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ABA-IPL Section Focus: Highlights of the 2017–18 Association Year

©2018. Published in Landslide, Vol. 11, No. 1, September/October 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.

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, design, and trade secrets. Providing a forum for rich perspectives and reasoned commentary, ABA-IPL serves as the ABA voice of intellectual property law within the profession, before policy makers, and with the public.

Advocacy

Under the leadership of ABA-IPL Chair Scott F. Partridge, the recent Association Year saw great activity and continuing strength as a leading voice for the development and improvement of intellectual property (IP) law and in shaping these laws that profoundly affect commerce, innovation, and society. The Section achieved successes in serving its diverse membership: in offering expert content, education, and practice information, and in fulfilling its goals for the profession.

ABA-IPL’s volunteers and working entities—divisions, committees, action groups, task forces, and boards—drive the Section’s work and products. Substantive committees in six divisions provide analyses of statutes, regulations, current litigation, and proposed legislation for recommended advocacy. All members can participate at the committee level in developing Section policy. Reasoned and balanced commentary enables ABA-IPL to provide policy recommendations on federal legislation and to speak on important legal issues before the federal agencies that deal with issues of IP law.

During the year, the Section was active in providing numerous comments to various government agencies on IP law and related issues.

September

The Section provided comments to the U.S. Trade Representative (USTR) regarding its initiation of a Section 301 investigation into China’s acts, policies, and practices related to technology transfer, intellectual property, and innovation.

October

Section Chair Scott Partridge testified before the USTR Section 301 Committee in the Section 301 investigation concerning China’s acts, policies, and practices related to technology transfer, intellectual property, and innovation based on the Section’s September letter.

ABA-IPL provided comments to the USTR on the North American Free Trade Agreement (NAFTA) negotiations regarding modernization of the NAFTA with Canada and Mexico, supporting a requirement to establish use to obtain a trademark registration, and opposing amendments to the Canadian Trade-marks Act that would remove the use requirement.

January

The Section wrote to congressional leadership on revising 17 U.S.C. § 108, which provides certain limited exceptions to copyright liability for libraries and archives.

February

The ABA-IPL Section sent joint comments along with the Business Law Section to the United Nations Commission on International Trade Law (UNCITRAL) on the Draft Practice Guide to the UNCITRAL Model Law on Secured Transactions.

ABA-IPL sent comments to the USTR on IP rights considerations during the renegotiation of NAFTA.

March

The Section provided a letter to the Chair and Ranking Member of the House Judiciary Committee on H.R. 3945, the Copyright Alternative in Small-Claims Enforcement Act of 2017 (Case Act).

ABA-IPL wrote to the Director of the U.S. Patent and Trademark Office (USPTO) regarding the effectiveness of the Office of Policy and International Affairs (OPIA).

April

The Section sent a letter to the Chair and Ranking Member of the Senate Judiciary Committee regarding the impact on the USPTO’s user fees of the Department of Commerce’s shared services initiative.

May

The Section’s letter to the Chair and Ranking Member of the House Judiciary Committee on USPTO oversight addressed several issues including: (1) the need to amend 35 U.S.C. § 101 to clarify patent eligibility requirements; (2) the need for procedural reforms to improve the Patent Trial and Appeal Board’s (PTAB’s) reviews; and (3) the impact of the Department of Commerce’s Enterprise Services initiative on the USPTO’s user fees.

Amicus Curiae

The ABA-IPL Section serves as a leader in offering amicus counsel in key IP law cases—continually monitoring court decisions to be ready to recommend that the American Bar Association file a brief and to follow with coordination and cooperation to assist the ABA Amicus Committee in preparing the brief.

In January, the ABA filed an amicus brief in the U.S. Court of Appeals for the Federal Circuit in Nantkwest v. Matal urging the court not to include the government’s attorney fees when awarding “all expenses of the proceedings” to the USPTO. “The ABA submits that imposing governmental attorneys’ fees on patent applicants who choose civil actions under [patent law] will hamper equal access to justice and chill the assertion of meritorious claims,” the brief says. “It is also contrary to the express language of Section 145, which does not overcome the presumption of the American rule that each party pays its own fees.”

ABA-IPL Action and Participation

This past year was marked by very active participation by Section leaders in meetings with high-level government officials, agencies, and nongovernmental organizations and in working with IP associations both domestically and internationally. Chair Scott Partridge led his fellow leaders to participate in the following:

August

Council member David Postolski represented the Section in presenting to the 37th Annual International Congress on Intellectual Property of the Brazilian Association of Intellectual Property (ABPI) in Rio de Janeiro, Brazil.

