2013 annual meeting ebulletin

BULLETINAmerican Intellectual Property Law Association

Wayne P. Sobon2013-2014 AIPLA President

2013 Annual Meeting IssueWashington, DC

Finnegan is dedicated to advancing the ideas, discoveries, and innovations that drive businesses around the world. From offices in the United States, Europe, and Asia, we work with leading corporations and innovators in virtually every industry and technology to protect, advocate, and leverage their most important intellectual property assets.

For more information, please visit www.finnegan.com.

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2013 AnnuAl Meeting issue AiplA bulletin 3

in this issue...

AIPPI-US ............................................................... 36Alternative Dispute Resolution .............................. 70Amicus ................................................................... 70Anti-Counterfeiting and Anti-Piracy ........................ 27Antitrust Law ......................................................... 71Biotechnology ....................................................... 57Chemical Practice ................................................. 58Copyright Law ....................................................... 27Corporate Practice ................................................. 48Diversity in IP Law ................................................. 48Education ............................................................... 30Electronic and Computer Law .............................. 60Emerging Technologies ......................................... 72Fellows ................................................................. 47Food and Drug ....................................................... 63Industrial Designs ................................................. 28International and Foreign Law ............................... 38International Education .......................................... 30International Trade Commission ............................ 72IP Law Associations ............................................... 30IP Practice in China .............................................. 39IP Practice in Europe ............................................. 40IP Practice in the Far East ..................................... 41IP Practice in Israel ................................................ 41IP Practice in Japan ............................................... 41IP Practice in Latin America .................................. 42Law Practice Management .................................... 32Law Students ......................................................... 49Legislation ............................................................. 72

Licensing and Management of IP Assets .............. 73Membership ........................................................... 50Mentoring ............................................................... 52Mergers and Acquisitions ..................................... 74New Lawyers ........................................................ 53Online Programs .................................................... 32Patent Agents ....................................................... 63Patent Cooperation Treaty Issues ........................ 44Patent Law ............................................................. 44Patent Litigation ..................................................... 67Patent-Relations with the USPTO ......................... 67Patent Treaties and International Policy .................. 44Professional Programs ......................................... 34Professionalism and Ethics ................................... 34Public Appointments .............................................. 55Public Education .................................................... 34Standards and Open Source .................................. 75Trade Secret Law ................................................. 75Trademark Internet ................................................ 26Trademark Law ...................................................... 26Trademark Litigation .............................................. 26Trademark Treaties and International Law ............ 44Trademark-Relations with the USPTO ................. 26US Bar–European Patent Office Liaison Council ...................................................... 45US Bar–Japan Patent Office Liaison Council ...................................................... 46USPTO Inter Partes Patent Proceedings .............. 68Women in IP Law .................................................. 55

Photo Credit:Maddox Photography

Published from the Association Office

AIPLA241 18th Street South, Suite 700Arlington, VA 22202(p) 703.415.0780(f) 703.415.0786Web: www.aipla.org

Domestic Subscription Rate: $60.00 per yearForeign Subscription Rate:$70.00($20.00 per copy)

AIPLA Board of Directors .......................................................................................................................... 4Meet Wayne P. Sobon, AIPLA 2013–2014 President ................................................................................ 6President’s Report ...................................................................................................................................... 8Copyright Office Affairs ............................................................................................................................... 10Upcoming AIPLA Online Programs ............................................................................................................. 14Future Meetings Calendar .......................................................................................................................... 15

Thank You 2013 Annual Meeting Sponsors ................................................................................................ 16Photo Pages ............................................................................................................................................... 18Member News ............................................................................................................................................ 77New Members ............................................................................................................................................ 79

Committee Reports:

4 AiplA bulletin 2013 AnnuAl Meeting issue

Bulletin

Board of Directors

President Wayne P. Sobon Inventergy19925 Stevens Creek Boulevard, Suite 100Cupertino, CA 95014

President-ElectSharon A. IsraelMayer Brown LLP700 Louisiana Street, Ste. 3400Houston, TX 77002-2730

First Vice PresidentDenise W. DeFrancoFinnegan Henderson FarabowGarrett & Dunner, LLPTwo Seaport LaneBoston, MA 02210

Second Vice PresidentMark L. Whitaker Baker Botts, LLP1299 Pennsylvania Avenue, NWWashington, DC 20004

Immediate Past PresidentJeffrey I.D. Lewis Patterson Belknap Webb & Tyler, LLP1133 Avenue of the AmericasNew York, NY 10036

SecretaryDavid P. Ruschke Medtronic CardioVascular3576 Unocal PlaceSanta Rosa, CA 95403

TreasurerJohn H. Hornickel PolyOne Corporation33587 Walker RoadAvon Lake, OH 44012

Officers

Barbara A. Fiacco Foley Hoag LLPSeaport West155 Seaport BoulevardBoston, MA 02210-2600

Kevin Tottis Law Offices of Kevin TottisSuite 1200211 West Wacker DriveChicago, IL 60606

J. Michael Martinez de Andino Hunton and WilliamsRiverfront Plaza, East Tower951 Byrd StreetRichmond, VA 23219

Chen Wang E.I. du Pont de Nemours and CompanyBarley Mill Plaza 25/12084417 Lancaster PikeWilmington, DE 19805

term expires october 2014


Bulletin

Karen S. Canadycanady + lortz, LLP3701 Wilshire BoulevardSuite 508Los Angeles, CA 90010

Jody H. DrakeSughrue Mion, PLLC2100 Pennsylvania Ave.Suite 800Washington, DC 20037

Kenneth K. ChoKim & ChangJeongdong Building, 17FJeongdong-gil, Jung-guSeoul 110-784, South Korea

Manny W. SchecterIBM CorporationNorth Castle DriveNC-109Armonk, NY 10504


W. Todd Baker Oblon Spivak McClelland Maier and Nuestadt, LLP1940 Duke StreetAlexandria, VA 22314

Bradley A. ForrestSchwegman Lundberg &Woessner, PATCF Building121 South 8th Street, Suite 1600Minneapolis, MN 55402

Amie Peele CarterFaegre Baker Daniels, LLPSuite 2700300 N. Meridian StreetIndianapolis, IN 46204

Kevin H. Rhodes3M Innovative Properties Company3M CenterPO Box 33428St. Paul, MN 55133-3428

Executive Director Q. Todd DickinsonAIPLA241 18th St. SArlington, VA 22202

General CounselBernard J. Knight, Jr. McDermott Will & Emery, LLP500 North Capitol St. NWWashington, DC 20001


Board of Directors Meeting Dates & LocationsJanuary 29 · Phoenix, AZFebruary 1 · Phoenix, AZMarch 20, 2014 · Arlington, VAMay 15, 2014 · Philadelphia, PA

July 23, 2014 · Arlington, VASeptember 11, 2014 · Sonoma, CAOctober 23, 2014 · Washington, DC


To appreciate our new President, Wayne Sobon, you need to study his photograph to the right. It was taken when he was six. In it, he claims to be a bookworm because he has read 100 books. Now, ask yourself how many books you had read by that age. Consider what it takes to do something like that. Curiosity, to be drawn to the effort. Courage, to take it on. And perseverance, to get it done. That’s Wayne.

We will get to the more traditional career markers in a bit; but this introduction will try, like Wayne often does, to go outside the box to help explain what sort of leader we have. You will come to understand why Wayne is the first member of the PPAC (the Patent Public Advisory Committee, members of which are nominated by the Secretary of Commerce) to issue a record album of his original songs, why he chose to face off with then-Chief Judge Paul Michel over Bilski or then-USPTO GC James Tupin over the continuation rules package, and why he often laces his arguments with references to Kant and Nietsche.

Wayne grew up in Phoenix. As we see from the photograph, he was a curious kid. He wondered most about how the world worked, and this naturally pulled him toward science and math. We are told that on summer vacations, Wayne would successfully lobby his family (in a persistent Wayne sort of way) to stop and visit the science museums, even though no one else was interested. In high school, Wayne discovered the elegance of physics, and he was permanently smitten with this comprehensive approach to creating order from chaos.

Of course, as any of you who have seen him at receptions know, Wayne likes to have fun. This was also true when he was an undergraduate (Stanford), and he was faced all too often with having to choose between studying for an exam and attending a concert. This was where Wayne developed an important coping strategy for life: avoid the choice and do both. And so we’re not surprised to find that Wayne signed on for an extra year of college so that he could study in Berlin (the “edge of the world”) and graduate with dual majors in Physics and German Studies.

Wayne had to confront an even more profound, and personal, issue during this time: how to explain to his family that he was gay. Like many LGBT young men and women, Wayne had come of age struggling with the existential feeling of being a stranger, even with those closest to him, in a world (especially back in the 70s and 80s) where it might be difficult

to trust people. Although Wayne does not define himself as the first openly gay President of AIPLA, this early and big challenge to open up to his family (they were immediately supportive), friends and others has helped to sharpen his sense of empathy and connection with everyone around him.

After graduation (1985, Phi Beta Kappa), Wayne did what most people do: he got a job. His first was with Hughes Aircraft in Southern California, as an optical engineer. He expected to be in heaven, but instead eventually found himself praying for salvation. The detail stuff was okay, but, well, boring, and the defense industry seemed straight out of Heller’s Catch 22. Along the way, he filed several invention disclosures, and this led to an encounter that would change his life. One day he got a call from Tom Giaccherini, a patent lawyer at Hughes who had seen Wayne’s disclosures. He invited him to lunch. They went in Tom’s sports car to a fancy restaurant. Tom was dressed in a nice suit. He asked Wayne if he knew what patent lawyers do, and went on to explain. Wayne thought, “Wow, you can do this with a science degree?”

So Wayne went back to school, this time to Berkeley, where once again he avoided having to choose between two attractive things: law, which orders human relationships, and business, which orders transactions for profit. Again, he signed on for an extra year so that he could learn both disciplines. His emphasis at Haas was on corporate finance and asset valuation strategy, and at Boalt Hall he served as Technical Editor for the International Tax & Business Lawyer Journal. Wayne graduated in 1992 Order of the Coif from Boalt Hall and ranked first in his MBA class at Haas Business School.

Wayne P. SobonThe 106th President of AIPLA

by: James Pooley, Deputy Director General, Innovation and Technology Sector, World Intellectual Property Organization (WIPO)


Then it was off to Silicon Valley to see what it was really like to be a patent lawyer, and again, Wayne found that he was happiest doing everything: crafting patent applications, representing clients in litigation and transactions, and eventually providing strategic IP advice. We first met in 1993 when he came to a recruiting party at the newly established Fish & Richardson office. There were many such events before Wayne decided to join the firm, just as we were beginning to wonder if he only liked to party.

Clearly, there is a creative and fun-loving side to Wayne. In fact, when asked directly whether he’s more comfortable with the left or right side of his brain, he answers: “absolutely, the right brain, no question . . . I can’t memorize stuff . . . but I’m good at figuring out the logic of a structure.” So he sees the big picture, and as we already know loves the elegance of simplicity, whether it’s in physics, art, or patent law. But the right brain also takes over in his personal musical expression. Wayne performs with piano, guitar and voice. He claims not to prefer one instrument over another but most loves the connection between them. You will find enjoyable proof on iTunes, where his EP “Outside” is available under the name “Wayne Parrish”. Try listening; it’s really good. As his performance coach says, “Wayne Sobon is an amazing talent who chose, albeit consciously, to squander it all in pursuit of a supposed career in law.”

Well, the career in law hasn’t exactly been squandered. With Wayne’s brilliant mind and interest in the business side of IP, it was inevitable that he would leave private practice and go inside the corporate world. His first position was at Accenture where, as Associate GC and Director of IP, he organized the IP function, raised its visibility and oversaw its integration into the firm’s business model. Then at Rambus, where he served as VP and Chief IP Counsel, he helped the company with litigation strategy. Now he is VP and GC of Inventergy, where – voila! – he gets to bring it all together in one unified theory of IP management, at an organization that proves that not all patent licensing companies are “trolls”.

While earning a living, Wayne has also been deeply engaged in matters of IP policy and public awareness of IP, through his recent service on the PPAC (where he has been nominated for a second term) and as a board member of InventNow.org (the National Inventors Hall of Fame), the Intellectual Property Owners Association, the Association of Corporate Patent Counsel, and of course AIPLA.

Before coming on the Board, Wayne served AIPLA in a variety of committee positions, including Chair of the Law Practice Management Committee, where among other things he introduced the idea of getting group benefits (such as insurance) offered to the membership. And as a new member of the Board, he led the process of establishing a different

kind of strategic plan, one that focused on the direction of the organization instead of just the activities of the board members. But beyond his tireless work on a broad range of initiatives, Wayne is best known for his fierce and passionate advocacy for the patent system.

As already noted, Wayne views patent law as an elegant, well-integrated and perfectly balanced mechanism, one that is badly served through the tinkering of special interests or top-down abstractions. He suffers personally when he believes the system is threatened, as in the past by what he perceived as an autoimmune attack from the USPTO on the continuation rules package, or the focus of the Supreme Court on section 101 as the fulcrum for quality control in the patent system. In these fights, Wayne has been an extremely effective advocate on crucial issues, and we can expect more of the same from him as he helps the organization address public misunderstanding about the role of IP in the modern economy.

And just as Wayne seems to be ever-active, present everywhere at once, it should be no surprise that this is his vision for AIPLA as well. Beginning as he always does, with the customer’s point of view, he plans to ensure that all of the Association’s members, whether or not they come to the stated meetings, have a voice and receive all the benefits of membership. More a process and attitude than an outcome, “AIPLA Everywhere” should improve the experience for everyone and make the organization even more powerful.

When not out there representing the IP community, Wayne enjoys relaxing with his husband Bob and their two wonderful pugs Pickles and Georgette, particularly at their Sonoma “farmhouse”.

Please take the time to seek out Wayne and get to know him. You will be fascinated by the stories, including his late father’s role as pen pal and golf pro to the Dalai Lama (absolutely true). You will begin to understand how ordered elegance and zaniness go together. And you will discover a man of unyielding passion for the social value of intellectual property.


We recently unveiled a wonderful tribute wall in the AIPLA Board Room in Crystal City, sponsored by our Immediate Past President Jeffrey Lewis, and dedicated to every President who has led this wonderful organization. Contemplating this hundred years’ list of luminaries is a rather overwhelming experience. As I step into those shoes, for one short year, I am thrilled, honored and deeply humbled by the trust you all have placed in me. I accept the presidency of this great organization, with enthusiasm and, of course, a bit of trepidation. I am heartened and gratified that we face our various challenges backed by a world-class AIPLA staff led by Q. Todd Dickinson, a first-rate Board of Directors, and all of you, our members, who infuse all of us with clarity of purpose and dynamic creativity. Thank you so much!

I’d like to share a bit about myself, my journey here, why I love what I do, and some thoughts on how we can, together, face some rather keen challenges, while also enhancing and expanding this magnificent organization.

I want to first thank Jim Pooley, a dear friend and terrific mentor, for his lovely and fun introduction, that I hope I can somehow live up to. He’s given you some key insights about my life and how I got here. Over the last 25 years, since those long-ago days when I started as an apprentice patent agent, I’ve only strengthened my love and appreciation for what we do as intellectual property professionals. Earlier this year, I was in Philadelphia and a bit dumbstruck as I stood in Independence Hall and reflected that in that very room, some rather wise but very human people drafted not only our Declaration of Independence, but also our Constitution. What a magnificent experiment that has been! They conceived a whole new way of forming a government and a society. And, among other rights and obligations, they inscribed the rights of inventors and authors into our new Constitution. For us, they (and apparently without debate) unanimously passed Article I, Section 8, Paragraph 8.

And some of those very same people, sitting in the first Congress, passed our first patent law in 1790. That law made important breaks from England. Indeed, I have learned that our Founders thought of our patent and copyright laws as nearly as important a revolution in the economic realm, as our new federalist democracy was in the political. Unlike Britain, our new patents would be available to any inventor based on objective

criteria, not based upon personal favor from the Crown or its byzantine bureaucracy. They would be available at low cost. They would be available for moderate improvements, not just leapfrog inventions. And, crucially, they would be freely alienable. As the patent law of 1790 made clear, a patent gave not just the original inventor, but any successor or assign, the full right to enforce. And so our American experiment was off and running. Within years, not just the wealthy northern industrialist, but solo inventors in the burgeoning west, would be bringing their inventions, large and small, to be patented. Indeed, many women on the prairie frontier, a hundred years before they would have the vote, were nonetheless patenting their inventions--for things like domestic tools and farm implements, and other daily improvements, and even forming their own businesses. The US patent system was the great leveler. And it created almost immediately a typically American bustling, sometimes fractious, but hugely invigorating secondary market for patent property. Sheer genius.

And the experiment worked. So well, that British leaders, first at the British Crystal Palace Exhibition of 1851 and then at our own Centennial Exposition of 1876 in Philadelphia, were agog (and increasingly concerned) at the profusion of invention and industry that had been unleashed by Britain’s erstwhile colony, and finally and grudgingly realized how wrong-headed the British system (a rigged game that favored the wealthy and the well-connected) actually was. And so they went back and gradually changed their patent laws to approximate ours. We had triumphed. It is the brilliant effectiveness of all this that we must not lose sight of.

But we should be clear-eyed: we today face some of the greatest challenges to our intellectual property system than perhaps we have ever seen. First, we have the convergence of the digitization of everything (with 3-D printing, that really does mean everything…), the globalization of nearly all products and services, and a digital generation raised on Napster and BitTorrent, with an expectation that nearly all information can be downloaded for free. Intellectual property has never been more valuable to

President’s Reportby: Wayne P. Sobon, AIPLA President

our economy and yet never more fragile.

And while the IP marketplace has exploded into a spectrum of innovative approaches and participants, there are clearly those who exploit market imbalances in knowledge, and abuse the system, for their own gain. Unfortunately, anecdotes of these hucksters provide the emotional grist for the PR machinery whipping up a well-organized frenzy among the public and our elected representatives. A frenzy based upon misleading data, confounded by all-too-interested academics, and laden by emotional epithets. And so, when the Wall Street Journal, the New York Times, National Public Radio, and each of our local papers and news stations are routinely publishing withering attacks on our patent and intellectual property laws, that gathering storm threatens the very foundations of what made our intellectual property system great and America an economic powerhouse.

