ABA-IPL eNews March 2020

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Cancellation of ABA-IPL Section Annual Meeting

It is with great disappointment that the ABA and the Section of Intellectual Property Law have made the difficult decision to cancel this year’s Section Annual Meeting scheduled for April 1-3 in Washington, DC. The special 125th Anniversary event scheduled in conjunction with the Section Annual Meeting has been postponed to a later date.

Cancellations for those registered have been processed automatically and refunds requested. Individuals who were registered should note that they should contact the hotel directly to cancel reservations by calling 202-347-3000 (800-228-7697 toll free). Flight reservations must also be cancelled by the individual directly with their airline.

The Section thanks everyone who had registered for the meeting and for their support of the Section of Intellectual Property Law. The Section anticipates offering a selection of the scheduled CLE programs from the meeting as the IPLSPRING Webinar Series over the coming months, so watch your email for details on the Series. 

ABA-IPL webinars are free to Section members

All IPL Section webinars are free to Section members from September 1, 2019 through August 31, 2020. Don’t forget to sign-up and check them out.

ABA-IPL provides compelling CLE-accredited webinars that cover a broad range of IP issues. Mark your calendars for these upcoming webinars. Watch the events page on the Section website for information on all upcoming programs and events, and to register. As a special benefit of your membership in the ABA-IPL Section, you are able to participate in al ABA-IPL Section webinars for free during the current Association year (September 1, 2019 – August 31, 2020).

Patentability of Computer-implemented Inventions in Latin America

Tuesday March 31 at Noon – 1:30pm ET

Speakers

  • Helena Galan, Darts-IP, Sydney, Australia
  • Jose Santacroce, Moeller IP, San Andres, Argentina
  • Mariano Municoy, Universidad de San Andres, San Andres, Argentina

Register Today

ABA-IPL Books Webinar Series: Commercializing Patents in China

Thursday April 16 at 1pm-2:30pm ET

Moderator
Elizabeth Chien-Hale, I2PAssia, San Jose CA

Speakers

  • C. David Ai, University of Hawaii System, San Francisco, CA
  • Marco Xin Tong, ZGTE, Nanjing City , China

Register Today

Landslide® Webinar Series: Practical Guidance for Managing Open Source Software Legal Risks

Tuesday April 21 at 1pm-2:30pm ET

Moderator
Pervin Taleyarkhan, Whirlpool Corporation, Benton Harbor, Michigan

Speakers

  • Susan McGahan, AT&T, Beminister, NJ
  • Donna Suchy, Collins Aerospace, Cedar Rapids, IA
  • Adriana Luedke, Lockheed Martin Corporation, Bethesda, MD

Register Today

NEW

Click here to purchase, "Commercialization of IP Rights in China" 

COMING SOON

Section Advocacy

Comments to WIPO on intellectual property policy and artificial intelligence

On February 12, 2020, the Section provided comments to the World Intellectual Property Organization on intellectual property policy and artificial intelligence. The comments drew from positions reached in response to two sets of requests for comments on Intellectual Property Protection for Artificial Intelligence Innovation, which were promulgated by the US Patent & Trademark Office (“USPTO”) at 84 Fed. Reg. 44889 (August 27, 2019) and 84 Fed. Reg. 58141 (October 30, 2019). In the comments, the Section noted that it is of the view that AI is not at a stage of development that it is so “autonomous” (sometimes called “general AI”) that it can be considered to “conceive” inventions protected by American patent law or works protected by American copyright law.

Comments to the Librarian of Congress on qualifications for Copyright Register

On March 10, the Section send a letter to the Librarian of Congress regarding the qualifications that should be required of any person selected to be Register of Copyrights. The Section stated that the Register must have substantial expertise and experience in copyright law. The individual must possess deep institutional knowledge of copyright law and copyright history. A candidate should have a commanding knowledge of copyright jurisprudence and experience with complex copyright transactions and litigation. And, the candidate should have the appropriate management skills to run such an office.

Comments to the TTAB on issuance of precedential decisions

On March 10, the Section provided comments to the Chief Judge of the USPTO Trademark Trial and Appeal Board (TTAB) regarding the issuance of precedential decisions by the TTAB. the Section noted that it continues to believe that the Board should increase its number of precedential decisions issued, which would ensure consistency with Board procedures and promote more efficient and more effective practice that takes into account current market realities.

