and the Section of Antitrust Law co-sponsored the Antitrust Intellectual Property Conference at Stanford University.
- In December, Lisa Dunner and Erik Pelton participated in the TM5 User Group Meeting at the USPTO. The TM5 User Group is a partnership of the five largest trademark offices in the world, including JPO, the Korean Intellectual Property Office (KIPO), the European Union Intellectual Property Office, the Trademark Office of the People’s Republic of China, and the USPTO. They periodically gather to exchange information on trademark related matters and discuss harmonization of their practices.
- In December, Tracy Durkin, vice-chair of the Design Committee, participated in the ID5 Users Group Meeting at the USPTO. The ID5 User Group is the partnership of the five largest intellectual property offices in the world: JPO, KIPO, the Office for Harmonization of the Internal Market (OHIM), SIPO, and the USPTO.
- The ABA-IPL Section co-sponsored the Law Education Institute Conference in January in Colorado, sponsored by the Colorado Bar Association, and also co-sponsored the Colorado Bar Association’s Rocky Mountain IP Institute in June.
- In March, ABA-IPL and the Section of Science & Technology law co-sponsored the Internet of Things (IoT) National Institute in Washington, DC.
- Jonathan Hudis participated in a stakeholder forum of the USPTO’s Trademark Trial and Appeal Board.
- Jonathan Hudis and Rebeccah Gan participated in a meeting of the Trademark Users Group in Washington, DC. The group is composed of trademark experts representing the major IP organizations in the nation.
- In April, as Section chair-elect, Donna Suchy represented ABA-IPL at the Section of International Law’s Spring Meeting in New York.
- This spring, for the tenth year in a row, the Section co-sponsored USPTO Design Day with the USPTO and several other IP organizations.
- In May, as chair-elect, Donna Suchy participated in a Patent Eligible Subject Matter Task Force meeting in Minneapolis hosted by the American Intellectual Property Law Association.
- A delegation of Section representatives, including Chair Ted Davis, Legislative Consultant Thomas Stoll, Donika Pentcheva, and Thomas Franklin, met with USPTO Director Michelle Lee, to discuss a variety of patent issues. n
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 20,000 members and international associates and multiple public constituencies in providing vital programs, publications, and both educational and public outreach initiatives.
- The Section’s Diversity Action Group (DAG) continues to advance the goals of its diversity plan, furthering its commitment to the ABA Goal III for increasing diversity in the profession. In addition to liaisons to all the ABA diversity commissions, the Section has appointed a liaison to the National LGBT Bar. Its Diversity Action Group hosted the annual LGBT Diversity Reception at the Section’s 31st Annual Intellectual Property Law Conference in Bethesda.
- ABA-IPL participates 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 formed in 2001 in partnership with the ABA-IPL Section and the Association for Intellectual Property Law (AIPLA), the Minority Corporate Counsel Association, and founding corporation Johnson & Johnson. A partnership with the Thurgood Marshall College Fund was also 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.
- The ABA-IPL Section champions several active affinity action groups, including the Law Student Action Group (LSAG), Young Lawyers Action Group (YLAG), International Associates Action Group (IAG), and Women in IP Law Action Group (WIP). All of these groups work to coordinate activities of the demographic that their respective action groups represent and to reach out to develop new members from among their natural constituencies.
- The Section continues 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 2016, JIOP placed over 164 first- and second-year law students with 131judges across the country. Over 137 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.
- ABA-IPL’s publishing enterprise increased to nearly 50 titles, including a growing number of internationally-focused books. Landslide® magazine, the Section’s high-profile flagship periodical, is entering its ninth year of publication.
- In the spring, ABA-IPL’s 31st Annual Intellectual Property Law Conference highlighted 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
- 2015-16 marked the eleventh year of ABA-IPL’s 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 Brian J. Focarino of Cooley LLP and Christopher Suarez of Williams & Connolly LLP.
- The ABA-IPL Section expanded its commitments toward public outreach and public service initiatives. The focus is on education, action, and financial commitment toward select work that promotes an understanding, awareness, and appreciation of intellectual property law, and that distinguishes the Section to the public. One public service project this year took place at the ABA Midyear meeting in San Diego at the San Diego Food Bank, where the Section helped pack boxes of food items for senior citizens in need.