You can be sure, AIPLA will remain deeply and constructively engaged in these debates, as we did during the development and implementation of the America Invents Act (AIA), and I personally have done in my service on the USPTO’s Public Patent Advisory Committee. We also intend to go beyond these legislative, judicial and administrative debates to directly address the broader “blowback,” the sheer volume of strident attacks on our IP system itself, which is causing a crisis of confidence in the broader public.

Our Board of Directors, at our annual retreat, made educating the public on the value of IP our most important strategic goal for the near term. Just before the Annual Meeting, Immediate Past President Jeffrey Lewis and our staff convened a meeting of sister IP organizations and we all agreed that we could, separately and collectively, do much better jobs in educating the public on the huge importance and impact that our IP systems have for our economy and society in the 21st century. We’ve also announced a partnership with Lex Machina (as you may have seen in messages at our Annual Meeting) to let us better ground our analysis on solid fact, rather than distorted anecdote.

I will help lead our organization to continue and amplify that work, through specific task forces, seeking additional funding and resources, expanding broader education efforts, and collaborating with other groups like Invent Now and Street Law, to bring our unique perspective and vision about the IP system to our children, fellow citizens, business people and thought leaders.

And on a personal note, in my role as co-founder and general counsel for my new patent licensing company, Inventergy, I hope to bring the same high ethical standards and best practices, and serve as a role model for others in the burgeoning intellectual property licensing industry.

I am passionate about this work, I am passionate about our American intellectual property law system, and I am passionate for the unique role that AIPLA can play. We must act, and we must act resolutely, wisely and with purpose.

We obviously cannot do all this alone; we must work in concert with many others. But AIPLA can and must play a unique role in this debate.

And while we take on this cause and work passionately for what we believe in, we must also nurture this organization. As you’ve hopefully seen throughout the past years, we’ve made great strides in expanding the size and the diversity of our membership, reaching new constituencies, and connecting with people where they are. While our stated meetings are crucial comings-together, we’ll continue expanding our roadshows and webinars and collaborative local meetings, making AIPLA truly everywhere.

And we will be building on the work we have begun, with events like this past year’s Mid-Winter Institute and our collaborations with the Licensing Executives Society, to bridge the gaps between law and business. There’s a huge world of intellectual property transactions and business that we can easily miss, and miss out on, if we don’t build those bridges. And by reaching out beyond the law, to the practical value of what we do for inventors, companies and the general public, we can also underscore the value intellectual property plays in our world. These key themes which will guide my year as President: educating and convincing the public; making AIPLA truly everywhere; and bridging the gap between IP law and business, reinforce each other and, if executed well and with passion, can help us accomplish what we need to achieve.

I thank you for your support in these challenges, and ask for your faith and your guidance, and I am heartened we are all in this together. And I especially want to thank my husband Bob McDonald, who’s being taken on this year-long journey beside me. Thank you Bob!

Thank you all. And cheers!



COPYRIGHT LAW REVIEW

Register of Copyrights Maria A. Pallante called for review of the US copyright law in the prestigious Manges Lecture at Columbia Law School on March 4 and in testimony before the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet on March 20. On April 24, Rep. Bob Goodlatte, Chair of the Judiciary Committee, announced his intention to undertake a comprehensive review of the law in a speech at the Library of Congress celebrating World Intellectual Property Day.Judiciary Committee Holds Revision Hearings

The House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet conducted hearings on May 16, July 25, August 1, September 18, and November 19. The hearings explored issues related to review of the copyright law.

The May 16 hearing was titled “A Case Study for Consensus Building: The Copyright Principles Project.” The project brought together copyright lawyers from firms, industry, and academia to exchange ideas about aspects of US copyright law in need of revision. Five project participants testified at the hearing about ways stakeholders with different perspectives can work collaboratively and respectfully with one another. Access the hearing transcript at http://judiciary.house.gov/hearings/printers/113th/113-31_80976.PDF.

The July 25 hearing explored the role of copyrights in US innovation. “The Framers firmly believed that granting authors exclusive rights would establish the incentive for them to innovate; they believed that this financial incentive was necessary to ‘promote the progress of science and useful arts.’ And they were right,” Rep. Goodlatte noted in a written statement. “However, from time to time, it is important to stop and listen to what our nation’s creators have to say about whether the incentives are still working to encourage innovation. This Committee’s review of US copyright laws provides the perfect opportunity to do just that.”

Goodlatte’s full statement and prepared remarks by witnesses are available at http://judiciary.house.gov/hearings/113th/hear_07252013.html.

The August 1 hearing addressed the role of technology in innovation. Innovation by the technology sector “touches

numerous areas of our society from how the blind access the printed word, how businesses connect with customers, and even how American students learn about science and technology in school,” Rep. Goodlatte stated. For his complete statement and prepared remarks by witnesses, go to http://judiciary.house.gov/hearings/113th/hear_08012013.html.

The September 18 hearing considered the role of voluntary agreements in the US intellectual property system. “Voluntary agreements are a new dynamic in copyright licensing to addressing rapidly changing technology. Policymakers should consider whether future agreements can be enhanced by reforms to our copyright laws,” commented Rep. Howard Coble, Chair of the Subcommittee on Courts, Intellectual Property, and the Internet, in a statement released with Rep. Goodlatte in advance of the hearing, available at http://judiciary.house.gov/news/2013/09172013.html. Access prepared remarks by witnesses at http://judiciary.house.gov/hearings/113th/hear_09182013.html.

The November 19 hearing explored business models for delivering content in the digital age. Prepared remarks by witnesses are available at http://judiciary.house.gov/hearings/113th/hear_11192013.html.

Webcasts of all the hearings are available on the website of the Committee on the Judiciary.OFFICE OPERATIONS

The Register recently announced two executive staff appointments and a new fellowship program. In June, the Office introduced a new option for filing single applications.Jacqueline Charlesworth Named General Counsel

The Register announced on July 30 the appointment of Jacqueline C. Charlesworth as general counsel of the US Copyright Office and Associate Register of Copyrights. Charlesworth most recently served as senior counsel to the Register, advising the Register on a broad range of legal and policy matters affecting the Copyright Office and the national copyright system, including litigation, rulemakings, and a congressionally directed study regarding small copyright claims.

Copyright Office Affairsby: Wendi A. Maloney & Judith Nierman


“Jacqueline has an exceptional skill set as both a copyright attorney and a manager,” said Pallante. “Her experience and energy are well suited to the complex portfolio of this position, and as general counsel she will no doubt make important contributions to the Copyright Office and the field of copyright law in the years ahead.”

In her new role, Charlesworth will manage the staff and functions of the General Counsel’s Office. That office provides legal guidance to the various divisions and programs of the Copyright Office, including the national registration and recordation systems, and is frequently called upon by congressional offices, the Department of Justice, and other federal agencies for advice and assistance. The general counsel is a recognized expert within the US government and the broader legal community regarding the interpretation and application of the Copyright Act.

For more information, go to www.copyright.gov/bios/jacqueline_charlesworth.html.William Roberts Named Senior Counsel to the Register

The Register announced the appointment of William Roberts as senior counsel to the Register in May. Roberts worked for the Office as an attorney from 1987 to 2006, focusing on the statutory licenses in the copyright law. He left in 2006 when he was appointed as a judge for the Copyright Royalty Board. The board, made up of three judges, sets rates for cable and satellite systems, webcasters, musicians, and others who use statutory licenses to clear rights to copyrighted works. The board also rules on the distribution of royalty fees collected under the licenses.

Roberts brings “expertise on a variety of legal and policy issues,” the Register stated in announcing the appointment.Register Announces New Fellowships, Appoints Robert Brauneis

The Register of Copyrights announced the creation of two new fellowship programs on September 5. The Barbara A. Ringer Copyright Honors Program is for developing lawyers; the Abraham L. Kaminstein Scholar-in-Residence Program is for established scholars.

“The programs are a win-win all the way around for copyright law and public service,” Pallante said. “For those who are passionate about copyright, the US Copyright Office offers unparalleled opportunities to study and contribute to the field. And, of course, we will be the richer for the intellectual talent that these programs are sure to deliver.”

The Ringer Honors Program offers paid fellowships for recent law school graduates and other attorneys in the early stages of their careers. Ringer was the eighth Register of Copyrights, serving from 1973 to 1980. Candidates must have a strong interest in copyright law and a demonstrated

record of achievement in law school or in practice. The program complements the Copyright Office’s existing law clerk program, whereby law students and recent graduates spend a semester or summer volunteering in one of the Office’s legal divisions, often for academic credit.

The Abraham L. Kaminstein Scholar in Residence Program allows the Register to bring leading academics to the Copyright Office to work on mutually beneficial projects for a sustained period. Kaminstein was Register of Copyrights from 1960 to 1971. Robert Brauneis will serve as the first Kaminstein Scholar. Brauneis is a professor of law at George Washington University and the author of numerous books and articles on copyright law. He will be in residence at the Office during the 2013–14 academic year.

For more information, go to www.copyright.gov/careers.Office Introduces New Filing Option

The Office amended its regulations on an interim basis in June to establish a new registration option called the “single application.” The Office did so to provide an additional option for individual author claimants who use the Office’s online registration system to register a single work that is not a work made for hire. Administratively, single applications are simple to process and may make copyright registration more attractive to individual authors of single works. For more information, go to www.copyright.gov/fedreg/2013/78fr38843.pdf.PRIORITIES AND POLICY

The Office recently published a congressionally mandated report on small copyright claims and sponsored two public copyright education lectures. Office Releases Report on Copyright Small Claims

The Copyright Office released findings on September 30 of its two-year study on copyright small claims. The report documents the significant costs and other challenges in the current federal system of addressing copyright claims that have a relatively low economic value, and it recommends the establishment of an alternative voluntary system of adjudication to be housed within the Copyright Office. The system would focus on infringement cases valued at no more than $30,000 in damages. In a letter to the House Judiciary Committee, which requested the report, the Register thanked the many stakeholders who participated in the Office’s public process and noted the particularly acute impact of small claims issues with respect to individual creators. At the same time, she underscored that “alleged infringers must be allowed to defend themselves vigorously.”

The report is available at www.copyright.gov/docs/smallclaims.


Public Outreach and Copyright Education

The Register initiated a lecture series in 2011 titled “Copyright Matters.” On July 29, the Office hosted “Copyright Conversations with the United Kingdom.” Participants included John Alty, chief executive officer and comptroller general of the Intellectual Property Office of the United Kingdom, accompanied by Neil Feinson, director of international policy, and Adam Williams, deputy director of international policy. They were joined onstage at the Library of Congress by the Register; Maria Strong, the Copyright Office’s acting general counsel; and Karyn Temple Claggett, the Associate Register for Policy and International Affairs. The group discussed copyright policy issues facing the United Kingdom and the United States, including recent efforts in both countries to update the copyright legal system for the digital age. “The United Kingdom is facing many of the same copyright issues that we are,” Pallante remarked.

UK participants noted that a 2011 report, Digital Opportunity; A Review of Intellectual Property and Growth, has driven review of UK laws; the report is available at www.ipo.gov.uk/ipreview.htm. In addition, they discussed the launch of a website—www.copyrighthub.co.uk—to facilitate the licensing and registration of works in the United Kingdom.

On December 4, the Office hosted “Copyright Litigation: The Year in Review.” Distinguished copyright lawyers Robert Clarida and Thomas Kjellberg discussed the past year’s most notable copyright cases.DOMESTIC AND INTERNATIONAL OUTREACH

The Register of Copyrights and the Associate Register for Policy and International Affairs participated in the fourth biennial World Creators Summit, sponsored by CISAC (International Confederation of Societies of Authors and Composers). Held in Washington, D.C., in June, the summit addressed the future of creators and the creative industries in the digital environment.Register Delivers Keynote

The Register delivered a keynote address at the summit on June 4. Titled “The US Agenda: The Perspective from the US Copyright Office,” the talk stressed the importance of copyright law and laid out priorities for ongoing discussion.

“Copyright law, and respect for that law, contributes to our culture and the world economy. It drives free expression and innovation—not merely symbolically, but in ways that advance our progress as a people,” the Register stated.

Regarding the House Judiciary Committee’s comprehensive review of the copyright law, announced by Rep. Bob Goodlatte on April 24, the Register stated, “We owe it to the next generation of creators and innovators, and the public, to plan for the future.”

She articulated several priorities for consideration: clarify exclusive rights of authors in the digital age; enact a more complete public performance right for sound recordings; move the exceptions and limitations from the analog to the digital world; find solutions for orphan works; encourage a diversity of licensing regimes that are transparent and consumer-friendly and reconciled with protections against anticompetitive conduct; create 21st-century enforcement tools while also upholding principles of due process; and provide guidance to courts on statutory damages.

Congress, she noted, has already laid the groundwork for examining many issues through hearings, debate, and Copyright Office studies, demonstrating an interest in, and commitment to, the issues.

“A major goal of the next great copyright act, should we amend the law, is to create an environment where authors and artists can thrive and where good faith companies . . . can serve the marketplace through newer and better business models,” she stated.

The Register advised that interested parties maintain a respectful dialogue and understand that not all their expectations will be met. Quoting former Register of Copyrights Abraham Kaminstein (1960–71), she emphasized that “even the most ardent partisans of a particular point of view will admit that there is more than one side to almost every issue, and no one can expect to have his view prevail on every issue.”Associate Register Addresses Resale Royalty Right

Karyn Temple Claggett, the Associate Register for Policy and International Affairs, served on a June 5 summit panel titled “Resale Royalty Right: Painting a Global Picture?” Emmanuel Legrand, freelance journalist and media consultant from the United Kingdom, moderated the panel. Joining Temple Claggett on the panel were Marie-Ann Ferry-Fall, chief executive officer of the Société des Auteurs dans les Arts Graphiques et Plastiques from France; Shelley Lee, manager of intellectual property for the estate of Roy Lichtenstein; Bruce Lehman, Chair and president of the International Intellectual Property Institute; and Tania Spriggens, director of communications for the Design and Artists Copyright Society from the United Kingdom.

At the request of Congress, the Copyright Office is conducting a study of the effect that a federal resale royalty right in the United States might have on visual artists and those involved in creating, licensing, selling, exhibiting, disseminating, and preserving works of visual art. A resale royalty right would grant to visual artists a royalty when their original artworks are resold, often at significantly higher prices than the initial sale. For details, go to www.copyright.gov/docs/resaleroyalty.


Temple Claggett noted that the Copyright Office conducted a study on a federal resale royalty right in 1991 and published a report in 1992, Droit de Suite: The Artist’s Resale Royalty, available at www.copyright.gov/history/droit_de_suite.pdf. The report concluded that there were not sufficient copyright policy and economic justifications to implement such a right at that time, but suggested additional review if resale royalty rights were ever extended across Europe.

She said that a resale royalty right may be a more complex issue in the United States than in Europe because of US traditions of free alienability of property, whereas in Europe the concept of authors’ rights is a fundamental aspect of the legal regime. She noted that the Copyright Office’s 1992 report highlighted this distinction and suggested that a resale royalty right may be in tension with the underlying US system of free alienability of property.

Temple Claggett also discussed the concern of some stakeholders that a resale right would push the art market out of the United States; the role of the US copyright system in incentivizing creation and dissemination of creative works; and the need to research how many people would be affected by a US resale right and the legal and policy justifications for it. TRADE AND FOREIGN RELATIONS

The Copyright Office participated in the US delegation to a World Intellectual Property Organization (WIPO) diplomatic conference in June that resulted in a new international copyright treaty. Earlier in the year, Office staff contributed to an annual review of global intellectual property protection by the Office of the US Trade Representative.New Treaty Expands Access to Copyrighted Works

Representatives of WIPO member states signed a treaty in Marrakesh, Morrocco, on June 27 to increase access to books and other printed materials by those who are blind, visually impaired, or otherwise print-disabled. Millions of people worldwide are expected to benefit.

Karyn Temple Claggett, Associate Register for Policy and International Affairs, served on the US delegation to the diplomatic conference and was present at the signing of the “Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled,” as the treaty is formally named.

Signatory countries must adopt exceptions in their copyright laws to permit the making and domestic and international distribution of copies of copyrighted works in accessible formats, such as “talking” or audio books.

In the years leading up to the treaty’s conclusion, the Copyright Office consulted with stakeholders and collaborated with other organizations and agencies to address business

and legal challenges involved in producing and distributing copyrighted materials in accessible formats. With the US Patent and Trademark Office, the Copyright Office invited public comments on relevant topics in 2009. In 2010, the Office hosted a weeklong international forum with WIPO to explore issues of concern.

Justin Hughes and Shira Perlmutter of the US Patent and Trademark Office led the US delegation. Legal experts from the Institute of Museum and Library Services; the US departments of Education, Justice, and State; and the Office of the US Trade Representative joined Copyright Office and Patent and Trademark Office staff on the delegation.

Read the treaty at www.wipo.int/meetings/en/doc_details.jsp?doc_id=241683.

Office Contributes to Annual Review of Global IP Rights

Again this year, Copyright Office legal staff assessed intellectual property rights protection among US trading partners for an annual report published by the Office of the US Trade Representative (USTR). Attorneys in the Office of Policy and International Affairs reviewed public comments, analyzed foreign copyright legislation, participated in interagency consultations, and carried out other duties related to the Special 301 Report, published May 1.

Following an analysis of evidence gathered, the USTR designates countries as having inadequate or ineffective protection for intellectual property. Ukraine tops the list as a “priority foreign country,” and a trade investigation has been initiated. Ten other countries appear on the “priority watch list,” and 30 are on the “watch list.”

Read the report at www.ustr.gov/about-us/press-office/reports-and-publications/2013/2013-special-301-report.


Upcoming Online ProgramsIP Legislation: What Might Affect Your Practice?Wednesday, January 15, 2014

Congress has been discussing a number of legislative reforms over the last year, many to address what is seen by many to be abusive patent litigation practices. As the Second Session of the 113th Congress gets underway, Vince Garlock, AIPLA Deputy Ex-ecutive Director, and Jim Crowne, AIPLA Director of Legal Affairs, will take a look at some of the significant legislative reforms under consideration and consider how it might impact your practice in the future.