Comments to the Copyright Office on Online Publication

On March 19, 2020 the Section responded to a notice of inquiry from the U.S. Copyright Office on “online publication.” The Section noted in its letter that determining how publication status should be dealt with in registration applications for works published online requires balancing at least three different goals-- supporting the creation of as complete and accurate a database of copyrighted works as realistically possible; avoiding registration requirements that call for information that an applicant does not have and cannot reasonably attain, which can lead to errors that might invalidate the registration; and protecting third parties from adverse consequences that flow from a party’s reliance on erroneous material concerning publication status on the registration certificate. The Section believes policy should be created to establish a workable balance among these goals.

The WIPO Elects New Director General

Daren Tang, Singapore’s intellectual property czar, will succeed Australia’s Francis Gurry as the leader of the World Intellectual Property Organization (WIPO). The U.S. Secretary of Commerce, Wilbur Ross, and the Director of the USPTO, Andrei Iancu, applauded his election, and Maria Strong, the Acting Register of Copyrights, offered her personal congratulations: “I have had the pleasure of working with Mr. Tang on copyright trade negotiations in recent years, and I respect his commitment to intellectual property, his wise counsel, and his good humor. The Copyright Office has worked with WIPO on numerous initiatives, from our recent event on artificial intelligence, to our biennial training for foreign copyright leaders, and to our annual World IP Day events, and we look forward to continuing our strong relationship.”

ABA-IPL Section Nominating Committee Announces Nominees for 2020-2021 ABA year

Donna P. Suchy, Chair of the Section’s Nominating Committee, reports that the following candidates have been nominated for the 2020-2021 Association year:

Chair-Elect: Kim Jessum, Philadelphia, PA. Ms. Jessum is current Vice Chair of the Section. She served as the Section Financial Officer for four years. She served as Continuing Legal Education Officer and Chair of the Continuing Legal Education Board for three years. She served as the Chair of the Annual Intellectual Property Law Conference and Chair of the Teleconference Committee for two years each. She was Chair of Section’s the former Committee on Copyrights and the Internet. She also served for three years as Chair of the former Young Lawyers Committee and was a founder of the Young Lawyer Fellows program. Outside of the Section, she is currently a member of the ABA Standing Committee on Technology and Information Systems, ABA Annual Meeting Program Planning Committee, and Litigation Section Judicial Intern Opportunity Program National Co-chair and was previously a member of the ABA Standing Committee on Specialization, ABA Standing Committee on Technology and Information Systems, and ABA Standing Committee on Continuing Legal Education and liaison to the Standing Committee on Membership.

Vice Chair: Thad Chaloemtiarana, Chicago, IL. Mr. Chaloemtiarana currently serves on the Section Council. He served Membership Officer of the Section for two years, and as Vice Chair of the Membership Board for three years. He also served as Vice Chair of the Diversity Action Group for three years. He was Chair of the Trademarks and Unfair Competition Division for two years and Vice Chair of that Division for two years. He has been a member of the CLE Board, the Membership Board and the Revenue Committee. He currently serves as Co-Chair of the Young Lawyer Fellow Advisory Committee. He has chaired several committees in the Trademarks Division. He is the current Liaison to the National Asian Pacific American Bar Association.

Secretary: Adriana Suringa Luedke, Minneapolis, MN. Ms. Luedke has served as Secretary for two years. Prior to this, she served on the Section Council for four years. She previously served as Section Secretary for three years. She has been the Chair of the Patents Division, and the Section Liaison to the ABA Commission on Women in the Profession. She has served as Chair of the former Division on Meetings and Resolutions. She has also been Chair of 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 Section activities at the ABA Midyear Meeting.

Financial Officer: Rob Lytle, Redmond, WA. Mr. Lytle is currently the Financial Officer-Elect. According to the Section bylaws, he will automatically assume the position of Financial Officer for a two-year term in 2020-2021 and in 2021-2022, so technically this is not a nominated position or one that is up for election in 2020-2021. Mr. Lytle formerly served as a vice-chair of the Patents Division. He has served on the Books Editorial Board for three years. He was co-chair of the Trade Secrets and Interferences with Contracts Committee for two years.