September

Chair Scott Partridge, officers Mark Dickson and Joe Potenza, and former Legislative Consultant Tom Stoll met with the White House Intellectual Property Enforcement Coordinator at the White House.

Scott Partridge participated in the Southern Methodist University Symposium on IP Law, which included a discussion of the Section’s patent eligibility proposal.

Leaders from the Section Trademarks Division represented the Section at a USPTO Trademark Trial and Appeal Board public meeting with stakeholders.

The Section’s Patents Division leaders represented ABA-IPL at the 5th Anniversary Commemoration of the PTAB in Alexandria, Virginia.

October

Scott Partridge traveled to Sydney, Australia, for the International Association for the Protection of Intellectual Property (AIPPI) World Congress.

Scott Partridge represented the Section at the AIPPI 9th Global Network Summit in Venice, Italy.

Section member Max Waldbaum was the Section’s representative at the 17th Open Forum of the International Federation of Intellectual Property Attorneys (FICPI) in Venice, Italy.

November

Section member Diane Dunn McKay represented ABA-IPL at the Asian Patent Attorneys Association (APAA) 67th Annual Council Meeting in Auckland, New Zealand.

Section member Reyes Campello Estebaranz attended the Annual Meeting of the TM5 at the European Union Intellectual Property Office (EUIPO). TM5 is an international consortium of leading national trademark offices in the United States, European Union, Japan, Korea, and China.

December

Section representatives participated in the Global IP Academy roundtable discussions with the IP Attachés of the USPTO in Alexandria, Virginia. Christina Frangiosa was at the table for trademarks, and Kevin Greenleaf served in that capacity for patents. Also participating were Richard Biagi and Lisa Mueller.

Chair Scott Partridge, executive officers of the Section, and several members of the Patents Division met with Chief Judge David Ruschke of the PTAB at its headquarters in Alexandria, Virginia.

March

A delegation of ABA-IPL leaders participated in the IP Associations Meeting, an annual gathering of the major IP law associations (IPO, AIPLA, INTA, and ABA-IPL) in Washington, D.C. Various legislative and substantive topics, primarily concerning trademark issues, were discussed. Section Chair Scott Partridge led this delegation, which also included ABA-IPL Trademarks Division leaders.

Scott Partridge led fellow Section executive officers and Patents Division leaders in a meeting with the new Director of the USPTO, Andrei Iancu, at USPTO headquarters in Alexandria, Virginia.

Scott Partridge led a delegation of Section executive officers and Patents Division leaders to meet with White House Intellectual Property Enforcement Coordinator Vishal Amin at the White House.

Scott Partridge led his executive officers and Copyrights Division leaders at a stakeholders meeting with officials of the U.S. Copyright Office in Washington, D.C.

Scott Partridge and fellow ABA-IPL leaders attended the New York Intellectual Property Law Association’s Annual Judges Dinner in New York City.

April

Scott Partridge led ABA-IPL officers and Patents Division leaders in a meeting with Chief Judge David Ruschke of the PTAB in Alexandria, Virginia.

Leaders from the ABA-IPL’s Patents Division participated in the annual IP-affiliated associations meeting with the European Patent Office held at the headquarters of the American Intellectual Property Law Association (AIPLA) in Arlington, Virginia.

Scott Partridge and the Section’s Legislative Consultant, Kira Alvarez, represented ABA-IPL at events held to commemorate World IP Day, which was cosponsored by the Section. The event took place at the U.S. House Rayburn Office Building in Washington, D.C., and at USPTO headquarters in Alexandria, Virginia.

May

Section Legislative Consultant Kira Alvarez and Patents Division leader Jonathan Bowser represented ABA-IPL at a meeting of the Patent Public Advisory Committee of the USPTO in Alexandria, Virginia.

Leaders of the Trademarks Division represented ABA-IPL at the TM5 User Session held in conjunction with the Annual Meeting of the International Trademark Association (INTA) in Seattle, Washington.

Trademarks Division Chair Christina Frangiosa represented the Section at the 25th NGO Coordinating Meeting held in conjunction with the INTA Annual Meeting in Seattle, Washington.

Section Chair Scott Partridge was the Section’s official representative at the Canadian Bar Association IP Day in Ottawa, Ontario.

June

Council member Susan McGahan represented the Section at the New Jersey Intellectual Property Law Association’s 66th Jefferson Medal Award Dinner, honoring Judge Mary L. Cooper.

Section Chair-Elect Mark Dickson represented ABA-IPL at the annual Executive Committee Meeting and the 2018 FICPI World Congress in Toronto, Ontario.