Presented By:James Crowne, AIPLA Director of Legal Affairs Vince Garlock, AIPLA Deputy Executive Director

GMO-Related IP Challenges and StrategiesWednesday, January 22, 2014

Please join us for a webinar on January 22, 2014: “GMO-Related IP Challenges and Strategies.” The speakers will discuss various issues relating to Genetically Modified Organisms (GMOs) includ-ing how to deal with challenges related to GMO technology and its perception by the public, as well as providing insight into how to protect intellectual property relating to GMOs. Portions of this

program were presented by the Biotech Committee together with the Food and Drug Committee at the 2013 Annual AIPLA Meeting in Washington D.C. on Overcoming Barriers to New Technologies. The speakers will include Professor Jay P. Kesan of the University of Illinois Law School, Dr. Humphrey Foote from A.J. Park, Dr. Thomas E. Nickson from Monsanto, and Christine Gould from Syngenta.

Presented By:Dr. Humphrey Foote, AJ Park Christine Gould, Syngenta Prof. Jay Kesan, College of Law, University of Illinois Dr. Thomas Nickson, Mansanto Debora Plehn-Dujowich (Moderator), Drinker Biddle

For CLE information, visit the “Live Web Based Programs” page in the Learning Center on AIPLA’s website.

February 5:Prosecution in the New Frontier

March 5:Preliminary Injunctions: To Use or Not to Use Might Haunt Your Case

AtlAntA | Denver | Knoxville | MADison | MinneApolis | new YorK | seAttle | wAshington, DCwww.MerChAntgoulD.CoM

I.P.B Y T H E L E T T E R ( S )

O F T H E L A W


January 19-21LESI Global Technology Impact Forum 2014, Geneva, Switzerlandhttp://www.lesi.org/events/gtif

January 26-29ACPC Winter Meeting, Phoenix, AZ

January 29-February 1AIPLA Mid-Winter Institute, Sheraton Wild Horse Pass Resort & SpaPhoenix, AZ (703-415-0780)

February 5-11ABA Midyear Meeting, Chicago, IL

February 20-22AUTM Annual Meeting, San Francisco, CA

May 7-9IACC Annual Spring Conference, Hong Kong, China

May 10-14INTA Annual Meeting, Hong Kong, China

May 15-17AIPLA Spring Meeting, Loews Philadelphia Hotel, Philadelphia, PA (703-415-0780)

June 18-20ECTA Annual Meeting, Alicante, Spain

August 7-12ABA Annual Meeting, Boston, MA

September 7-9IPO Annual Meeting, Vancouver, BC, Canada

September 14-18AIPPI World Congress, Toronto, Canada

October 5-8LES US- Canada Annual Meeting, San Francisco, CA

October 23–25AIPLA Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

November 1-7FICPI Open Forum, Barcelona, Spain

January 28–31AIPLA Mid-Winter Institute, Hyatt Regency OrlandoOrlando, FL

February 4–10ABA Midyear Meeting, Chicago, IL

April 13–17FICPI World CongressCape Town, South Africa

April 30–May 2AIPLA Spring MeetingJW Marriott Los Angeles, CA

May 2–6INTA Annual MeetingSan Diego, CA

June 10–13ECTA Annual MeetingHamburg, Germany

July 30–August 4ABA Annual MeetingChicago, IL

September 27–29IPO Annual MeetingChicago, IL

October 8-13AIPPI World Congress Rio de Janeiro, Brazil

October 22–24AIPLA Annual MeetingMarriott Wardman ParkWashington, DC

January 28–31* (tentative)AIPLA Mid-Winter Institute, LaQuintaPalm Springs, CA

February 3-9ABA Midyear MeetingSan Diego, CA

April 13-17FICPI World Congress Cape Town, South Africa

May 18–20AIPLA Spring MeetingMinneapolis, MN

May 21-25INTA Annual Meeting, Orlando, FL

October 27-29AIPLA Annual MeetingWashington, DC

August 4-9ABA Annual MeetingSan Francisco, CA

September 16-22AIPPI World Congress Milan, Italy

Future Industry Events20152014 2016


Thank You to Our AIPLA 2013 Annual Meeting Sponsors

Finnegan Henderson Farabow Garrett & Dunner, LLPSponsor: Friday Night Dessert Reception

Co-Sponsor: IP Practice in China Committee Educational ReceptionCo-Sponsor: LGBT/Diversity Reception

Platinum

Silver

GoldCarter, DeLuca, Farrell & Schmidt, LLP

Co-Sponsor: Friday Dinner & Entertainment

Schwegman, Lundberg & Woessner, PASponsor: New Member/First Time Attendee Reception

Kenyon & Kenyon, LLPCo-Sponsor: Friday Dinner & Entertainment

Merchant & Gould, PCCo-Sponsor: Friday Dinner & Entertainment

Perkins Coie, LLPSponsor: Friday PM Break

The George Washington University Patent Practice Program Sponsor: Cyber Café


Thank You to Our AIPLA 2013 Annual Meeting Sponsors

Baker Botts, LLPCo-Sponsor: Women in IP Law Breakfast

Brinks Gilson & LioneCo-Sponsor: LGBT/Diversity Reception

CHEMIRCo-Sponsor: Opening Night Reception

Drinker Biddle & Reath, LLPCo-Sponsor: Women in IP Law Breakfast

Edwards Wildman Palmer, LLPCo-Sponsor: Opening Night Reception

Fenewick & West, LLPCo-Sponsor: LGBT/Diversity Reception

Fitzpatrick Cella Harper Scinto Sponsor: Friday Lunch Reception

Fox Rothschild, LLPSponsor: Corporate Practice Breakfast

Goldstein Patent LawCo-Sponsor: LGBT/Diversity Reception & Law Practice Management Committee Reception

Intellectual Property Insurance Services CorporationSponsor: Meeting Signage

Inventergy, IncSponsor: Friday Lunch

Klarquist Sparkman, LLPCo-Sponsor: Opening Night Reception

Lee & Hayes, PLLCCo-Sponsor: LGBT/Diversity Reception & Law Practice Management Committee Reception

Mayer Brown LLPCo-Sponsor: Opening Night Reception

McAndrews Held & Malloy, LtdSponsor: Thursday AM Break

Orrick Herrington & Sutcliffe, LLPCo-Sponsor: Trade Secret Law Summit Reception

Patterson Belknap Webb & Tyler, LLPSponsor: Thursday Lunch Reception

Sughrue Mion, PLLCSponsor: Friday AM Break

Thomson ReutersSponsor: General Meeting Sponsor

Vinson & Elkins, LLPCo-Sponsor: Opening Night ReceptionCo-Sponsor: Corporate Practice/Mergers and Acquisitions Committee Educational Reception

Winston Strawn, LLPCo-Sponsor: Opening Night Reception

Bronze

Beijing Elite Intellectual Property Service Co., Ltd.Co-Sponsor: IP Practice in China Committee Educational Reception

China Patent Agent (H.K.) Ltd.Co-Sponsor: IP Practice in China Committee Educational Reception

Crowell & Morning, LLPCo-Sponsor: Trade Secret Law Summit Reception

Cooper Legal Group, LLCCo-Sponsor: Opening Night Reception

Foster Murphy Altman & Nickel, PCCo-Sponsor: IP Practice in China Committee Educational Reception

Ge Cheng & Co. Ltd.Co-Sponsor: IP Practice in China Committee Educational Reception

Grant Patent Services Co-Sponsor: Opening Night Reception

Haynes and Boone LLPCo-Sponsor: Corporate Practice/Mergers and Acquisitions Committee Educational Reception

Intel CorporationCo-Sponsor: Trade Secret Law Summit Reception

Leonard PatelCo-Sponsor: Opening Night Reception

Leydig, Voit & Mayer, Ltd.Sponsor: General Meeting Sponsor

Crystal

Pearl


Novak Druce Connolly Bove Lodge + Quigg LLPCo-Sponsor: IP Practice in China Committee Educational Reception

S.S. Rana & Co. AdvocatesCo-Sponsor: Opening Night Reception

WIPS, INC. Co-Sponsor: Opening Night Reception

Yuhong Intellectual Property Law FirmCo-Sponsor: IP Practice in China Committee Educational Reception

IP Practice in Japan Pre-Meeting Sponsors:

Allen & Overy LLP Borden Ladner Gervais LLP

Carter, DeLuca Farrell & Schmidt LLPGreyhound IP LLC

Finnegan, Henderson, Farabow, Garrett & Dunner, LLPOblon Spivak McClelland Maier & Neustadt LLP

Orrick Herrington & SutCliffe LLPPearne & Gordon LLPPepper Hamilton LLPRed Chalk Group LLC

Smart & Biggar Studebaker Brackett PC

Westerman, Hattori, Daniels & Adrian LLP

IP Practice in China Pre-Meeting Sponsors:

Beijing Elite Intellectual Property Service Co., Ltd.China Patent Agent (H.K.) Ltd.

Finnegan Henderson Farabow Garrett & Dunner LLPFoster Murphy Altman & Nickel, PC

Ge Cheng & Co. Ltd.Novak Druce Connolly Bove Lodge + Quigg, LLP

Yuhong Intellectual Property Law Firm

Pearl


2013 Annual Meeting

Leadership

AIPLA

Q. Todd Dickinson – Executive Director

Manny W. Schecter – Program Chair

Denise W. DeFranco – Officer in Charge

Jeffrey I.D. Lewis – President

Jacques Etkowicz – Program Vice-Chair


Distinguished Speakers

Patent Trial and Appeals Board Judge, Michael Tierney Teresa Stanek Rea, Deputy Director of the United States Patent and Trademark Office


Opening Night Reception – AIPLA Under the Big Top

AIPLA would like to thank the sponsors of the Opening Night Reception:


Friday Night Dinner & EntertainmentCelebrate the Roaring ‘20s

AIPLA would like to thank the sponsor of the Friday Night Dinner & Entertainment:


Corporate Practice Breakfast

AIPLA would like to thank the following Corporate Practice Breakfast sponsor:


AIPLA would like to thank the sponsors of the Women in IP Law Breakfast:

Women in IP Law Breakfast


New Member/First-Time Attendee Receptions

AIPLA would like to thank the sponsor of the New Member/First-Time Attendee Reception:


LGBT/Diversity Reception

AIPLA would like to thank the sponsor of the LGBT/Diverisity Reception:


VISIONAIPLA will expand its role as an innovator, powerful advocate, and visible global leader in intellectual property through our commitment to education, outreach, member service, and advocacy.

MISSIONWe serve our members, fostering their professional and leadership development, helping nurture and mentor them as they advance within our profession, keeping them informed in an ever-evolving legal environment, and enriching the diversity of the profession in which we practice, while responding to their personal and professional needs;

We serve public policy leaders, whose mission is to develop, implement and maintain our intellectual property system, assisting them with objective and unbiased analysis, and helping establish and maintain fair and effective global laws and policies that stimulate and reward innovation and creative works in keeping with the public interest;

We serve the public, providing education as to the daily value and benefits of a strong intellectual property system that fosters incentives for creativity & innovation, while balancing the public’s interest in healthy competition, reasonable costs and basic fairness; and

We serve our Association and its employees, providing sound management, financial stability, stable succession, and a vibrant, respectful and collaborative workplace environment, delivering opportunities and support for all to lead, create and thrive.

STRATEGIC GOALSAdvocacy: AIPLA will provide crucial leadership and unbiased analysis leading the way for world-class policy and decision-making, while attracting membership, ideas, and resources as a highly sought after and respected thought leader.

Public Education: AIPLA will educate the public about the daily value of intellectual property so that its importance is understood and appreciated.

Member Service: AIPLA will support the professional and intellectual growth of its members through a flexible organizational framework and innovative channels of communication, delivering outstanding services, cost-effective programs and mentoring opportunities, thereby ensuring that AIPLA remains the premier intellectual property Association, and attracts IP professionals from around the world.

Global Outreach: AIPLA will expand its influence to the global community and provide leadership and guidance for the development of sound global intellectual property standards, laws and policies.

AIPLA 2014-2017 Strategic Plan


Anti-Counterfeiting and Anti-PiracyChair: Toni Y. HickeyVice Chair: Gail E. Podolsky

Vision, Mission and Values:The Committee has no business to report.

Copyright LawChair: Stefan Mentzer Vice Chair: Matthew Wagner

Vision, Mission and ValuesThe Copyright Law Committee seeks to increase the interest and involvement of AIPLA members in copyright law. At the same time, the Committee strives to improve copyright policy, legislation, and jurisprudence, by working directly with the US Copyright Office and other government agencies, and by providing input to Congress and the courts.

ProjectsPlans for stated meetings: At the 2013 Annual Meeting, we held a joint educational session with the Trademark Law Committee in which representatives from the USPTO and the Copyright Office were invited. We plan to hold additional educational sessions at the 2014 Mid-Winter and 2014 Spring meetings on important copyright issues, such as copyright review efforts in Congress, the Department of Commerce Green Paper, and developments in copyright litigation.

Plans for coordination between stated meetings: The leadership plans to have monthly scheduled calls to plan Committee work. In addition, the Committee is active in a number of initiatives that require regular communications and discussions at the leadership and Committee-wide level.

AdvocacyThe Committee is actively involved in several advocacy areas:

Copyright review. Congress is holding a series of hearings on whether and how to reform the Copyright Act. To the extent possible, the Committee will offer input on these hearings .

Green Paper. The Department of Commerce Internet Policy Task Force has authored a so-called “Green Paper” that analyzes current copyright policy, makes recommendations for substantive reform in a number of areas, and requests further input from the public. The Committee plans to engage in the Green Paper process and to assist in the development of substantive policy recommendations by AIPLA.

Amicus briefing. The Supreme Court has granted cert. in the Petrella case on the equitable defense of laches, and AIPLA is considering whether to submit an amicus brief in the case. If AIPLA decides to participate, the Committee will be active in developing arguments for the brief. In addition, the Committee is actively monitoring other amicus opportunities,

Committee Reports Annual MeetingOctober 24–26

The Committees were asked to align their reports with the goals in the AIPLA Strategic Plan. (See page 25 for the Strategic Plan.)

In 2013, we organized our committees into “Groupings” to encourage collaboration and information sharing. Their reports are presented below by Committee Groupings.

The Groupings are: Content & Branding, Education Services, International, Member Services, and Patents.

Content & Branding Committees


for example in the non-patent literature fair use litigation that working its way through the courts.

Member ServiceThe Committee is monitoring the copyright review hearings in Congress and has established a process and template for summarizing each of the hearings. These summaries will be available as an educational resource for Committee members, AIPLA leadership, and AIPLA members generally.

Global Outreach The Committee will seek out opportunities to assist in and contribute to AIPPI-US involvement in copyright issues.

The Committee will continue its efforts to find ways to participate in WIPO activities and initiatives.

Industrial DesignsChair: Garfield GoodrumVice Chair: Margaret Polson

The Committee has no business to report.

Trademark InternetChair: Mark V.B. PartridgeVice Chair: Janet M. Fuhrer (not pictured)


Trademark LawChair: Kristin Jordan HarkinsVice Chair: Jennifer L. Kovalcik


Trademark LitigationChair: Stephanie H. BaldVice Chair: John Crosetto



Trademark-Relations with the USPTOChair: Jessie N. RobertsVice Chair: Yasmin Tavakoli Egge

Vision, Mission and ValuesThe mission of the Trademark Relations with the USPTO Committee is to foster a positive working relationship with the personnel of the Trademark Operation in the USPTO. Such a relationship should result in AIPLA being able to constructively influence policies that effect AIPLA membership, developing education programs that will enable AIPLA membership to interact with the USPTO in ways that will benefit their clients and to participate in international programs that affect both USPTO policies and practice as well as the members of AIPLA.

ProjectsPlans for stated meetings: The Committee will hold meetings at each of the major AIPLA meetings at which we will discuss past activities, what is to be done in the near future and plans for the extended future. Assignments will be made at these meetings to accomplish goals and plans of the Committee.

Plans for coordination between stated meetings: The Committee will hold monthly telephone conferences when the Chair, Vice-Chair and membership deem it necessary.

Plans for communication with the Committee clusters/Board Liaisons: The Chair and Vice-Chair will participate in Committee cluster communications as they are organized by Board Liaisons and AIPLA administrators. The Chair will be in contact with the Board Liaison on an on-going basis to assure that the goals and mission of AIPLA are being met by the Committee’s activities.

AdvocacyThe Committee will monitor policies announced by the USPTO as they affect trademark practice. Examples of policies that are now under discussion are changes in post-registration identifications of goods and services amendments, Accelerated Cast Resolution (ACR) at the Trademark Trial and Appeal Board and Letter of Protest policies and practice. The Committee will prepare comment letters and, as needed, resolutions in response to actions by the USPTO. When appropriate, the Committee will

suggest policy changes that would be beneficial to the AIPLA membership and their clients.

Public EducationThe Committee will work with USPTO’s Trademark Educational Outreach Program to bring the expertise of AIPLA members into the Program’s commitment to bring trademark information to colleges and universities, entrepreneur clubs and small business organizations. The Committee will also seek to find opportunities to bring this information to such groups independent from USPTO efforts. However, such efforts will be coordinated with the Educational Outreach Program of the USPTO to avoid duplication. Such a program could be coordinated with AIPLA patent Committees to create a comprehensive presentation covering both trademark and patent concerns for these audiences.

Member ServiceThe Committee will bring information to the AIPLA membership by means of webinars, lectures at AIPLA events and participation in established trademark blogs in fields such as:

Decisions of the USPTO and TTAB; Webinars or CLE lectures at AIPLA events—subject matter such as USPTO rules of ethics and the evolution of fraud standards in trademark cases; Annual changes in the Nice Agreement since additions and deletions to the Alphabetical List are now implemented on an annual basis.

The Committee will create a microsite devoted to matters concerning trademark relations with the USPTO.

Global OutreachThe Committee will be involved with and participate in, when possible, international meetings that affect the trademark practice of AIPLA members. As these meetings impact other AIPLA Committees, the Trademark Relations Committee will work with them to bring consistent and comprehensive information to the AIPLA membership.