Revenue Officer: Susan McGahan, Bedminster, NJ. Ms. McGahan is the current Revenue Officer. She previously served as Vice Chair of the Revenue Committee of the Section and as a member of the committee for five years. She served as Section Secretary for two years. She served as Membership Officer for four years and Chair of the Membership Board. She has also served as Chair of the former Division on Meetings and Resolutions and for three years as Financial Officer of the Section. She served a total of five years on the Section Council. Ms. McGahan has also chaired the former Division on Professional and Section Relations, and the former Division on Publications. Prior to that, she served as Chair of the Young Lawyers Committee and the Membership Committee. She served a three-year term as Trustee to the American Intellectual Property Law Education Foundation Board of Trustees.

Publications Officer: Steven E. Gillen, Cincinnati, OH. Mr. Gillen has served as the Publications Officer for two years. He has served as Chair of the Books Editorial Board for four years and as Vice Chair of that board prior to that. He is a current member of the Content Advisory Board. He served as Chair of the Copyrights and New Technologies Committee for two years and served as Chair and Vice Chair of the Copyright Litigation Committee.

Continuing Legal Education Officer: David Postolski, Summit, NJ. Mr. Postolski is the current Continuing Legal Education Officer. He served as a current member of the Section Council prior to that. He serves as a Vice Chair of the CLE Board, where he has been an active member for many years. He has served as Division Chair of the Professional Issues Division for two years, and Vice Chair of that Division for two years. He served as Chair of the Young Lawyers Action Group and Special Advisor to the International Associates Action Group. He has served on the Revenue Committee, the Membership Committee and the Nominating Committee. He was the Young Lawyers Division Liaison to the Section for two years, and Liaison to the National LGBT Bar Association for two years.

Membership Officer: Kevin Greenleaf, Lovettsville, VA. Mr. Greenleaf is the current Membership Officer. He has served five years on the Amicus Brief Committee. He served as Chair of the USPTO Post Grant and Inter Partes Practice Committee and as Vice Chair of that committee. He served as Chair of the Patent System Policy Planning Committee and as Vice Chair of that committee. He served on the Magazine Editorial Board for four years. He was Vice Chair of the IP Transactions and Licensing Committee for one year.

Section Delegate to the ABA House of Delegates:

(for a three-year term expiring in 2023)

Joseph M. Potenza, Washington, DC. Mr. Potenza is currently a Section Delegate to the ABA House of Delegates, with a term expiring in 2020. He has served as a Delegate since 2015. He served as Section Chair, Chair-Elect and Vice Chair prior to that. He is a past Publications Officer and former 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 a former member of the ABA Standing Committee on the Federal Judiciary and was a long-standing member of the ABA Standing Committee on Publishing Oversight and 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 the Litigation, Alternative Dispute Resolution and Related Issues Division, 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.

Council Members: (for a four-year term, ending in 2024)

James Bikoff, Washington, DC. Mr. Bikoff is current Chair of the Trademarks and Unfair Practices Division. Prior to this position, he served as Vice Chair of the Division for two years. He is currently serving a three-year term as the Section’s representative on the Intellectual Property Constituency of ICANN. In previous years he has chaired the Trademark Litigation Committee, and the Trademark Legislation Committee. He was a member of the Anti-Piracy Task Force.

Keisha Hylton-Rodic, Washington, DC. Ms. Hylton-Rodic is current Vice Chair of the USPTO Ex Parte Patent Practice and Policy Committee. She has served as Liaison to the ABA Section of Health Law for a number of years, as well as Liaison to the ABA Health Law Coordinating Group. She Chaired the USPTO Post-Grant and Interpartes Patent Practice Committee for two years and the Patents in the Chemical and Life Sciences Committee for two years. She served a three-year term as a Trustee on the Board of the American Intellectual Property Law Education Foundation. She has served as a member of the Diversity Action Group, the CLE Board and the Membership Board.

Rivka Monheit, Atlanta, GA. Ms. Monheit is Chair of the International Patent Laws Committee. She previously Chaired the Patent Legislation Committee for two years and served as Vice Chair of that Committee for two years. She is a member of the Standing International IP Task Force, and the Section 101 Task Force.