The USPTO invited ABA-IPL to sponsor and participate in the signing of the 10 millionth patent issued by that office. A special ceremony was held in the East Room of the White House, with President Trump presiding, and including Secretary of Commerce Wilbur Ross. Section Chair Scott Partridge led a contingent of fellow leaders to participate in the signing ceremony and a reception following at Mount Vernon.

Notable Additional Activities

In September, the ABA-IPL Section cosponsored with the Section of Administrative Law the 12th Annual Homeland Security Law Institute in Washington, D.C.

In January, the Section once again cosponsored the Law Education Institute of the Colorado Bar Association’s National CLE Conference in Colorado.

In February, at the ABA Midyear Meeting in Vancouver, the Section’s new Substance Abuse and Mental Health Committee sponsored a CLE program on substance abuse in the legal profession.

In May, ABA-IPL cosponsored with the Section of Dispute Resolution the 11th Annual Arbitration Training Institute in Miami, Florida.

Also in May, the Section cosponsored the 16th Annual Rocky Mountain Intellectual Property and Technology Law Institute of the Colorado Bar Association in Westminster, Colorado.

Membership Service and Value

In serving its members, the Section works with its Diversity Action Group to advance the goals of the ABA-IPL diversity plan and to ensure adherence to the ABA Goal III for increasing diversity in the profession. Among diversity initiatives, the Section appoints liaisons to all the ABA Diversity Commissions and to the National LGBT Bar.

Other active affinity action groups include the Law Student Action Group, Young Lawyers Action Group, International Action Group, and Women in IP Law. All these groups work to encourage activities of representative demographics and continue to develop new members from among these natural constituencies.

ABA-IPL continues to cosponsor the annual Judicial Intern Opportunity Program (JIOP) with the Section of Litigation. The program provides diverse students who are traditionally underrepresented in the profession with full-time, six-week summer internships with state or federal judges. This year, JIOP placed 150 first- and second-year law students with 123 judges across the country; 25 judges indicated an interest in reviewing students with IP backgrounds, and 19 students were selected and placed with IP judges, including some in new positions on the federal bench.

This is the 14th year of the ABA-IPL Young Lawyer Fellows Program, which develops future participation and leadership within the Section by providing young lawyers with opportunities to work with its leaders. The Section selected two new individuals to fill new three-year terms beginning in 2018–19.

The Section is a founding partner of the American Intellectual Property Law Education Foundation (AIPLEF) through its financial support and participation on the Board of Trustees. AIPLEF awards the Sidney B. Williams scholarship to assist underrepresented minority law school students entering IP law. AIPLEF also oversees the Jan Jancin Award, presented to an outstanding third-year law student who has demonstrated excellence in intellectual property.

The Section is proud to be a premier source for understanding current and emerging issues of IP law. The distinguished volunteers who produce educational programming and publications help ABA-IPL serve its members and external audiences and provide avenues for highlighting the expertise of its members.

Landslide® magazine, the Section’s flagship periodical, is now concluding its 10th year. This high-profile IP publication has gained a wide audience even beyond the Section, including being cited in more than seven circuit decisions. It continues to increase its reputation among members and the IP bar as it serves as a key benefit of Section membership.

This year, the Section continued to grow as a premier book publisher with an increasing portfolio of new books and a robust backlist by noted authors. Over 50 ABA-IPL titles have been published, including the recent debut of a treatise on The Essential Case Law Guide to PTAB Trials.

The Section held its first West Coast seminar, IP WEST, in Long Beach, California, in October. The seminar was developed to bring a CLE educational opportunity across a broad spectrum of IP issues to people in the western portion of the nation who may not be able to travel to the East Coast annual spring conference. A second annual seminar will take place in October in California.

The Section’s 33rd Annual Intellectual Property Law Conference was highlighted by addresses by the new USPTO Director, Andrei Iancu, and Simon Tam, who recently won the seminal U.S. Supreme Court case Matal v. Tam on the use of his band name “The Slants” on First Amendment grounds, despite being denied a trademark by the USPTO because it deemed the name a disparaging mark. Simon Tam was this year’s recipient of the Mark T. Banner Award, along with his legal team, Ronald Coleman, John Connell, and Joel MacMull, who advocated pro bono for over six years to prevail before the Supreme Court.

The Section held three CLE programs during the 2018 ABA Annual Meeting in Chicago that focused on “New Horizons” in IP law, and addressed three specific IP topics—one focused on patent law, another on trademark law, and a third on in-house perspectives in international IP practice. All three programs were hosted by local law firms and were open to Annual Meeting attendees and lawyers in the Chicago area.

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