EducationChair: Ehab M. SamuelVice Chair: Mickie A. Piatt


International EducationChair: Shannon L. BeechVice Chair: Bea Koempel-Thomas

Vision, Mission and ValuesThe International Education Committee develops and produces educational programming for international audiences, primarily through online programs, on topics of US IP law and practice, thereby providing education for global members and reaching out to non-members. This education programming also provides AIPLA’s members who serve as speakers with an opportunity to reach out to and educate global colleagues. In response to requests, the Committee also meets with visiting delegations and arranges seminars outside the US.

ProjectsPlans for stated meetings: Our plans will be to hold business meetings to plan out webinars for the coming months. These meetings will include strategizing about countries and appropriate organizations to reach out to in order to partner with us in organizing and advertising the webinars.

Plans for coordination between stated meetings: Given that most of our work is done virtually, all communication between meetings is done through telephone calls, email and webinar training sessions.

Plans for communication with the Committee clusters/Board Liaisons:Member ServiceThe Committee provides webinars for global IP practitioners on relevant topics of US law and practice which provides our international members with education opportunities.

Global OutreachThe Committee provides webinars for global IP practitioners on relevant topics of US law and practice. These programs can be put on in coordination with other international Committees (i.e. IP Practice in China, IP Practice in Europe, IP Practice in Latin America, International and Foreign Law) or upon contact from foreign IP practitioners and/or foreign sister organizations.

SubcommitteesNone as the Committee is currently too small to support Subcommittees.

IP Law AssociationsChair: Anthony M. ZupcicVice Chair: Troy Grabow

Vision, Mission and ValuesThe IP Law Associations Committee is AIPLA’s outreach vehicle to all other IP law Associations, both local and regional, throughout the United States. The Committee maintains a roster of the leadership of these other IP law Associations and fosters cooperation and an exchange of ideas between the IP law Associations.

Education Services Committees


AdvocacyOne of the tasks assigned to the Committee is to maintain the Amicus Notification Network which is a Lyris List that enables AIPLA to distribute to member organizations its amicus briefs and similarly to receive copies of amicus briefs filed by other IP law Associations that are members of the Network. During each Regional Roundtable, new members to the network are solicited. The network is useful not only because it enables AIPLA to share with other Associations and its members AIPLA’s advocacy work, but it also helps local and regional Associations provide a further benefit to their members at no additional expense.

The Committee works though Headquarters and the Amicus Committee to distribute in a timely fashion all AIPLA amicus briefs to the Amicus Network.

Public EducationRegional Roundtables are also used as a vehicle to advise local and regional IP law Associations of the efforts AIPLA is making in educating both the patent bar and the general public.

In the latest series of Regional Roundtables, the Committee discussed the 2013 World IP Day, showed a short video of the events and solicited local interest in participating in the 2014 World IP Day.

The latest series of Roundtables were also used to highlight the educational materials available at the Creativity in Bloom website (www.creativityinbloom.org). Several roundtable participants have expressed interest in reviewing these educational materials developed by our Education Committee and will consider using them for local events.

Member ServiceThe Roundtables also provide a vehicle for learning what benefits other organizations offer their members that might also be implemented by AIPLA in attracting new members. At the same time, AIPLA has offered local and regional Associations AIPLA work product that the local and regional Associations might not be otherwise able to offer to their members. The Amicus Network and AIPLA’s educational materials are two examples of such work product.

In order to assist local Associations obtain speakers for their programs, the Committee has also updated our microsite to include recent AIPLA speakers who might be contacted to speak at these local programs.

The Committee continues to coordinate with the New Lawyers Committee to provide them with local contacts as that Committee tries to set up local events that attract young attorneys.

Committee Meeting, Plans and GoalsAt our annual Committee meeting in October, AIPLA Deputy Executive Director Vince Garlock presented a legislative update which took up most of our one-hour time slot. IP law Associations from across the country were invited to attend either in person or to listen in and view the slides using GoToMeeting. About a half dozen local leaders participated either on line or in person. The Committee welcomed its newest members, Georgann Grunebach, David Tsai, Marylee Jenkins, and Ray Van Dyke, and thanked the outgoing members, Laura Zeman-Mullen, Sal Anastasi, Ken Nigon, and Ehab Samuel, for their excellent work over the years. The Committee also discussed starting a new Business Association Subcommittee that would be a liaison to the various non-IP business Associations throughout the country. This idea is strongly supported by the AIPLA leadership, and we are in the process of discussing the names of potential new members that could Chair this new Subcommittee.

Between the Annual and Mid-Winter Meetings, the Committee will explore additional topics for the next series of Regional Roundtables as well as to discuss the strategy for rolling out the possible new Business Association Subcommittee. We will also work to update the list of leaders for the local and regional IP Associations.

There will not be a Committee Meeting at the Mid-Winter Institute since the planners have decided to have a Committee Fair with all Committees being assigned a table for distributing materials to help explain what their Committees do. Troy Grabow is leading our effort to put together the materials for our table.

SubcommitteesRegional Roundtable Subcommittee, E-Mailer Subcommittee and Microsite Subcommittee

Between the Mid-Winter and Spring Meetings, the Regional Roundtable Subcommittee will prepare the slides and script for use during the 2014 Regional Roundtables.

The E-Mailer Subcommittee will prepare an e-mailer for distribution to all local and regional IP law Associations prior to the Mid-Winter and Spring Meetings.

The Microsite Committee will continue to update the microsite with new materials, including updated speakers for AIPLA stated meetings, prior to each stated meeting.


Law Practice ManagementChair: David A. DivineVice Chair: Richard W. Goldstein

Vision, Mission and ValuesThe mission of the Law Practice Management Committee is to provide resources, support, and education to our members, to policy leaders, and to the AIPLA members to help them effectively manage their law practices and for their own professional development. This mission directly corresponds with the AIPLA mission of serving our members, the public, and policy leaders. Our mission supports the AIPLA mission and values as it provides a further avenue for expanding its role as an innovator, powerful advocate, and visible global leader—in furtherance of building a strong community of committed and visionary professionals that are passionate about intellectual property.

One of the main goals of the LPMC is the timely production of the Report of the Economic Survey. A second goal of the LPMC is to provide educational programming and resources to our members related to law practice management and leadership. A third goal of the LPMC is to provide a forum for discussion of issues related to law practice management.

ProjectsPlans for stated meetings: 2013 Annual Meeting–Joint Committee Meeting and Reception with the Corporate Practice Committee entitled: “Managing a Patent Prosecution Team”

2014 Mid-Winter–We plan to take part in Committee fair

2014 Spring–Professional Programs Committee is considering two different programs from the Law Practice Management Committee

Managing a patent prosecution team

Utilizing Six-Sigma in running an IP law firm

Plans for coordination between stated meetings: Monthly conference calls

Plans for communication with the Committee clusters/Board Liaisons: Monthly conference calls

Member ServiceContinuing our conference call series started last year, we are planning to hold three topical teleseminars/webinars planned throughout the year (topics TBD).

We are in the preliminary stages of long-term planning for a future Leadership/Law Firm Management Summit in conjunction with AIPLA (preliminarily planned for 2015)

Global OutreachCommittee Vice Chair, Rich Goldstein, has traveled with AIPLA’s IP Practice in Europe Committee, and attended the recent FICPI conference in Italy and other international events seeking to expand the reach of AIPLA’s activities and the promotion of law practice management.

SubcommitteesProgramming Subcommittee – Chair, Rich Goldstein; Vice Chair, to be recruited.

Online ProgramsChair: Stephen E. BelisleVice Chair: Jennifer M.K. Rogers

MissionOur mission is to provide high quality, affordable education by means of online media.

Our vision is to develop and prepare technological options and vendors to be able to work with the leadership and other Committees within the organization to identify, develop, and provide efficient and effective online program content to AIPLA as a whole and to their constituents and to facilitate others in AIPLA to utilize online media for program delivery.

Online Programs provides substantial means to AIPLA to expand its role as an innovator, powerful advocate, and visible global leader in intellectual property, including through its interactive and timely Internet-based (and thus global) programming. Online Programs also provides AIPLA with the capacity to serve its members, public policy leaders, and the public, while generating revenue necessary to ensure the sustainability of the organization and its employees.


ProjectsOnline Programs takes advantage of each of the AIPLA stated meetings to meet face-to-face and via teleconference with as many Committee members and potential members as possible. During this time, the Committee reviews recently hosted webinars and upcoming webinars, solicits ideas for future programming, makes coordinator assignments, and addresses any operational or programming issues. Members of the Committee also use stated meetings as an opportunity to recruit new webinar coordinators and identify programs held during each of the meetings that could be reproduced as online webinars.

The Committee communicates with its members frequently between stated meetings. Indeed, the Committee hosts a monthly teleconference on the third Wednesday of each month to discuss the status of future webinars, make coordinator assignments, address any outstanding questions or issues, and solicit ideas for future webinars. In addition, the Committee leadership communicates with AIPLA headquarters on almost a daily basis concerning webinar programming.

The Committee meets with its Board Liaison at stated meetings, and remains in communication therewith through email correspondence and the Committee’s monthly teleconference.

AdvocacyThe Committee provides AIPLA with means to directly connect with its membership and the public. While Online Programs itself does not engage in advocacy, its capacity to communicate information to and among target groups via online programming provides AIPLA with an invaluable tool in today’s instant information world.

For example, on August 22, 2012 (shortly after the effective date of certain key America Invents Act (“AIA”) provisions), Online Programs hosted a webinar titled “The Final USPTO AIA Rules: What You Need to Know,” which was the fifth of an ongoing series of AIA webinars, featured the USPTO Patent Reform Coordinator, Janet Gongola, and provided a mechanism for information exchange between the USPTO and webinar attendees. Also, on September 26, 2012, Online Programs hosted a webinar titled “USPTO Statistics Initiative,” which featured Manny Schechter of IBM Corp. and Dave Wiley of the USPTO among others. Online Programs has continued its series on the AIA in 2013 with a number webinars that educate and enable practitioners to navigate their practices under the AIA. For example, on October 9, 2013, Online Programs hosted a webinar titled “One Year Review of Post-Grant Patent Review Under the America Invents Act.”

Public Education (Non-member)While Online Programs has historically provided excellent intellectual property programming for members of AIPLA and others, there is room to further leverage Online Programs to educate the general (non-member) public about the daily value of intellectual property and to funnel that programming to specific target groups. Thus, Online Programs is continuing to evaluate potential programming topics, audience groups, and cost-sensitive online delivery means in this regard, and coordinating with AIPLA regarding preferred practices for notifying such target groups of the online programming opportunities.

Member ServiceOnline Programs provides substantial services to the members of AIPLA through two primary online platforms, namely Citrix GoToWebinars and webinars professionally hosted by KRM Information Services, Inc. (“KRM”). Since the 2012 Annual Meeting, Online Programs has hosted 14 KRM, 11 Citrix, and 7 Committee webinars covering a wide-range of topics, including the AIA, gTLDs (generic top-level domains for the Internet), ITC investigations, business method patents, patentable subject matter, remedies, venture capital financing, IP developments in the European Union, exhaustion, post-grant proceedings, ethics, opinions, patent prosecution, trademark infringement, litigation, e-discovery, and others. Online Programs also has facilitated two new series of webinars, namely “Sidebars with AIPLA,” which timely address high-profile oral arguments and court decisions, and “Front & Center,” which provide the business perspective of IP. Webinars typically attract between about 50 and 350 registrations. Online Programs expects to host about 35-40 webinars in 2014, covering a wide range of subject matter to reach a broader scope of the membership of AIPLA. The planning for several of them is already underway.

Online Programs also provides a substantial channel for the members of AIPLA to obtain needed CLE credits. For example, in FY 2012-2013 (July 2012 – June 2013), AIPLA processed about 4,794 requests for CLE in connection with online programming. The CLE requests, which have historically originated from at least 44 of the 50 US states, demonstrate the geographically diverse reach of Online Program’s efforts.

Online Programs coordinates with several other AIPLA Committees to provide and continue to expand online programming subject matter and geographic reach. Most recently, Online Programs has been coordinating with the New Lawyers Committee to recruit new program coordinators and to provide the means to take geographically targeted (localized) programming under development by New Lawyers and offer that programming online.


Subcommittees

1. Citrix GoToWebinar Subcommittee, which is charged generally with facilitating such webinars, including a Career and Practice Management Webinar Series, and specifically with coordinating online programming with the Biotechnology, Chemical Practice, Corporate Practice, Electronic and Computer Law, International Education, Mentoring, and Patent Litigation Committees as well as the Special Committee on Standards and Open Source; and

2. Online Presence Subcommittee, which is charged with evaluating and improving the overall online presence and marketing of the programming of Online Programs, including through such channels as Facebook, LinkedIn, Twitter, Blogs, and the AIPLA microsite.

Global OutreachOnline Programs provides AIPLA with global outreach through its online programming, which by its very nature is without boundaries (of course, time zones and language barriers affect the audience for any given webinar). Online Programs continues to coordinate with the International Education Committee to identify and develop relevant online programming for international audiences, and to increase AIPLA’s international membership.

InitiativesIn order to expand the program offerings to the AIPLA membership, Online Programs holds monthly conference calls, which are open to Committee members, AIPLA Committee Chairs and Vice Chairs, AIPLA leadership, and the general AIPLA membership as a forum to discuss upcoming programs and to collaborate with other AIPLA Committees to define additional program offerings.

Professional ProgramsChair: Jacques L. EtkowiczVice Chair: Michael L. Drapkin

Vision, Mission and ValuesThe Professional Programs Committee organizes the agenda and speakers for the AIPLA Spring and Annual Meetings with the objective of providing world class IP programs by respected speakers and thought leaders.

Member ServicesThe Professional Programs Committee is currently organizing the 2014 Spring Meeting. The agenda topics have been selected with continued emphasis on the America Invents Act and its effect on the Patent Bar. Session coordinators were selected during our Committee meeting during the 2013 AIPLA Annual Meeting. Organization of the 2014 Annual Meeting will begin soon with selection of a topic Subcommittee followed by topic identification.

Subcommittees2014 Spring Meeting Topic Subcommittee, James T. Carmichael, Subcommittee Chair

Professionalism and EthicsChair: Rodney K. CaldwellVice Chair: Salvatore Anastasi



Public EducationChair: Michael B. StewartVice Chair:



AIPPI-USChair: David W. HillVice-Chair: Philip C. Swain

Vision, Mission and ValuesThe AIPPI-US Division serves as the US National Group of the international organization AIPPI (the “Association Internationale pour la Protection de la Propriete Intellectuelle”), an international federation of national groups of intellectual property practitioners from over 100 countries that has over 9,000 members worldwide. The AIPPI-US Division’s main mission is to work within the framework of AIPLA to participate in the activities of the larger AIPPI organization. Those activities include conducting comparative law studies of intellectual property laws, with the goal of proposing measures to achieve harmonization of those laws on an international basis, which are then supplied to the WIPO, the WTO, and to national patent and trademark offices around the world. AIPPI conducts annual meetings every year to discuss and reach agreement on these resolutions, and also conducts workshops and seminars on other international intellectual property comparative law issues. In formulating its position on these issues, the AIPPI-US Division coordinates its actions, positions, resolutions, and communications with the appropriate Committees and leadership of AIPLA, in accordance with AIPLA procedures.

ProjectsThe AIPPI Helsinki Forum and Executive Committee Meeting–September 6-10, 2013The Helsinki AIPPI Forum and Executive Committee Meeting concluded on September 10 with the final Executive Committee meeting and closing dinner. It was an extremely successful meeting. Thanks to the hard work of many of our members, the resolutions adopted by the Executive Committee of AIPPI were largely passed in a form that should be fully acceptable to the AIPPI-US Division.

Special thanks are due to a number of our members. First, we owe gratitude to the authors of our four working Committee

reports that were prepared last spring. We also should recognize the additional contributions by several substantive law Committees of AIPLA and the Board of Directors of AIPLA for their help in refining the final versions of the reports.

The reports were drafted by the members listed below: Q233 Grace Period for Patents: Peter Schechter, Andrew Simpson, Tom Smegal, Kevin Tottis, Richard Beem, James Slattery, Marc Richards, Drew Meunier, and Damian Wasserbauer

Q234 Term of Copyright Protection: Howard B. Miller, Rudolph P. Hofmann, James R. Muldoon, and Christopher M. Scherer

Q235 Relevant public for determining the degree of recognition of famous marks, well-known marks and marks with reputation: Seth I. Appel, Griff Price, Robert Sacoff, Maria A. Scungio, Elise Selinger, Philip T. Shannon, and David Weild, III

Q236 Relief in IP proceedings other than injunctions or damages: Ken Adamo, John Bird, Eugene Goryunov, John Johnson, Kristen McCallion, Alicia Shah, and Robert Wells

We were fortunate to have two members who were appointed as Chair or Co-Chair of two of the AIPPI working Committees in Helsinki. Bob Sacoff served as Chair of the working Committee on Q235, and Peter Schechter was appointed as Co-Chair of the working Committee for Q233. The AIPPI-US Division was represented on the working Committee for Q234 by Howard Miller, AIPPI-US Division Chair Dave Hill was the representative for Q236, standing in for Ken Adamo, who was unable to attend.

We also need to recognize several AIPPI-US Division members and other people from the United States who served as speakers in the Forum and Executive Committee Sessions of the meeting. Rich Beem spoke at Workshop IV on the topic, “Digital Gaming and IP/Patents,” and Mark Halligan spoke at Workshop III on “Trade Secrets—Effective Protection for Innovation?” Mark Guetlich, the USPTO Director of Patent Policy and International Affairs delivered an introductory speech for Plenary Session Q236 on the topic “Relief in IP Proceedings Other Than Injunctions or Damages.” Chris Carani spoke for Forum Workshop II, “Apple v. Samsung - Lessons for Design Law and Strategy.” Elizabeth Doherty was a speaker for Pharma Workshop 2, “Second Medical Use Patents.” Larry Welch moderated Pharma Workshop 3 on the topic “The TRIPS Tightrope - Public Health, Innovation, Incentives and Access.” Kevin Smith spoke for Forum Workshop III, “Brand Strategy in

International Committees


Light of New Top Level Domains.” Finally, Dale Nelson was on the panel for Forum Workshop V, UsedSoft v. Oracle - Exhaustion Online?”