Richard Stark, New York, NY.  Mr. Stark has served as Vice Chair of the Specialized IP Law Division for two years. He was Chair of the Antitrust Interface with IP Rights Committee for two years and served as Vice Chair of that committee prior to that. He is a member of the Section Revenue committee as well.

Council Member: (for a two-year term, expiring in 2022, to fill the vacancy of Thad Chaloemtiarana)

Dale Cendali, New York, NY. Ms. Cendali served a previous four-year term on the Section Council from 2012 to 2016. Prior to that she served as Chair of the Division on Related Legal Issues. She served as a Vice Chair of the Copyrights Division for two years. She was Chair of the Copyright Litigation Committee for two years prior to that.

Young Lawyer Council Member: (for a one-year term expiring in 2021)

Pervin Taleyarkhan, St. Joseph, MI. Ms. Taleyarkhan is Vice Chair of the Business and Trade Division of the Section. She has served as Vice Chair and Chair of the In-House IP Committee.  She is a member of the Magazine Editorial Board, the Content Advisory Board, and the Membership Board. She is Liaison to the Association of Corporate Counsel. She is a Young Lawyer Fellow of the Section.

Section Chair: According to Section bylaws, June M. Besek, New York, NY, current Chair-Elect, automatically assumes the office of Chair for the 2020-2021 Association year.  Ms. Besek currently serves as Section Chair-Elect and served as Vice Chair previous to that. She served on the Section Council from 2005-2009 and from 2011-2015. She is the current Liaison to the ALI Restatement of Law/Copyright Project. She serves as a Liaison to the World Intellectual Property Organization Standing Committee on Copyrights and Related Rights. She is a current member of the Content Advisory Board. She served previously as Division Chair of the Copyrights Division. She was chair of the Committee on Broadcasting, Sound Recordings and Performing Artists, Chair of the Committee on Minorities in the Profession, Chair of the Government Relations to Copyrights Committee, Chair of the Copyright Office Affairs Committee, Chair of the International Copyright Treaties and Laws Committee, and Chair of the Long-Range Planning Committee. She also served as Chair of the Copyright Law Reform Task Force

The Section’s Nominating Committee, appointed by Section Chair George Jordan, is composed of:

Donna P. Suchy
Cedar Rapids, IA

Scott F. Partridge
Houston, TX

Malaika Tyson
Chicago, IL

Anna Raimer
Houston, TX

Jan Jensen
Los Angeles, CA

Additional nominations for this new position or 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 elections held at the Annual Meeting. The Business Session with Elections will be held on Friday, July 31, 2020 in Chicago, IL.

ABA-IPL Divisions and Committees for 2019-2020

All Section members are encouraged to review the committees and select and join those on which they wish to serve, and which are of interest to them. If you are already a member of one of the existing committees, you are carried over as a member in the new association year.

There have been a number of new committees formed for the 2019-2020 association year, and several committees have been realigned in their respective divisions. The committee structure for 2019-2020 is listed below. All Section members are also encouraged to join the new committees.

Patents Division

  • Patent Legislation Committee [join]
  • International Patent Laws Committee [join]
  • USPTO Ex Parte Patent and Policy Practice [join]
  • USPTO Post Grant Patent Practice and Policy Committee [join]
  • Chemical and Life Science Patent Committee [join]
  • Patent Litigation Committee [join]
  • Patent System Planning Committee [join]
  • High Tech and Software Patent Committee [join]

Trademarks Division

  • Trademark Legislation Committee [join]
  • International Trademark Laws Committee [join]
  • USPTO Trademark Practice and Policy Committee [join]
  • Trademark Litigation Committee [join]
  • Trademarks and the Internet Committee [join]

Copyrights Division

  • Copyright Legislation Committee [join]
  • International Copyright Laws Committee [join]
  • Copyright Office Affairs Committee [join]
  • Visual Arts and Dramatic Works Committee [join]
  • Copyright and Social Media Committee [join]
  • Copyright and Emerging Technology Committee [join]
  • Music and Performing Arts Committee [join]
  • Copyright Litigation Committee [join]
  • Literary Works Committee [join]

