Perspective

Perspective: Banging on Doors to Ensure Our IP System Fulfills Its Promise for the Future

By Scott F. Partridge

©2018. Published in Landslide, Vol. 10, No. 3, Janusry/February 2018, 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.

At the start of each new Congress, politicians return to our nation’s capital to chart the nation’s agenda, and policy wonks and regulators contemplate their game plans for executive, congressional, and regulatory action. So too does the ABA-IPL Section spring into action. We analyze and prioritize key issues and, where warranted, begin making plans to appear before and/or submit written comments—to the US Patent and Trademark Office (USPTO), the US Copyright Office, the International Trade Commission and other federal and international agencies, Congress, and the executive branch. Even before a new president takes office, the Section typically has submitted a list of priorities to the presidential transition team, as we did last December.

How does our Section establish policy, and then implement it? We start at the grassroots—our committees and subcommittees, and sometimes specialized task forces. They and the officers identify issues, but the work of analyzing issues and drafting a proposed Section position begins at the grassroots. We often work with many interest groups inside and outside the ABA to achieve broad support for our positions—which then enables us to speak with an influential, powerful, and balanced voice. We frequently collaborate with other ABA Sections, including Antitrust, International Law, Litigation, and Business Law. At times, the process toward development of policy may also require approval by all 500 or so members of the ABA House of Delegates (HOD), which is a representative body comprised of lawyers from virtually every type of practice and interest group in the United States. The HOD is responsible for approving ABA-wide policy at its biannual meetings.

Of course, while we endeavor to reach a consensus position, it is rare that we achieve unanimous agreement—not from our Section’s policy-making participants, our membership, or the HOD. Such a requirement would be an unworkable straitjacket. But as we formulate a position, we consistently aim to stay true to a couple of fundamental principles: identifying policy that supports the long-term health of the intellectual property (IP) system and what constitutes objective, conflict-free, and helpful positions that best advance the more immediate issues we have an opportunity to address. Also, as the reality of the IP marketplace and its legal structure change, we sometimes opt to change previous policies and adapt to the times. But we always remain cognizant that, when the ABA-IPL Section speaks for the ABA, our use of the ABA moniker gives us both a special seat at the table and immense credibility. As a result, we do not speak on every issue; we choose when our voice will matter most. And we are careful to make our views known with a measured frequency that helps underscore, instead of dilute, the importance of the ABA voice.

How we go about ensuring that we remain true to our fundamental principles and implement policy and regulatory positions on critical IP issues is sometimes a lengthy but always careful and measured process. A couple of examples illustrate how this works.

This past August, the United States Trade Representative (USTR) announced its launch of an investigation under Section 301 of potential abuses of IP rights by China titled “China’s Acts, Policies, and Practices Related to Technology Transfer, Intellectual Property, and Innovation.” The USTR sought comments from the public on a wide range of issues, such as the forced transfer of technology (including IP rights) in return for market access, compulsory licensing, piracy, and counterfeit goods, among other issues. Given a very short turnaround time for comments, the ABA-IPL Section immediately went to work with a team of volunteer experts from our patent, trademark, copyright, and IP practice divisions to develop a position for consideration by Section Council. Because our China issues and antitrust committees had been working extensively with the ABA’s Antitrust Section for several years on comments to the Chinese government on its Anti-Monopoly Guidelines on IP Abuses, we were well positioned to speak from an informed perspective. Intensive work by our experts resulted in draft comments and an impressive 10-page recommendation prepared for Council’s urgent consideration. A draft letter was then submitted to other Sections of the ABA, including the Antitrust and International Law Sections. As is customary for this kind of commentary, the other ABA Sections then had the option of suggesting changes and objections to the letter before it could be sent to the USTR. With this part of the process complete, our Section was able to submit comments by letter1 and to testify2 before the USTR and other departments of the executive branch.

In preparing comments for the USTR, many volunteer members, including those on the task force, committees, leaders, and officers, had the benefit of reviewing a rich history of past Section policy to ensure consistency and develop content. We spoke to the USTR about forced IP transfers, compulsory licensing, bad faith trademark registrations, piracy-enabling practices, and counterfeiting. As it turned out, the ABA-IPL Section was the only major IP law association that appeared. And because most American entities with businesses in China avoided this investigation entirely (presumably because of fear of retaliation), the submission of our views was all the more important.

While the USTR process did not require HOD approval, the Section often presents resolutions to the HOD, which then allows us to speak for the ABA as a whole rather than only as a Section. This is of key importance, for example, when we may want to file an amicus curiae brief in the US Supreme Court or the US Court of Appeals for the Federal Circuit. We recently sought and obtained HOD approval to file an amicus brief in the NantKwest case, involving the USPTO’s attempts to collect its attorneys’ fees—whether it wins or loses—in district court reviews of USPTO decisions. Our Section believes that the USPTO’s actions raise a serious access to justice issue, among others. We also sought HOD approval to establish ABA policy over the years on issues such as patent eligibility, independence of the US Copyright Office, and basic trademark law issues such as those involved in the In re Tam case. In all these examples, we developed our positions with a view toward supporting the long-term role of the IP system in strengthening the US economy, and generally avoided merely addressing short-term interests.

Through our deliberate and diligent process and working in conjunction with our ABA colleagues, the ABA-IPL Section continues to have a significant impact on IP law. We communicate frequently with top officials at the USPTO on matters ranging from patent eligibility, changes to inter partes review (IPR) procedures, sharing services with the Department of Commerce, and amendments to trademark and patent rules. The Section regularly submits comments to the US and international governments. For example, we met recently with the White House IP enforcement coordinator on IP enforcement in the United States and abroad, including China.

Your ABA-IPL Section is a respected, credible, and objective voice on all aspects of IP law. For those reasons, we will continue to have a seat at the table when important IP issues are up for debate and resolution. While your membership standing alone is critical to maintaining our Section’s strong and influential IP voice, we welcome the active addition of your voice and hope that you will join one or more of our committees and subcommittees that are of particular interest to you. Thank you for your membership and participation.

Endnotes

1. Letter from Scott F. Partridge, Chair, ABA Section of Intellectual Prop. Law, to Hon. William L. Busis, Chair, Section 301 Comm., Office of the U.S. Trade Representative (Sept. 27, 2017), https://www.americanbar.org/content/dam/aba/administrative/intellectual_property_law/advocacy/advocacy-20171927-comments.pdf.

2. Written Testimony of Scott F. Partridge on Behalf of the ABA Section of Intellectual Property Law Before the Section 301 Committee in the Section 301 Investigation Concerning China’s Acts, Policies, and Practices Related to Technology Transfer, Intellectual Property, and Innovation (Oct. 10, 2017), https://www.americanbar.org/content/dam/aba/administrative/intellectual_property_law/advocacy/advocacy-testimony-20171010.pdf.

Scott F. Partridge

Scott F. Partridge is chair of the ABA Section of Intellectual Property Law. He is a partner at Baker Botts LLP in Houston, Texas. He specializes in patent, trade secret, and licensing litigation and client counseling in all areas of intellectual property law.