Executive Committee SessionsDuring the Executive Committee, John Osha was elected to continue serving on the AIPPI Bureau as a Deputy Reporter General. Larry Welch was elected to be the Chair of the AIPPI Programme Committee. The AIPPI-US Division was also represented in Helsinki on the AIPPI Nominating Committee (Mark Halligan), the AIPPI Membership Committee (Alan Kasper), and the AIPPI Communications Committee (Bob Sacoff). In addition, the Executive Committee voted to select the venue for the 2017 AIPPI Annual Meeting, choosing Sydney, Australia.

At the Executive Committee and Plenary Sessions of the meeting, our Division had ten designated voting delegates, as follows:

Acting President: Wayne Sobon

Delegates: David W. Hill, Alan Kasper, Peter Schechter, Philip Swain, Drew Meunier, Andrew Simpston, Kenneth Adamo, Howard Miller, and Rich Beem.

In addition to these named delegates, many other members assisted with the voting in the various plenary and Executive Committee sessions during the meeting. Thanks go to Monica Barone, Sunhee Lee, Vic Siber, Ray Moser, Steve Bauer, Bea Koempel-Thomas, Mark Halligan, Bob Sacoff, George Badenoch, Kelly Hyndman, and several others who stepped up to help with debate and voting.

Many others from our AIPPI-US Division were active during the meeting as members of various AIPPI Committees, and other events.

Our Division held a get-together for cocktails during the Helsinki meeting. We had a great turnout of members and others from the US who were attending the meeting. Thanks go to our Vice-Chair, Phil Swain, for arranging this event.

AIPPI ResolutionsFive resolutions were approved during the final Executive Committee Meeting on September 10, and one resolution was marked up for a final vote to be taken by correspondence in the near future. Copies of the approved resolutions are posted on the AIPPI website at https://www.aippi.org/?sel=resolutions. Our Division worked very hard in offering amendments and changes to the draft resolutions as they went through various stages of debate, and with a few exceptions, we succeeded in having our preferred language included in the final resolutions.

Most notable among the approved resolutions is the one on Grace Period for Patents, which endorses the need for an internationally harmonized grace period of 12 months,

with no requirement for declarations to claim the grace period. We attempted to have a last minute draft resolution on Plain Packaging tabled to give us more time for polling our membership and developing a coordinated US position, but this was defeated. That resolution was significantly edited during the final Executive Committee meeting, and was eventually approved after the meeting by a vote through correspondence.

Other actions taken by AIPPI during the AIPPI Executive Committee meeting week: Annual Congress–The Executive Committee approved, in principle, various changes to the Statutes and Regulations of AIPPI to standardize the Annual Meeting format of the Association in the future. Under the revised format, beginning after the 2014 Toronto Congress, each Annual Meeting will follow a Congress-type schedule, and we will no longer alternate meetings between Forum & Executive Committee and Congress schemes.

New AIPPI Groups–Two new AIPPI Groups were approved, one for Uruguay, and a second for the Central America and Caribbean Region. That regional Group includes members from Antigua and Barbuda, Aruba, Bahamas, Barbados, Belize, Bermuda, Costa Rica, Cuba, Curacao, Dominica, Dominican Republic, El Salvador, Guatemala, Haiti, Honduras, Nicaragua, Daint Vincent and the Grenadines, Trinidad and Tobago.

Venue Selection for Meetings–A change was also made in how venues are to be selected for AIPPI meetings in the future. A Statutory Committee will be established for the purpose of selecting the venue for future AIPPI meetings in consultation with the Bureau. This will replace the current practice of choosing future meeting locations by Executive Committee vote.

Amicus Committee–A proposal was presented to establish a Standing AIPPI Amicus Brief Committee, and suggested operating parameters were discussed.

Awards and Recognitions–Y.B. Kim was made a Member of Honor, and several Awards of Merit were bestowed.

Strategy Report Follow-up–Numerous efforts are ongoing and proposed in relation to the implementation of changes to AIPPI as a result of the Strategy Report presented at the 2012 AIPPI Seoul Congress. Among these are the efforts of Q237, a task force that is developing recommendations on the Role and Structure of the Bureau, Council of Presidents, and Executive Committee for the future. Changes in terminology used by the Association are being planned, Committee protocols are being examined for revision, regulations on the composition and retention on Committees are being reviewed, and provisions on the communication of AIPPI views are being reexamined for possible change.


AIPPI 2014 Toronto, September 14-18, 2014

The AIPPI 2014 Toronto Congress is scheduled for September 14-18, 2014. This event promises to be one of the best AIPPI meetings in many years. Our AIPPI-US Division was singled out in Helsinki as the fastest growing group in the past year, with a growth of 99%. Our goal is to reach 500 members by the Toronto Congress, and we will be asking our members to recruit new members from their firms and companies.

We expect to receive the Working Guidelines on the four Toronto working questions early in 2014, and we will be asking for volunteers to work on those questions soon. The following are the four Study Questions for Toronto:

• Second Medical Use or Indication Claims

• The Basic Mark Requirement under the Madrid System

• Exhaustion Issues in Copyright Law

• IP Licensing and Insolvency

AdvocacyAs noted above, the AIPPI-US Division participates in comparative law studies in the larger international AIPPI organization on issues concerning harmonization of intellectual property laws. In that regard, the AIPPI-US Division generally advocates that the United States position or rule should be adopted when the international body agrees on a resolution for a harmonized proposal. When the AIPPI-US Division is developing its position on these issues, it seeks the guidance of the substantive AIPLA Committees which are responsible for the respective area of intellectual property law for each individual question that is being studied.

The AIPPI-US Division also expects that it may, from time to time, recommend that AIPLA take positions in amicus briefs on issues that may affect areas in which its members may have an interest, such as international harmonization of intellectual property laws.

Public EducationThe AIPPI-US Division will publish its reports on questions of comparative law that it has prepared. In addition, the annual meetings of the AIPPI international organization, which are open to all AIPPI members, include workshops and seminars on international intellectual property law issues.

During the AIPLA Annual Meeting, the Division held its own Annual Meeting on October 25, 2013 in Washington, DC. That meeting included our annual election and business meeting, followed by a CLE program.

Member ServiceThe AIPPI-US Division will have meetings at each of the AIPLA regular stated meetings. It also makes available opportunities to all of its members to participate in preparing

the United States reports on the comparative law studies for the international harmonization resolutions. All of its members also have the opportunity to attend the international meetings of the AIPPI organization, where they can attend the seminars and workshops as well as the discussions of the resolutions on international harmonization, and also provides members the opportunity to network with international companies and practitioners. In addition, there are several Subcommittees of the AIPPI-US Division which will make international trips to meet with their counterpart AIPPI organizations in other countries. For example, there is an Asia-Pacific Subcommittee which will travel to Japan, China, and Korea this fall to meet with the AIPPI groups in those countries. That Subcommittee is also coordinating its activities with the appropriate AIPLA international Committees.

Global OutreachAs noted above, the principal activity of the AIPPI-US Division is global outreach, to work within the framework of the AIPPI international organization toward international harmonization of intellectual property laws. Our members attend the international meetings of the AIPPI international organization, and we have Committees which visit from time to time with their counterpart AIPPI national groups in other countries, in cooperation with other AIPLA international Committees.

Our Division trip to visit AIPPI Groups in Japan, Korea and China was the week of November 11-15, 2013.

International and Foreign LawCo-Chair: Matt AdamsCo-Chair: DeAnn F. Smith



IP Practice in ChinaChair: Ying Tuo (not pictured)Co- Vice Chair: Patrick J. Coyne (not pictured)Co-Vice Chair: Zhun Lu

Vision, Mission and ValuesUnder the guidance of the President and the Executive Director, this Committee shall:

(a) Establish and maintain relations with professional societies in China whose members are interested in intellectual property law.

(b) Study the law and practice of China and report on issues of interest to the Association Board of Directors and membership.

(c) Provide information on US intellectual property law to any interested party in China, if called upon to do so.

This Committee shall coordinate its activities with the International and Foreign Law Committee.

ProjectsPlans for stated meetings: A panel discussion on Chinese patent law was held at the Annual Meeting followed by a reception on:

“Requirements of Chinese Patent Law and Their Implications for Prosecution, Reexamination, and Litigation of International Applications: Written Description; Amendment; and Service Inventions”

The Chinese and US panelists (and their affiliations):

Mr. Dajian Wu (Yuhong Intellectual Property Law Firm)

Mr. Yansheng Yu (China Patent Agent (H.K.) Ltd.)

Dr. David Cheng (Ge Cheng & Co. Ltd.)

Mr. Xiaoguang Cui (Beijing Elite Intellectual Property Service Co., Ltd.)

Ms. Chen Wang (DuPont)

Mr. Dan Satina (Vesuvius)

CLE was provided with three substantive papers submitted (authored by Josh Miller, James Pan, and Amelia Wang).

Hosting and accompanying CIPS delegation’s visits to IBM (Oct. 21), Federal Circuit (Oct. 23), and AIPLA leadership (Oct. 24).

Plans for coordination between stated meetings: 2014 trip to China: possible timeframes (1) April 14-18, (2) June 9-13, or (3) June 16-20.

The three possible cities we plan to visit are: (1) Beijing, (2) Tianjin, and (3) Xi’an. Tianjin has many high tech parks and Xi’an is one of the oldest cities in China and also has many high tech companies.

Presently schedule and agenda of the trip are being worked out with CIPS.

3rd Annual China IP Conference (Patent and Trade Secrets; a Public Discussion on How to Protect Technologies in China) – Dec. 11, 2013 GW Law School – members of the Committee plan to participate the conference

Plans for communication with the Committee clusters/Board Liaisons:We plan to coordinate with the New Lawyers Committee about writing papers as to satisfy the CLE requirement for future IP panel discussions on China IP topics in the future. We also plan to engage with other substantive Committees (for example, Standards, Trademark, Design, Antitrust) and cooperate with them on commenting on developments of the respective laws in China.

AdvocacyMonitoring, reviewing, evaluating, and participating in public comment and preparing translations for AIPLA’s comments on revisions to the Chinese Trademark Law, Standards Guidelines, the Chinese Anti-Monopoly Law, Chinese Patent Law, and other related IP issues on behalf of AIPLA.

Public EducationChina IP panel discussion at the Annual Meeting provided a platform for US and Chinese IP practitioners to interact and exchange ideas.

Participation in the GW Law Conference on China IP in December – interactions with IP professionals in academia, government, industry, and private practice.

Member Service(a) Soliciting comments and needs from members and acting to meet the needs from the members;

(b) Organizing a delegation to visit China in 2014;

(c) Encouraging AIPLA members to join China IP Practice Committee;

(d) Encouraging Chinese IP professionals to join AIPLA and China IP Practice Committee;


(e) Organizing a panel discussion on Chinese patent law at the Annual Meeting followed by a reception (with CLE).

Global OutreachMaintaining existing relationship with Chinese IP organizations, such as ACPAA, CIPS, ACLA, Zhejiang IP Office, Shanghai IP Office, Jiangsu IP Office;

Developing new relationship with Chinese IP organizations, such as Beijing IP Office, Xi’an IP Office, Tianjin IP Office, and Guangdong IP Office;

Preparing to receive a delegation organized by CIPS and accompanying their visits to IBM, Federal Circuit, and their meeting with AIPLA leadership;

Inviting Chinese and American speakers to participate in the panel discussion at the Annual Meeting;

Reaching out to potential members in China and identify/recruit potential leaders from China (e.g., US practitioners stationed in China or Chinese practitioners interested in more active roles in the Committee).

Our Committee is also working on a China Precedent Project, in which significant Chinese IP cases will be selected, reviewed, translated, commented on, and posted in a database available to AIPLA members. We would start with a limited number of Chinese courts. We’ll need to cooperate with multiple parties such as US and Chinese law firms, law schools, USPTO, etc. on developing this long term project.

Participation in round-table meeting with Jiangsu IP delegation hosted by US Chamber of Commerce on Oct. 18, 2013 (Zhun Lu)

SubcommitteesWe plan to form planning Subcommittees on 2014 China trip and other projects.

IP Practice in EuropeCo-Chair: Laura BrutmanCo-Chair: Iris Mok

The IP Practice in Europe Committee seeks to inform its members and members of AIPLA in general of key

developments in intellectual property law and practice in Europe, through the establishment and maintenance of relations with professional societies whose members are expert in intellectual property law and practice in Europe.

ProjectsPlans for stated meetings: 2013 Annual Meeting – One-hour program directed to “Patentable Subject Matter in Europe: A Perspective on Computer Implemented Inventions and the Biotechnology Field.” Speakers were Ilya Kazi, Partner at Mathys & Squire in London, and Andrew Bentham, Partner at J. A. Kemp in London.

Together with the PCT Issues Committee, a one-hour program directed to recent developments at the EPO in the international and European phases. Speaker was Reinoud Hesper, Lawyer International Legal Affairs, European Patent Office, and there was a panel as a corollary to the presentation.

2014 Mid-Winter Meeting – Participate in the 2014 Mid-Winter Committee Expo and hold a general Committee meeting.

2014 Spring Meeting – The Committee is planning two one-hour CLE education sessions: 1) European patent procurement and litigation; and 2) European trademarks. The sessions will be co-sponsored with another AIPLA Committee.

Plans for coordination between stated meetings: Due to the diverse geographical nature of the membership, the Committee will schedule a teleconference with its members on an approximately quarterly basis.

Member ServiceThe IP Practice in Europe Committee is continuing to support the sharing of key learning, developments in practice and in law for our members. Our strong and effective relationships with national IP organizations throughout Europe have assisted us in this process of continuing education.

Global OutreachThe Committee organizes an annual visit to Europe, where we will meet with officials and members from a number of European patent offices and IP organizations for policy advancement and education of European and US IP topics. The next annual visit is scheduled for the week of March 10, 2014. The cities on the agenda are London, Paris, Geneva, and Munich. Invitation letters will be sent out in Dec to various organizations.


Proposed SubcommitteesEuropean Patent Litigation: Dr. Martin Koehler, Reimann Osterrieth Koeler Haft

European Patent Prosecution: Mike Ryu, Rucorp IP

European Trademarks: Angela Fox, RGC Jenkins & Co.

IP Practice in the Far EastChair: Christopher J. Maier Co-Vice Chair: Kevin KunzendorfCo-Vice Chair: Daniel Mulveny

During 2013, the Committee planned and executed a successful trip to Vietnam and Thailand to meet with various government and industry professionals and discuss the application and impacts of US intellectual property law on the emerging IP markets in those countries. Specifically, the delegation met with various Vietnamese government and court officials in Hanoi and enjoyed a warm reception from the local IP Association. The delegation then traveled to Saigon for additional meetings with professionals and local industries and manufacturers. The delegation then traveled to Bangkok where similar meetings were held and local IP organizations had organized receptions for the delegates. During each of these meetings the AIPLA delegation provided the Vietnamese and Thai members in attendance with presentations introducing various aspects of US IP law and explaining more recent developments. These topics were discussed with the host countries in advance to ensure maximum impact and applicability for the parties meeting with the delegation.

During the Committee meeting at the Annual Meeting, the 2013 Delegation trip was recapped and discussion regarding the 2014 trip to Korea and Malaysia began. Committee members discussed the importance of returning to Korea while also reaching out to countries with expanding IP, such as Malaysia. Initial dates were discussed and pre-trip planning began.

Additional planning for 2013-14 includes redeveloping the India Subcommittee, recreating the Taiwan Subcommittee and developing a new Asian Subcommittee which will specifically focus on the emerging Asian countries.

During the remainder of 2013 and in advance of the Mid-Winter Meeting, the Committee plans to confirm travel dates to Korea and Malaysia and begin reaching out to our sister organizations in those countries to facilitate meetings during the delegation trip. Active members of the Committee will be selected as delegates and various tasks will be assigned to ensure proper deliverables for the execution of the delegation trip. Additionally, members of the Committee are being asked to take the lead on further developing the various Subcommittees, as well as to coordinate and provide additional information on US IP laws and AIPLA to the various countries associated with the Committee.

IP Practice in IsraelCo-Chair: David R. M. Colb (not pictured)Co-Chair: William H. Mandir


IP Practice in JapanCo-Chair: Christopher J. FildesCo-Chair: Daphne C. Lainson

Consistent with AIPLA’s Vision, Mission, and Values, the Committee is maintaining a high-level of visibility through its interactions with key Japanese IP organizations to promote exchange of information on significant IP developments in the US and Japan. These exchanges have historically occurred at two “pre-meetings” (prior to the October AIPLA Annual Meeting and January Mid-Winter Institute) each lasting for one and a half days as well as a week-long delegation visit to Japan, generally undertaken in April of each year.


Prior to this year’s Annual Meeting, the Committee conducted a one and a half day pre-meeting in which twenty presentations on current IP issues were presented. On October 22, outgoing Co-Chair Joe Calvaruso welcomed the attendees beginning a day-long meeting. Tatsuya Tanaka, Executive Director Japan Patent Attorneys Association and Shoichi Okuyama, Vice President of AIPPI Japan gave opening remarks. Presentations were made by members of the Committee, JPAA, Japanese group of AIPPI and the US Patent and Trademark Office. After the first day of the meeting, the Committee hosted a reception and dinner for the attendees. The pre-meeting continued for a half day on October 23rd and afterward our Japanese colleagues toured the USPTO and met with Deputy Under Secretary and Deputy Director Teresa Stanek Rea. Nineteen of the twenty presentations have been uploaded to the Committee’s microsite.

On October 25, Joseph Calvaruso, Chris Fildes and Daphne Lainson conducted a one-hour business session reflecting on the previous pre-meeting and planning of future meetings.

Our Committee is already preparing for our pre-meeting before the January 2014 Mid-Winter Institute (MWI) as well as our Annual April trip to Japan. Our Steering Committee is already communicating with representatives from Japanese IP organizations to discuss both the MWI pre-meeting and April trip. The confirmed dates for our April 2014 meetings are April 7-10. Included in these April meetings will be our third Women in IP Law meeting as well as our third seminar with JPAA in Osaka. The April meeting dates allow our Committee members to participate in the FICPI Japan Kyoto Symposium being held April 10-12, 2014 in Kyoto, Japan.