Specialized IP Law Division

  • Trial and Appellate Procedure Committee [join]
  • Alternative Dispute Resolution Committee [join]
  • Antitrust Interface Committee [join]
  • Trade Secrets and Interferences with Contracts Committee [join]
  • Design Rights Committee [join]
  • Marketing Interface Committee [join]
  • Privacy and Publicity Rights Committee [join]
  • Digital Games and New Media Committee [join]
  • Information Technology Committee [join]
  • Fashion Committee [join] ­ New Committee

Professional Issues Division

  • Law Practice Management Committee [join]
  • Pro Bono Committee [join]
  • Ethics and Professional Responsibility Committee [join]
  • Substance Abuse and Mental Health Committee [join]

Business and Trade Division

  • IP Transactions and Licensing Committee [join]
  • International Trade Commission Committee [join]
  • China IP Issues Committee [join]
  • Government IP Rights Committee [join]
  • Intellectual Property Asset Management Committee [join] ­ New Committee
  • In-House IP Committee [join]
  • Anti-Counterfeiting and Piracy Committee [join] ­ New Committee

Become a Voting Committee Member

Take advantage of an opportunity to participate in developing Section policy and sign up as a voting member of your committee. Voting members will be asked to study the policy issues of the committee and vote on the reports in a timely and responsive manner. Any lawyer member of a committee is welcome to sign up to be a voting member of the committee.

Committee members who choose not to enroll as a voting member can still participate in all other committee activities and receive any committee updates and information.

Details of Committee Voting Membership:

  • Committee members may sign up throughout the entire year. Once a committee begins deliberations on a particular resolution, no new voting members will be allowed to subscribe for the purpose of voting on that particular resolution. The committee chair determines the date on which deliberations have begun.
  • Members may opt out of being a voting member at any time by notifying the Committee Chair. Those opting out of voting membership will still retain their membership in the committee.
  • A valid vote on a committee resolution will consist of a majority of a quorum of the voting committee members. There is no upper limit, nor lower limit to the number of people who may subscribe to be voting members on a particular committee.
  • Only lawyer members of the committee are eligible to be become voting members of the committee.
  • Voting members will receive a communication from the Committee Chair once voting begins, requesting a vote by a date-certain. Voting members not submitting a vote by a requested date for two successive resolution vote calls will revert to regular membership of the committee, and will need to re-subscribe as a voting member.
  • The committee rosters, including the roster of voting committee members will roll over to subsequent years. There is no need to re-subscribe as a voting committee member with each new Association year.
  • Voting members who do not vote two times in a row will be removed from the voting member roster.

Please remember to notify the ABA if your email address changes by logging in to your “myABA” page on the ABA website or calling the ABA Member Service Center at (800) 285-2221.

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CHAIR
George W. Jordan III
Norton Rose Fulbright LLP
Houston, TX

CHAIR-ELECT 
June M. Besek
Columbia University School of Law
New York, NY

VICE-CHAIR
Kim R. Jessum
Heraeus, Inc.
Yardley, PA

SECRETARY
Adriana Luedke
Lockheed Martin Corporation
Bethesda, MD

FINANCIAL OFFICER
Will Jones
Bethlehem, PA

FINANCIAL OFFICER-ELECT
Robert Lytle
Microsoft
Redmond, WA

REVENUE OFFICER
Susan E. McGahan
AT&T
Bedminster, NJ

PUBLICATIONS OFFICER
Stephen E. Gillen
Wood Herron & Evans LLP
Cincinnati, OH

MEMBERSHIP OFFICER
Kevin Greenleaf
Dentons US LLP
Lovettsville, VA

CLE OFFICER
David Postolski
Gearhart Law, LLC
Summit, NJ

SECTION DELEGATES TO
THE HOUSE OF DELEGATES
Joseph M. Potenza (2020)
Banner & Witcoff, Ltd.
Washington, DC

William L. LaFuze (2021)
McKool Smith
Houston, TX

Lisa A. Dunner (2022)
Dunner Law PLLC
Washington, DC

IMMEDIATE PAST CHAIR
Mark K. Dickson
Phase M LLP
San Mateo, CA

Contact Us:
ABA Section of Intellectual Property Law
312.988.6254
iplaw@americanbar.org
www.americanbar.org/iplaw