The Committee continues to explore having expanded meetings in Japan with Japanese IP groups including the possibility of splitting the AIPLA delegation to meet with additional groups.

The Committee currently has about 160 Active Voting Members. It is the Committee’s intent to increase active participation of its members, and to encourage joining of new members by posting more information on its web page; and taking advantage of the annual April trip to Japan to promote AIPLA membership among the IP professionals working in Japan.

Finally, while historically the Committee has been focused on exchanging information with the Japanese IP organizations, the Committee is now increasing its focus on advocacy, consistent with the AIPLA objectives. To that end, during our April 2014 trip, the delegation will have discussions with the JPO Director of International Affairs and judges of the Tokyo High Court.

IP Practice in Latin America Co-Chair: Joaquim Eugenio Goulart Co-Chair: Robert Wells

Vision, Mission and ValuesThe IP Practice in Latin America Committee’s (“IPP-LatAm”) mission is to foster a better understanding of the complex differences among the numerous countries of Latin America by educating its members and the AIPLA body as a whole. IPP-LatAm works to this end by constantly reminding its members through its Committee programs, web postings, social networking and its annual trips that there are three distinct major languages spoken throughout Latin America (English, Spanish and Portuguese), not including the numerous indigenous languages that can be found in each country, and that each Latin American country is very unique in its culture, political system, history and of course its approach to the procurement of Intellectual Property. IPP-LatAm fosters to bring these differences together within the best of its abilities and to assist IP Practitioners and company executives throughout the world to better understand Latin America as a whole and in particular the procurement and enforcement of IP in the region. IPP-LatAm’s vision is to include IP Practitioners from every Latin American country as members of the Committee and as members of the AIPLA community as a whole. IPP-LatAm’s values are identical to those of the greater membership of AIPLA in its belief to the enduring power and importance of all areas of Intellectual Property for creating economic growth and prosperity for all of Latin America.

AdvocacyThe Committee is very committed to acting as advocates for furthering the understanding and development of IP systems in Latin America. IPP-LatAm works with many sister IP Associations throughout Latin America to assist them in embracing common ideals and systems that are proven to work from other countries with more developed and longer established IP procurement systems. However, IPP-LatAm always remains cognizant of the unique cultural differences in each Latin America country and as well always remembers that just because a certain system works in one country, does not mean that it will necessarily work in any another Latin American country. IPP-LatAm looks to fellow AILPA Committees such as the International and Foreign


Law Committee, the PCT Issues Committee, the various Trademark Committees, as well the internationally-focused IPP Committees covering Japan, Europe and the Far East, to name just a few, for assistance, mutual cooperation and guidance. As well, IPP-LatAm has established a Liaison relationship with AIPLA’s Biotechnology and International and Foreign Law Committees to foster greater awareness and cooperation with these two important sister Committees. Still further, IPP-LatAm has established strong working relationships with both USPTO IP attachés working out of the US Embassies in Mexico City (covering Mexico, Central America and the Caribbean) and Rio de Janeiro (covering all of South America).

Public EducationThe IP Practice in Latin America Committee is committed to the highest level of public education as it relates to IP procurement and enforcement in Latin America. As a means to this end, IPP-LatAm will continue to work with a multitude of the other AIPLA Committees in sponsoring joint Committee sessions, especially at each year’s Spring and Annual Meetings. However, IPP-LatAm will not relegate itself to only working with other “internationally-focused” Committees, but will strive to incorporate programs that are co-sponsored by a wide variety of the numerous AIPLA Committees so long as the educational program is helpful to the IPP-LatAm membership and the greater AIPLA community as whole. As an example of such, the IPP-LatAm had a joint Committee session at this year’s Spring Meeting in Seattle with the Biotechnology Committee wherein the most important biotechnology issues developing throughout Latin America were discussed. The invited speakers included Biotech IP practitioners from Mexico, Costa Rica, Brazil and Argentina. This session was repeated as a webinar in June 2013 for those practitioners that could not attend the Seattle Meeting. Still further, IPP-LatAm had a joint session during the Annual Meeting with the PCT Issues Committee, IP Practice in the Far East Committee, the Arabian Practice Subcommittee, Patent Treaties and International Policy Committee and the International & Foreign Committee to discuss the “growing pains” of newly ascended and smaller PCT member states, such as Chile, Saudi Arabia and India (with invited speakers for each jurisdiction) and Matthew Bryan, Director from the PCT Legal Division of WIPO. Still further, IPP-LatAm has a Subcommittee called the “Subcommittee for the Maintenance of the AIPLA IPP-LatAm Micro-Website” which was established for the express purpose of providing the latest information to its Committee membership and the AIPLA membership as a whole in regard to the latest IP issues occurring in Latin America. And even further, IPP-LatAm now has a LinkedIn sub-group page under the umbrella of the greater AIPLA LinkedIn group, which is updated and managed by its Subcommittee for the Development and Integration of Social Networking in Latin America.

Member ServiceThe Committee is wholly committed to expanding its membership to include at least one, if not many, members from each Latin American country in the region. IPP-LatAm is also committed to including its members in its educational Committee programs by asking them to speak at any of the three Annual Meetings when their specific area of expertise fits within the programmed Committee session. Further, IPP-LatAm has formed Subcommittees to maintain both its AIPLA micro-site and its newly started LinkedIn subgroup page for the express purpose of keeping its members more informed with the most updated information in regard to important changes occurring in the IP world throughout the Latin American region. Still further, IPP-LatAm is actively pursuing AIPLA delegation speaking opportunities with its sister Latin American Associations such as the Brazilian IP Association (or ABPI), the Asociación Interamericana de la Propiedad Intelectual (or ASIPI) and the Asociación Mexicana para la Protección de la Propiedad Intelectual (or AMPPI), to name just a few. Finally, IPP-LatAm is actively seeking AIPLA Board approval to establish Liaison relationships with sister IP organizations such as ABPI, ASIPI, AMPPI and AAAPI (of Argentina).

Global OutreachEach of the IP Practice in Latin America Committee’s vision, mission and values as well its advocacy, public education and member services will work in coincidence to provide a greater global outreach. Latin America, as a whole, has become an important economic market to the world and we should expect to see IP procurement increase steadily each year throughout the region. IPP-LatAm intends to help foster a global outreach by planning an annual trip to at least one Latin American country to visit its local IP Office and as well to coordinate a visit with each county’s IP Association and its Judicial Bar. A very successful trip was taken to Brazil in 2012 and to Mexico City in 2013. Preliminary planning is already underway for the 2014 trip, set for August 2014 to Santiago, Chile and Buenos Aires, Argentina. Updated news about the annual trip, as well as past trips, is available at the IPP-LatAm micro-site on the larger AIPLA web site and as well, on its LinkedIn subgroup page. Other trips are also being considered that would coincide with meetings arranged by ASIPI and other sister Latin American IP organizations. Again, news will be posted on the micro-site and the LinkedIn sub-group page as the information becomes available, and as well, will be disseminated by both membership e-mails (Lyris) and announcements at any one or all of the three annual AIPLA meetings during IPP-LatAm’s Committee sessions.


SubcommitteesSubcommittee Reporting on IP Developments in South America for 2013

Ury Fischer–Co-Chairman

Arturo Covarrubias–Co-Chairman

Subcommittee Reporting on IP Developments in Mexico & Central America for 2013

Eugenio Pérez–Co-Chairman

Guilhermo López Davis–Co-Chairman

Subcommittee for the Maintenance of the AIPLA LAC Micro-Web Site

Eduardo da Gama Camara Junior–Chairman

Subcommittee for the Development and Integration of Social Networking in Latin America

James E. Larson–Co-Chairman

Luis Diego Castro–Co-Chairman

Subcommittee for the Coordination and Planning of the 2014 Annual Latin American Trip

Ignacio Manuel Sánchez Echagüe–Co-Chairman

Jaime Silva–Co-Chairman

Eduardo Molina V.–Co-Chairman

Patent Cooperation Treaty IssuesChair: Jay A. ErstlingVice Chair: Brooke Schumm III

No business to report at this time.

Patent Treaties and International PolicyChair: Thomas T. MogaVice-Chair: Anthony Venturino


Trademark Treaties and International LawCo-Chair: Lynn BeresfordCo-Chair: Kimberly N. Van Voorhis

Vision, Mission and ValuesThe Committee will focus on amendments to the Madrid Protocol that enhance the usefulness of the Protocol for US trademark owners. In particular, the Committee will advocate for strong protection for all US-based trademarks, including “famous” marks. The Committee will promote a version of the Protocol that will allow US filers to use their US trademark application or registration as a basis for filing marks that are the phonetic or foreign language equivalent of the basic mark in the designated member and will work to solve the “goods and services” limitations that are a result of the US use-based filing system. The Committee also plans to take a close look at the Protocol in order to identify any other changes to the Protocol and its procedures that would benefit trademark owners.

As to the Lisbon Treaty, the Committee will work to ensure that the treaty does not encroach on preexisting trademark rights.


The Committee will also work to improve AIPLA’s presence as a leader in global IP issues specifically by enhancing representation on trademark-related issues within the AIPLA regional Committees.

ProjectsPlans for stated meetings: The Committee will have continued discussions regarding the Madrid Protocol proposals available at the WIPO site, including the proposal to eliminate the basic application.

Plans for coordination between stated meetings: The Committee will schedule regular conference calls to discuss and hopefully settle issues. The Committee Subcommittees, which are currently being formed, will also meet regularly once established.

AdvocacyAs to legislation and advocacy, if the Madrid Protocol itself is amended and a new treaty created, then eventually, the advice and consent of the Senate would be needed. This event would not occur within this year, but the Committee will continue to work toward this outcome if necessary.

Public EducationAlthough the international treaties are not the kind of subject matter that usually interest the public, for small and medium-sized businesses, the thought of obtaining trademark protection abroad is daunting. Many of these businesses export without obtaining foreign trademarks rights. Many small and medium-sized business owners (about 95% according to a USPTO survey) believe that their US trademark registration protects them all over the world. Education about trademark protection and the trademark law in general as well as the fact that the Madrid Protocol offers a quick and rather inexpensive method of obtaining trademark protection would be valuable for those businesses. To this end, the Committee will work with the Public Education and other education-related Committees to ensure that education regarding the benefits of international trademark protection is properly communicated to relevant sectors of the public.

Member ServiceThe Committee will participate in webinars and programs at stated meetings to keep members apprised of significant changes or proposed changes in international trademark law.

Global OutreachThe Committee believes it is important to have trademark representation within each of the regional foreign Committees (e.g., IP Practice in Europe, Japan Practice, etc.), particularly within those Committees that participate in AIPLA delegations to their respective regions. To ensure trademarks are adequately represented, the Committee is

presently coordinating with each of the regional Committees to appoint a designated trademark representative. Those individuals will form the International Trademark Liaison Subcommittee and will be responsible for conveying trademark-related information within their Committee and ensuring that any delegations include trademark-related content where appropriate. The liaison will also report on any significant trademark matters within their region.

SubcommitteesThe Committee intends to establish a Madrid Subcommittee responsible for preparing comments and working with other interest groups, such as INTA if practical, to coordinate a unified US proposal for changes to Madrid.

The Committee will also establish an International Trademark Liaison Subcommittee that will include trademark liaisons from each of the regional Committees who appoint such a liaison (see discussion above re: Global Outreach).

The Committee expects the Subcommittees to meet on a regular basis once established.

US Bar – European Patent Office Liaison CouncilAIPLA Delegates: Michael K. Kirk John B. Pegram

The purpose of the US Bar – EPO Liaison Council is for delegates from US IP organizations to meet annually with EPO officials as users of the EPO system.

This year, the Council accepted an invitation from EPO President Battistelli to attend the EPO 40th Anniversary on October 17, 2013, with the Council’s meeting at the EPO on the following day.

The AIPLA delegates coordinate their work with AIPLA leadership and the IP Practice in Europe Committee. John Pegram joined that Committee’s European trip on March 11-15, 2013, including a meeting at the EPO.


US Bar – Japan Patent Office Liaison CouncilAIPLA Delegates: David W. Hill Paik Saber


US Bar – China’s State Intellectual Property Office Liaison CouncilAIPLA Delegates: William D. “Skip” Fisher Ying Tuo



AIPLA FellowsChair: William L. LaFuzeVice Chair: Alan J. Kasper

AIPLA’s bylaws provide for a special category of membership called the Fellows of the Association. Fellows may from time to time be requested by the Board of Directors to undertake projects, including those of a scholarly, educational, research or informational nature. The Fellows support Association objectives, principles and Committee missions and activities, and may submit proposed initiatives to be undertaken by the Fellows to the Board for approval, with any resulting studies, papers and proposals being submitted to the Board for its consideration and disposition.

In support of the Association’s strategic goals, and its vision, mission, and values relating to advocacy, public education, member service, and global outreach, Fellows are working on and discussing a number of projects and issues.

The Fellows met in Washington, DC on October 24, 2013. The meeting was very well attended, despite a number of important conflicting Committee meetings. The following topics were addressed:

Welcome New FellowsThe following individuals were nominated by the Fellows, appointed by the AIPLA Board of Directors, and welcomed at our meeting as new Fellows of the Association:

Salvatore Anastasi William G. Barber Brian B. Darville Elizabeth Ann (Betty) Morgan Philip T. Petti Michael W. Piper

Fellows Committee on Leadership Development – Special Board Project (Don Martens, Bill LaFuze, Alan Kasper, Roger Parkhurst)

Don Martens presented a report on the progress of the

project, which has been praised by the Board. Bill LaFuze and Alan Kasper added brief comments. The Committee’s recommendations to facilitate a smoother transition between outgoing and incoming Committee Chairs have been implemented and acted upon, along with ongoing efforts for most Committee Chairs and Vice Chairs to have monthly meetings with their .s in the groupings/clusters which have been established by the Board.

AIPLA Cares–Community Service Project (Sheldon Klein, Bill LaFuze, Patrick Coyne)Sheldon Klein reported on this new endeavor, in which over 20 members of AIPLA leadership, President Jeff Lewis, Fellows, New Lawyers, and staff traveled to the DC Central Kitchen after a breakfast at the Marriott. The breakfast and travel arrangements were sponsored by Vinson & Elkins, Finnegan, and Gray Plant Mooty. The volunteers spent the morning preparing meals for the homeless. It was a gratifying experience, which we hope to repeat at selected future meetings. Sal Anastasi has agreed to help coordinate a similar event at the Spring Meeting in Philadelphia, and we hope to repeat it at next year’s Annual Meeting as well.

Pro Bono (Bill LaFuze)Bill LaFuze reported that issues of malpractice insurance coverage for volunteers who would not be covered by a law firm policy remain to be worked out. Outgoing AIPLA Treasurer Georgeann Grunebach continues to work on this project and delivered a report, which included information about a recent meeting at the USPTO of participants in the overall effort.

On-site Mentoring (Sheldon Klein)Sheldon Klein reported on the ongoing opportunity to mentor new attendees at AIPLA meetings, being coordinated by the New Lawyers and Membership Committees. Fellows are invited to be involved in these and other mentoring efforts.

Proposal on Fellows Member Eligibility (Chico Gholz, Sheldon Klein)Chico Gholz and Sheldon Klein presented a proposal (distributed prior to and at the meeting) to ask the AIPLA Board to consider amending the Bylaws to permit certain non-lawyers and non-US lawyers to become eligible for appointment as Fellows. Attendees commented on the proposal during the ensuing discussion. Most of those present seemed to favor some type of expansion, with differences being expressed as to the breadth of the extended eligibility. A formal proposal will be circulated among the Fellows via email, recognizing that this would only be a recommendation

Member Services Committees


to the Board, since it involves a bylaws amendment.

Fellows DinnerAbout 30 Fellows dined together at the Peacock Café in Georgetown on Saturday evening, October 26, for our annual social gathering. “A good time was had by all!”

Corporate PracticeChair: Valerie CallowayVice Chair: Lila A.T. Akrad

Vision, Mission and ValuesThe overall mission of the Corporate Practice Committee is to serve the particular needs and interests of the corporate intellectual property segment of the AIPLA membership.

AdvocacyThe Corporate Practice Committee educates its membership about current important intellectual property law-related and in-house corporate intellectual property practice-related issues through its monthly Brown Bag lunch session discussions and it breakfast meetings. The Brown Bag lunch session discussions are held on the third Tuesday of each month at alternating noon East coast and noon West coast times. The breakfast meetings are held at each of AIPLA’s Annual, Mid-Winter, and Spring meetings.

Brown Bag Lunch session discussions over the last months have included topics such as: “How to claim electrical and computer inventions in light of recent case law?,” “Checklist Mania—How and Why In-House Counsel Should Use Various Types of Checklists,” “Ins and Outs of Intellectual Property Insurance,” “Legal Update on Protection of 3D Trademarks,” and “The Myriad case from an In-House Counsel Perspective.”

At the Corporate Practice Breakfast during the Annual Meeting, partners from the sponsoring firm of Fox Rothschild led an interactive discussion about recent changes in various intellectual property laws and their effect on in-house counsel intellectual property practice.

Public EducationMembers of the Corporate Practice Committee helped to plan and participated in various World IP Day activities around the country, many of which were sponsored or co-sponsored by AIPLA’s Public Education Committee.

Member ServiceIn addition to its monthly Brown Bag Lunch Sessions and Committee Breakfasts, the Corporate Practice Committee will focus on getting its geographically co-located members together for lunch on a regular basis to facilitate member in-person engagement and additional face-to-face interaction.

Global OutreachMembership in the Corporate Practice Committee is open to all in-house corporate intellectual property practitioners regardless of geography. However, the vast majority of the Committee’s members are based in the United States. Many members of the Committee serve clients all over the world so Brown Bag session leaders include attorneys from outside of the United States. For example, the December Brown Bag session leader was Jay Kim from the law firm of Kim & Chang, and Jay plans to lead a discussion about recent developments in Korean Patent Law. During our interactive discussion with Jay, we encouraged him to invite his in-house corporate clients to join AIPLA and the Corporate Practice Committee.

SubcommitteesBreakfast Meeting Planning for 2014 Mid-Winter AIPLA Meeting (Nancy Klembus-Subcommittee Leader); Breakfast Meeting Planning for 2014 Spring AIPLA Meeting (Paul Fair-Subcommittee Leader); Breakfast Meeting Planning for 2014 Annual Meeting (Subcommittee Leader -TBD); Monthly Brown Bag Lunch Session Planning (Nancy Klembus and Stan Weinstein – Subcommittee Leaders); and Local Lunch Bunch (Subcommittee Leaders -TBD).

Diversity in IP LawChair: Shayne E. O’ReillyVice Chair:



Law StudentsChair: Yelena MorozovaVice Chair: Samuel V. Eichner

Vision, Mission and ValuesThe Law Student Committee’s mission is to help the Association better identify with the concerns and needs of law students. The Committee wishes not only to invigorate AIPLA’s current law student members, but also to welcome more students to join the Association as active members.

Law student outreach is critical to the growth and development of the AIPLA membership base; the law student community is far and away the largest pool of potential new AIPLA members. As a result, the major goals of the Law Student Committee are to expand the AIPLA presence at law schools around the country, educate law students about AIPLA’s role in the IP community, emphasize the benefits of AIPLA affiliation, and provide law students with guidance and tools necessary to start and develop their IP careers. By expanding the AIPLA law student membership base, we can increase AIPLA membership in the long term and accomplish more as a Committee and as an organization.

AdvocacyOur Committee has been selected by the Copyright Committee to assist with the analysis of the USPTO’s green paper on copyright law reform. We will select three students to assist in the analysis of the green paper potentially pursuant to the submission of an official AIPLA Copyright Committee comment during the USPTO’s and NTIA’s notice and comment period.

Public EducationOn October 16, The Law Student Committee, in conjunction with the Online Programs Committee, held a webinar on the “Dos and Don’ts of Networking” as an edition of the AIPLA Career and Practice Management Series. The webinar offered insight into how to get a legal job through networking, delving into exactly how to get the job one wants, what methods students should use to network in both formal and informal settings, and differences in networking for small and large firms. Our speakers were Richard Goldstein, Founder/ Principal Patent Attorney at Goldstein Patent Law; Lisa Sousa, General Counsel at EF Education First; and Julia

Mabin, Recruiting Coordinator at Bracewell & Giuliani. The webinar was moderated by our law student member Dolly J. Krishnaswamy.

In conjunction with the Biotechnology Committee, two of our law student members prepared case law reports for the August issue of the Biotech Buzz. Sung Park of George Washington University Law School reported on Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. Yeu-Yan Perng of University of Washington Law School, reported on Novozymes A/S v. Dupont Nutrition Biosciences APS.

During August 2013, the Committee selected four law students to assist in the preparation of a Continuing Legal Education paper prepared by the Copyright Law Committee: Melanie Graham of Villanova Law School, Shawn Greene of George Washington University School of Law, Jordan Joachim of New York University School of Law, and Quinn Stine, an LLM student at the George Washington University School of Law. The paper, entitled “Application Programming Interfaces (“APIs”) A Primer and Discussion of Oracle America v. Google,” discussed this recent landmark decision by District Judge William Alsup, as well as the issues on appeal, the definition of an application programming interface, the various amicus briefs submitted in connection with the appeal, and the potential implications of a decision on appeal. The paper served as a CLE paper for the Track 2 session of the Annual Meeting on Friday, October 25 entitled “Copyright in Computer APIs—Does Oracle v. Google Presage a Bleak Future?”

At the Annual Meeting, the Committee held a joint session with the Education Committee. The Law Student Committee presented a panel discussion: “Bringing Your Career Online: Personal Branding and Social Media for Law Students.” The panel discussion focused on how law students can benefit from a more fully developed social media presence, as well as the pitfalls of pursuing such a strategy, with an emphasis on securing entry-level legal employment. The panel also discussed strategies for effectively leveraging social media tools as an attorney. Our panelists were Tim Bukher, Partner, Handal & Morofsky; Jerry Cerasale, Senior Vice President of Government Affairs, Direct Marketing Association; Scott A. Elengold, Principal, Fish & Richardson; Alison Karmelek, Associate, Hunton & Williams; Derek Khanna, Yale Law School Fellow, Information Society Project; and Matt Adams, Partner, AJ Park.

Member ServiceWe recently submitted a proposal to the Board for a competition amongst law schools throughout the country where each participating school will submit a proposal for an event relating to Intellectual Property. The winner of this event would receive partial funding to host this event on their law school campus.


In conjunction with the New Lawyers Committee, the Committee coordinates the Mentorship Initiative, which pairs law students with new lawyers. Under this Initiative, the Mentors (New Lawyers) provide Mentees (Law Students) with guidance on starting and developing their careers in IP law, becoming active within AIPLA, networking, and on other issues as well.

The Committee is currently recruiting Student Representatives in law schools across the country to facilitate contact between AIPLA and the law schools, recruit new law student members, market AIPLA events to the law student community, and help in coordinating local AIPLA events. The number of Student Representatives is slowly growing.

Global OutreachWe recently submitted a proposal to the Board for a foreign student membership rate. We believe the inclusion of this rate in AIPLA’s fee schedule would encourage membership of future foreign attorneys by involving those attorneys prior to their completion of a foreign legal education. We envision the rate to be comparable to what students attending US law schools are currently charged.

Subcommittees Marketing Subcommittee: Giancarlo Scaccia, Chair

Student Liaisons Subcommittee: Luciano Ricondo, Chair

Law School Student Representatives:

Cardozo School of Law: Francesca Montalvo

George Washington University Law School: Joshua Kresh & Jake Berdine

Villanova University School of Law: William Kauffman

University of Washington School of Law: Annie Allison & Sonja Gerrard

Hofstra University School of Law: Julia Weis

University of New Hampshire School of Law: Navid Ahmadi

American University Washington College of Law: Amelia Wong

SMU Dedman School of Law: Lane Webster

New York University School of Law: Dolly J. Krishnaswamy

Washington & Lee School of Law: Elizabeth Farrell

Brooklyn Law School: Jordan Sinclair

USC Gould School of Law: Abtin Amir

University of Idaho College of Law: Jordan Stott

Chapman University School of Law: Nate Camuti

Maryland Francis Carey School of Law: Hannah Fields

Suffolk University Law School: Dominic Yee

MembershipChair: Michael W. PiperVice Chair: Elizabeth Ann “Betty” Morgan

Vision, Mission and ValuesThe membership Committee is focused on assisting the Board and AIPLA staff in finding and developing better and more effective ways to serve our membership as well as evaluating and proposing ways to grow and maintain our membership base. The Membership Committee plays a role specifically in maintaining a strong community which is open and inclusive and supporting membership growth and retention which provides the foundation for financial stability.

ProjectsPlans for stated meetings: we met to discuss Committee business at the 2013 Annual Meeting, and will do the same during the 2014 Mid-Winter Meeting, and the 2014 Spring Meeting. As opportunities become available we will be presenting proposals to the Board and/or HQ at or in between the stated meetings. We are also open to supporting interaction with other Committees at the stated meetings, both at their Committee meetings (on request) and informally by an interaction between our members and the other Committee’s leadership.

Plans for coordination between stated meetings: Our plan is to meet regularly by phone conference including HQ and our Board Liaison in the call. We tend to meet about once a month, but the schedule is flexible to account for when projects and materials, which are our primary focus for the relevant call, are ripe for discussion. We also regularly e-mail notes and proposals to Committee members for feedback and approval in between telephone conferences.

Plans for communication with the Committee clusters/Board Liaisons: We will meet with our Committee cluster whenever a meeting is called. We also interact with a number of the Committees in our cluster in the course of working on projects which intersect with their area of expertise and/or operation. We include our Board Liaisons in our conference calls and e-mail chains.

Detailed discussions of the various active projects we are working on are included below under the strategic plan pillar they most impact, primarily member services. The projects


each have their own sub-heading related to the project.

AdvocacyThe Committee has worked with Trademark Committee to engage the Association in the USPTO review of trademark IDs. The Committee also is working to engage the Copyright Committee in the upcoming review of Copyright Law proposed by the Registrar. These advocacy efforts should assist in both membership recruitment and retention.

Public EducationThe Membership Committee’s work with the Copyright Committee and to engage it in the revision of Copyright Law will present opportunities for public education efforts for the Association.

Member ServiceNew Category Outreach: Licensing

The Committee has finalized a document supporting plans for a specific outreach in the licensing space to coincide with the new member category which has now been approved for licensing professionals. The document has been provided to HQ to support their efforts and will be revised and expanded as requested by any feedback from HQ. At HQ’s request, the Membership Committee can then take the document to the Licensing Committee and get their buy-in and commitments to support and build from there.

Corporate Bundling

The Committee has been working extensively with AIPLA staff to refine the corporate bundling proposal, which has been a primary focus since the member categories were completed. The bundle would allow for group purchases by corporations, which bundle together multiple individual memberships along with online CLE and meeting attendance. Although the payment would come from the corporation, the implementation would still be a collection of individual memberships by eligible employees of the corporation. The goal of the corporate bundling would be to both increase the number of corporate members on the rolls (and receiving AIPLA e-mails and solicitation) and to increase participation in AIPLA events by the corporate members. We’re hoping to share more information in the near future.

Membership 2.0: Ambassadors

The Committee continues to work on the ambassador program that HQ is trying to revive. The recognition is that the highest percentage of AIPLA new members come from referrals from other members. The overall goal is to further strengthen a culture of members reaching out to find new members from their own networks. There is also an already existing incentive award for getting new members to join which provides $50 off of a stated meeting price for each full member and $25 off the stated meeting price for each patent

agent/junior members to the person who recruits them. We have been working to identify creative ideas to create and support a culture of continuous outreach by our members, especially our involved members, to non-members.

Membership 2.0: Targeted Outreach Phone-a-thons

The Committee has also recently identified an alternative recruitment path for investigation. Some peer organizations have had significant recruiting success using designated days and places for members to directly call potential new members. While this would be a new approach for AIPLA and would need to be considered and tailored to work with AIPLA’s culture, the opportunity could have real impact even with a relatively small number of participants from current AIPLA leadership and members.

The Committee will start vetting and investigating the concept with headquarters and other sources and based on those investigations potentially bring back a proposal. With her experience from peer organizations, Betty Morgan will lead this exploration for the Committee.

Membership 2.0: TM/Copyright Outreach

The Committee is working on a targeted Trademark (™) outreach proposal both for its own purposes and to create a template and model for how the Committee could propose and provide value for other potential targeted outreaches to other groups. Jody Drake with Jon Hudis is working on the detailed proposal which has been initially circulated and is in the process of receiving feedback for revision and ultimately approval.

New Lawyers/Law Students

The Membership Committee has been reaching out to the leadership of the New Lawyers and Law Students Committees to support their efforts targeting professors, targeting law students, and building a network of IP Law Societies. The Committees are considering trying to do careers in IP panels in several places around the country to support law societies and campus efforts. The Membership Committee may be able to assist their Board Liaisons in providing bridging efforts and connections for these activities possibly also providing an additional source for leadership mentoring for their leaders and brainstorming both to help them generate ideas on ways to support or implement ideas they already have. The Membership Committee can also potentially support their efforts by bringing them into the ideas we have on the ambassador program and the structures being worked on with HQ to build around that. There has also been discussion of how to create and support Student Block Captains or Law Student Ambassadors which could fit into this model.

One other idea which came up in our discussions on the new lawyer front was potentially developing a “bundle/CLE subscription” for a new lawyer which would potentially be


affordable for the new lawyer to pay for themselves as a pathway to create opportunity to join, make two meetings (with mentoring such as suggested for new corporate), and successfully get involved such that their firm might be willing to sponsor membership and activity in the future. The current thinking is to watch how the potential corporate bundling moves forward and in what form and then potentially follow this path as a next step.

Patent Agents

Late this summer, the Patent Agents Committee completed a member survey and a set of recommendations for working with their target audience. The Membership Committee is engaging to provide assistance and coordination to the Patent Agents Committee with its efforts. It is hoped that some synergy may be developed between the ideas being worked on by the Patent Agents Committee and the ideas already in progress through the Membership Committee.

Affiliations/Affinity Programs

The Membership Committee, primarily through its leadership at this point, is working to assist HQ in considering potential member services and offerings which might be developed to enhance membership in AIPLA as well as to generate additional revenue to support AIPLA programs generally. With her experience from the Audit and Finance Committee, Betty Morgan is heading the effort on the Committee’s behalf at this point.

Global OutreachWhile the Membership Committee is not currently directly supporting the global outreach efforts of the Association, if it is successful in its efforts at increasing the size and diversity of the Association, this may assist the global outreach pillar.

Financial StabilityThe Membership Committee’s work on new categories provided an effort to grow the membership base but also to do so in a way which supports financial sustainability. Specific assessments of potential financial impacts are a part of each effort of the Committee. If the Committee is successful in its overall effort of increasing the base of membership and its engagement in AIPLA programs and activities, both overall and in specific targeted areas such as corporate counsel, as well as improving retention, this also speaks directly to the bottom line of financial sustainability.

SubcommitteesWhile the Membership Committee does not have any formal Subcommittees, it is not uncommon for it to break into small working groups on an ad hoc basis to assist with various projects the Committee undertakes.

MentoringChair: Hetal KushwahaVice Chair: Deb Sengupta

Vision, Mission and ValuesProjects—Plans for stated meetings:2013 Annual: After a couple of pilot programs, we rolled out a full onsite mentoring program. This program pairs together new members/first time attendees with experienced AIPLA members.

We also put on a joint CLE program with the New Lawyers Committee.

2014 Mid-Winter: We plan to continue with the onsite mentoring program, which will be run by Scott Allen. We are also putting together a presentation for the Committee Expo.

2014 Spring: We hope to reach out to other Committees to put on a joint program dealing with the importance of mentoring in the profession.

Plans for coordination between stated meetings: The Committee relies mostly on email communication between Subcommittee members. However, the Committee may introduce regular conference calls with members for status updates and regular feedback.

Plans for communication with the Committee clusters/Board Liaisons: The Committee usually corresponds fairly regularly via email with our Board Liaisons.

AdvocacyThe Mentoring Committee does not have a formal role with respect to advocacy. However, through pairings, our mentors introduce their mentees to substantive Committees which have a role in advocacy.

Public EducationThe Mentoring Committee contributes to public education by supporting Committees like the Education Committee. Our pairings can also increase to AIPLA members becoming more involved in public education, with interested mentees being introduced to AIPLA leadership tasked with this objective.

Member ServiceWe believe that the Mentoring Committee draws in new


members interested in becoming more involved in AIPLA and who may want professional mentoring.

One of the ways that we contribute to Member Services is through our onsite mentoring programs. Another way that we contribute to Member Services is with the Klitzman Award. One objective of the Award is to assist junior corporate counsel in becoming more involved in AIPLA; the recipient is paired with an experienced AIPLA member for the duration of the Annual Meeting. This year’s recipient was Jessica Ergmann, a member of the in-house legal department for Dräger in North America.

We also continue to annually reward our outstanding mentors with a Mentor of the Year Award, which is chosen based on mentee feedback through our selection Committee. It was announced at the Annual Meeting that the 2013 recipient was Amie Peele Carter.

We also plan to implement a post-conference review of the onsite pairings in order to improve the mentoring experience.

We have now implemented a mid-year feedback system for mentors and mentees in the program. We hope that this new initiative will improve the annual mentoring program. Elise Selinger is heading this up.

Global OutreachOur Committee has and will continue to improve ways for our members to become more involved outside of stated meetings. This allows members who are not able to travel to meetings to become involved in and learn more about AIPLA.

We are a global Committee: foreign members are involved in the mentoring program at the leadership level and within the mentoring program as mentors and mentees.

We are trying to develop new ways to reach out to our members using our Committee microsite as well as other on-line resources. In furtherance of this objective, we recently started a LinkedIn group for our Committee, where we plan to provide resources for our members in addition to information to be posted to our microsite. Rudy Hoffman is heading up this new initiative.

SubcommitteesOn-Site Mentoring Subcommittee: Scott Allen. This Subcommittee organizes the onsite pairings initiative.

Pairings Subcommittee: Jenae Gureff: Mentor/Mentee Pre-Screening: Jennifer Rogers; Mentor/Mentee Mid-Year Feedback: Elise Selinger. This Subcommittee is the heart of the Committee since they are responsible for managing all of the mentor/mentee pairings ongoing throughout the year.

Evaluations Subcommittee: Lisa Jorgensen; Allison Strickland Ricketts. This Subcommittee is responsible for reviewing applicants for Mentor of the Year Award.

Klitzman Award Selection Subcommittee: Rakesh Mehta.

This Subcommittee is responsible for reviewing applicants for the Klitzman Award.

Technology Subcommittee: Jack Abid. This Subcommittee is responsible for maintaining the Committee microsite.

Social Media Subcommittee: Rudy Hoffman. This Subcommittee is tasked with initially getting the LinkedIn group active.

New LawyersCo-Chair: Melissa A. Sikorski Co-Chair: Frank L. Gerratana

Vision, Mission and ValuesThe New Lawyers Committee focuses on members in their first ten years of practice. The Committee provides educational and networking opportunities to new lawyers in the Association through the stated meetings and receptions. In addition, the Committee serves as a central resource to communicate with other Committee Chairs and members of AIPLA’s Board to provide new lawyers opportunities to become more involved in the Association. NLC members are active participants in planning substantive programs for the stated meetings, co-authoring CLE papers with speakers, judging and administering the AIPLA Giles Rich Moot Court Competition and the Watson Writing Competition, and assisting substantive Committees with a variety of activities, including research and writing projects, meeting planning and developing educational materials.

Projects: At the 2013 Annual Meeting, the NLC teamed up with the Fellows and leadership to recruit member volunteers for the AIPLA Cares community service initiative at DC Central Kitchen the morning of October 23. The NLC CLE Subcommittee held an educational session jointly with the Mentoring Committee titled “Licensing, Standing, and Jurisdictional Issues Regarding NPEs,” which was followed by a Q & A forum.

The NLC is currently working on programming for the 2014 MWI, including participating in the Committee Expo, a joint educational session with the Education Committee, and, in response to requests from Committee members, a possible networking reception.


Plans are already underway for our 4th Annual Summer Retreat Weekend, to be held in San Francisco August 2014. San Francisco and Palo Alto local networking leadership are organizing.

The NLC Chair and Vice Chair will continue to work with all the Subcommittees throughout the year in their execution of the Committee’s many initiatives.

Advocacy The NLC assists with the administration of the AIPLA Giles Rich Moot Court Competition. Special thanks to the ongoing efforts of Giles Subcommittee Chair David Gosse and the many NLC member volunteers listed below.

The problem for the 2013-14 competition is now posted on the AIPLA website: http://www.aipla.org/resources2/programs/Pages/Moot-Court-Competition.aspx. The problem raises issues related to two recent Supreme Court cases: Gunn v. Minton, 133 S. Ct. 1059, 1065 (2013) and Association for Molecular Pathology v. Myriad, 133 S. Ct. 2107 (2013). Briefs are due for the regional competitions on January 31, 2014. Arguments in the regional competitions will be held from March 21-23, 2014 and the national finals will be held April 23-25, 2014.

NLC members welcome the opportunity to volunteer for other advocacy-related initiatives, such as Amicus Committee briefs.

Public EducationSpecial thanks go to Watson Writing Competition Co-Chairs Bea Koempel-Thomas and Tom Shrum for the many hours of hard work they put in, deftly organizing and overseeing this year’s many volunteer judges and ensuring that the record number of law student paper submissions were read, re-read and graded. The Committee is also very grateful for the hours of careful review all of our judges put in. The team selected Kevin Kantharia, a 2013 graduate of the University of San Diego School of Law, for his paper “The Shrinking and Unpredictable Law of Willful Patent Infringement: Why the Federal Circuit Should Revisit En Banc the Issues in Bard Peripheral Vascular.”

Member ServiceThe NLC coordinates a number of opportunities for NLC members to be active and serve within the organization. Special thanks go to the numerous NLC members who volunteered to research and write CLE track speaker papers for the 2013 Annual Meeting.

NLC CLE Subcommittee: The NLC CLE initiative, now in its second year, serves to organize lunchtime CLE lectures geared toward providing local educational, CLE, and networking opportunities.

NLC Local Networking Subcommittee: The local networking

happy hour initiative, now in its third year, continues in several cities and hopes to expand to other cities where Committee members have expressed an interest in meeting locally.

The NLC recently expanded local networking in the DC area in a joint initiative with the Patent Agents Committee. NLC Local Networking member Steve Holzen has been appointed as the Patent Agents Committee’s Local Networking Subcommittee Chair, and continues to work with NLC local networking leadership in DC as liaison between the two Committees.

Law Student Mentoring Subcommittee: The NLC continues to grow its new law student mentoring initiative in cooperation with the Law Students Committee, and is currently in need of volunteers to be mentors to AIPLA law student members.

Newsletter: The upcoming year brings with it a new Business Casual newsletter staff, with an anticipated first issue following the Annual Meeting.

Global Outreach The NLC has recently expanded local networking internationally to London, England. Additionally, NLC member volunteers regularly assist international Committees with projects.

NLC Chair Missy Sikorski has tasked the Newsletter Subcommittee with publishing informative articles about AIPPI-US.

Subcommittees 1. NLC CLE: Subcommittee Chair, Chad Pannell; Joseph

M. DiCioccio and Roy Issac, Topic and Speaker Selection Subcommittee; Theresa Gressell, Program Coordinating Subcommittee; and Joshua Lee, Timeline Coordinating Subcommittee.

2. AIPLA Giles Rich Moot Court Competition: Subcommittee Chair, David Gosse; Regional Directors: Josh Dalton, Kevin E. Noonan, William P. Ramey III, Roman Swoopes, Stefan Szpajda; Research Group: Kristin Beidinger, Josh Miller, Josh Lee, Jason Croft, Ryan Schermerhorn, Joe DiCioccio, Matt Brigman and Tanya Dunbar; Drafting team: Ida Wahlquist-Ortiz, Erick Lee, Victoria Hall, Lars Taavola, James Chang, Alexis Simpson and David Gosse; bench memorandum prepared by Ryan Schermerhorn, Scott Allen and David Gosse.

3. Watson Writing Competition: Co-Chair, Bea Koempel-Thomas and Tom Schrum; Judges: Alan Leung, Alexandra Capachietti, Brett Nelson, Christopher D. Karlen, Dan Lev, David Joyal, Debodhonyaa Sengupta*, Derek Mason, Frank Gerratana, Jeffrey Han, Jennifer Nall, Jillian Centanni*, John D. Cravero, Josh Jones, Josh Miller, Joshua Stowell, Karen Presley, Margo Livesay, Maria T. Ianiro, Michelle Stover, Nathan Suedmeyer,


Paul B. Sudentas, Rhett Barney, Rick Matthews, Robert A. Auchter, Ryan Alley, Shannon Wajer, Stacia Stokes, Terence Phan, Tom Scrum, Vanessa Waldref, and Yanek Kondryszyn. (*Judged more than one round.)

4. Law Student Mentoring: Subcommittee Chair, Reid Morris. Current NLC Mentors: Frank Gerratana, Sam Eichner, Yelena Morozova, Rob Wells, Ben Siders, Roy Isaac, Michael Bentley, Dan Hegner, Teri Karobonik and Kassity Liu.

5. Local Networking Subcommittee Leaders: Austin – Nathan Glass, Atlanta – Russell Blythe and David Moreland, Boston - Missy Sikorski and Frank Gerratana, Charlotte – Seth Hudson, Dallas/Ft. Worth – Justin Cohen and Victoria Helling, DC/VA/MD – Josh Miller, Pier DeRoo, and Steve Holzen (Chair of the Patent Agents Committee’s Local Networking Subcommittee, liaison to NLC Local Networking in DC), Detroit – Isaac Slutsky, Miami - Rob Weaver, Minneapolis – Al Vredeveld, New York - Ceyda Maisami and Joe Diciocco, Orange County/LA - Ehab Samuel, Palo Alto – Aaron Capron and Jack Lin, Philadelphia – Debora Plehn-Dujowich, San Francisco – Jeffrey Smyth and Carlos Rosario, Tampa - Nathan Suedmeyer, London, England - Julie Carlisle and James Seadon. Local Networking Leaders are needed in Chicago, Houston, Los Angeles, Milwaukee, New York, Pittsburgh, San Francisco, Seattle and Washington, DC.

6. The New Lawyers Committee Newsletter, Business Casual, Newly-appointed Subcommittee Co-Chairs, Erin Bryan and Alison Karmalek. Volunteer editors and contributors: Ryan Schermerhorn, Sofia Castillo, Christopher Ferenc, Rob Weaver, David Gosse, Yelena Morozova, Roman Swoopes. Past issues of Business Casual are posted on the Committee’s page on aipla.org.

Public AppointmentsChair: Roger W. ParkhurstVice Chair: Edward Robert Reines


Women in IP LawChair: Hathaway RussellVice Chair: Randi L. Karpinia

Vision, Mission and ValuesThis Committee shall act to facilitate and empower women in their practice of intellectual property law.

The Women in IP Law Committee is focused on developing substantive and relevant programming that focuses on and promotes women in IP law. In addition, the Committee seeks to develop leadership opportunities within AIPLA for female members.

ProjectsPlans for stated meetings: 2013 Annual Meeting: Strengthening the Pipeline of Women AttorneysIn an ongoing effort to advance women in the legal profession, the Women in IP Committee performed an extensive survey of our membership. We sought information on a variety of issues including job promotions, salaries, motivation for job change, and general happiness in the workplace. Annette Kahler presented the data and interpreted how we can use this information to retain and advance women in the legal profession.


2014 Mid-Winter Meeting – Programs TBD

Women in IP Law Breakfast

Committee Expo

2014 Spring Meeting – Programs TBD

Plans for coordination between stated meetings:2014 Women in IP Law Networking Event – May 22, 2014 – Carol Thorstad-Forsyth and Elise Selinger (Co-Chairs)

Communications and Electronic Outreach Subcommittee – Arlene Neal (Subcommittee Chair)• Event communications – Bea Koempel Thomas (lead)

- Communicate information specific to each stated meeting, webinar, and the networking event via all social media formats at intervals before and during the meeting, webinar, or event.

• Webinars – Yelena Morozova (lead) – 2 webinars per year, free of charge, focused on work/life balance and professional growth.

• Newsletter – Sonsy P. Rajan (lead) – 2 per year – mailed to all Committee membership and also available on AIPLA Committee microsite. Includes: letter from Chair, Subcommittee happenings, featured professional articles, member spotlight, book review, news and notes. Example: http://www.aipla.org/Committees/Commit tee_pages/Women_in_IP_Law/newslet ters/sp2013newletter/Pages/default.aspx

• Social Media – Debora Plehn-Dujowich (lead) – provide multiple social media avenues for Committee members to share information and interact including Facebook, Twitter, LinkedIn, Committee blog and Committee microsite: https://facebook.com/pages/Women-in-IP-Law-AIPLA/290965038221; https://twitter.com/womeninip; http://www.linkedin.com/groups?gid=2108091&goback=%2Eanp_2108091_1329526809020_; http://womeninip.wordpress.com/; http://www.aipla.org/Committees/Committee_pages/Women_in_IP_Law/Pages/default.aspx

• Book Reviews – Hetal Kushwaha (lead) – provide book summaries and reviews for books related to work/life balance and professional growth to Committee members via blog and newsletter.

Plans for communication with the Committee clusters/Board Liaisons:Advocacy

The Committee has a number of programs planned that advocate for women in the profession. In particular, the Committee hosts programs at the three stated meetings, in addition to free webinars between the meetings and the national networking dinners that take place each May. At

the 2013 Annual Meeting, the Committee presented the findings of Dr. Annette Kahler related to the last two AIPLA membership surveys, and led a discussion resulted in the development of an action plan to increase engagement of women in leadership positions in the profession.

Public EducationAs noted above, the Committee hosts a number of free webinars on topics of interest to female members and hosts the national networking events to help educate the public about AIPLA and the benefits of membership.

Member ServiceWebinars – Yelena Morozova (lead) – 2 webinars per year, free of charge, focused on work/life balance and professional growth

Newsletter – Sonsy P. Rajan (lead) – 2 per year – mailed to all Committee membership and also available on AIPLA Committee micro site. Includes: letter from Chair, Subcommittee happenings, featured professional articles, member spotlight, book review, news and notes. Example: h t t p : / /www.a ip la .o rg /Commi t tees /Commi t tee_pages /Women_in_IP_Law/newsletters/sp2013newletter/Pages/default.aspx

2014 Women in IP Law Networking Event – May 22, 2014 – Carol Thorstad-Forsyth and Elise Selinger (Co-Chairs). Each city host provides a program, some of which are educational programs.

Global Outreach2014 Women in IP Law Networking Event – May 22, 2014 – Carol Thorstad-Forsyth and Elise Selinger (Co-Chairs). In recent years the national networking receptions have expanded to include international locations including events in Canada and Hong Kong. We plan to expand the 2014 event to include other non-US groups. Focus will be on non-US cities with largest AIPLA membership first.

Subcommittees2014 Women in IP Law Networking Event –Carol Thorstad–Forsyth and Elise Selinger (Co-Chairs)

Communications and Electronic Outreach Subcommittee – Arlene Neal (Subcommittee Chair)

Advancement and Retention Subcommittee – Meg Boulware (Subcommittee Chair)


BiotechnologyChair: Suzannah K. SundbyVice Chair: J. Timothy Meigs

Vision, Mission and ValuesTo realize the promise of Biotechnology in health, energy, environment, and food requires a reliable, global IP system that rewards innovation without inhibiting it and protects investments in new products and new jobs. Biotechnology IP practitioners and companies, however, face very significant challenges in helping the world realize this promise. The overall mission of the Biotechnology Committee is to serve as resource, educator, and advocate for its members, AIPLA, government institutions, and people everywhere so that the promise of Biotechnology may be more fully realized globally.

2013-2014 Work PlansThe Biotechnology Committee is looking forward to another active year. Because of Jim Kelley’s leadership and strategic structuring of the leadership roles within our Committee, we are poised to do many exciting new things, as well as continue with the activities and services our Committee members desire and expect. We are always looking for new ideas so please contact us with any suggestions or comments. Our plans and goals are based on input we have received from our Committee members and the increasing presence of biotech related issues in mainstream media.

In addition to continuing with the activities and services our Committee members desire and expect, the Biotechnology Committee’s plans and goals for the coming year include:

Expand Educational Services: We plan to expand our educational services and activities in two significant ways.

Patent Practitioners: First, we will modify our educational services for biotech patent practitioners by providing more practice tips, pointers, and tools. We are revamping our monthly newsletter, the Biotech Buzz, to provide practice tips and pointers in view of recent court decisions and rule changes impacting biotech patents. We aim to have webinars

and/or roadshows with hands-on exercises and interactive discussions geared towards biotech patent attorneys. We have begun discussing ideas for showcasing our Committee at the Mid-Winter Expo. We are already working on a program for the Spring Meeting which will cover patent term adjustment (PTA) calculations, as one day can equal millions of dollars for biotech and pharmaceutical companies.

Public: Second, we plan to help educate the public on the importance of biotech patents by writing articles and blogs in plain English. For this objective, we have created a new Subcommittee “Public Communications” and are looking at ways to better use social media to reach the public. We will, of course, keep our Board Liaison informed and seek approval for items which could likely be inflammatory.

Broaden Breadth of Biotech Issues: Our Committee members have spoken and we listened! We have created three new Subcommittees: Industrial Biotech, Biotech Litigation, and PTAB Actions. These Subcommittees will provide our Committee members with news and information relevant to these areas of practice. We are also modifying the objective of our Technology Transfer and Licensing Subcommittee to provide template agreements and clauses relating to biotech inventions along with commentaries discussing the pros and cons, and alternatives.

Strengthen Relationships with Sister Committees/Organizationsand the USPTO: Sister Committees/Organizations: We are forming liaisons with our sister Committees and organizations. Within AIPLA, we plan to regularly work with and communicate with our liaisons to other Committees such as the Chemical Practice Committee, the Food and Drug Committee, the Education Committee, and the Corporate Practice Committee. We have also formed liaisons with our counterparts in other organizations such as the ABA, BIO, CIPA, EPI, IPO, IPTA, JPAA, and LES. We believe these relationships are important in achieving our goals in the face of increasing hostility towards biotech patents.

We recently modified the title of our USPTO Subcommittee to be “USPTO Relations” and expanded its role to review proposed rules and notices published by the USPTO and provide comment thereto when such may impact biotech patent practice. We hope to work closely with the USPTO in a synergistic manner in order to help ensure that any changes to rules and procedures will be beneficial for biotech patent stakeholders and practitioners. Currently, we are working with the USPTO to provide tools and guidance materials that will help ease the burden of sequence listing submissions.

Patent Committees


Increase Community Involvement: Our Committee members have asked for more social events. Thus, we are expanding our “social” Subcommittees to specific geographical locations in the US and internationally. We have also created a Corporate Subcommittee and hope to establish a Subcommittee for Academia and Research Institutions. We aim for these social Subcommittees to organize informal events in which our members can meet and socialize with other members. The Regional Subcommittee will assist with any roadshows. The International Subcommittee will continue with keeping our Committee members informed of biotech issues and laws around the world. The Corporate Subcommittee will help keep our Committee members advised of biotech issues specific to in-house/corporate attorneys and practitioners. Similarly, our Institutional Subcommittee will help keep our Committee members informed of biotech issues specific to academia and research institutions.

Last year, we had a social get together at the Annual Meeting. This year, we reached out to the Chemical Practice Committee and arranged a joint social (cash bar) get together for the Annual Meeting.

Chemical PracticeChair: Jeffrey N. TownesVice Chair: Carol M. Nielsen

Vision, Mission and ValuesThe business of chemistry is essential to our everyday lives and is worldwide in scope. Advances in chemistry spur new products that benefit our health, productivity, and safety and chemical innovations drive economic growth. As such, our mission is to serve our members whose work provokes and hastens ground-breaking discoveries in chemistry and launches them into emerging technologies. We strive to help our members achieve their business goals through education, mentoring and providing variety of resources. We seek to assist our policy leaders in maintaining an intellectual property system that stimulates and rewards innovation, and works in harmony, on a global level, with other economic systems. We strive to serve the public by promoting healthy competition and basic fairness in all we do.

Programs2013 Annual Meeting (2 Hours CLE)Markus Meier, the Federal Trade Commission’s Assistant Director of the Health Care Division in the Bureau of Competition addressed FTC priorities for IP and pharmaceuticals. Supreme Court decision in FTC v. Actavis, which set forth the “rule of reason” antitrust standard for settlements of generic drug patent infringement litigations that include “reverse payments,” will be the focus of subsequent discussion. Also, an in-house pharmaceutical company attorney and a plaintiff’s class action attorney addressed the implications of Actavis decision on dispute resolution.

2014 Mid-WinterPlans are underway with the various Subcommittees to present a theme-based display with associated opportunities in education, global outreach, advocacy and member services.

Plans for coordination between stated meetings: The newsletter is a means to connect with our members between meetings. Its contents will include Subcommittee reports and details of upcoming programs. Members will be able to submit articles and bring up issues that may be of interest to the Chemical Practice Committee. This resource will also serve as an outlet for members to discuss hot topics and suggest policy changes at the US Patent and Trademark Office.

The Chemical Practice Road Show

Plans are on the way to hold The Chemical Practice Road Show in the summer of 2015, which will take place every other year in two or more cities each time. This will provide an opportunity for a panel made up of judges and both in-house and firm attorneys to provide perspectives on the current state of the practice in the chemical arts.

Conferences and Webinars

Committee meetings and webinars will continue to take place between existing leadership and interested Committee members. We plan to offer two to three webinars a year and hold a Committee meeting at Spring and Annual Meeting where a large portion of the meeting is dedicated to the education of our membership and/or information gathering and debate of the latest policy issues.

AdvocacyMany of our Subcommittees are focused on advocacy. For instance, the mission of the Post-Grant Proceedings Subcommittee will be to monitor trial proceedings at the PTAB pertaining to and impacting chemical and chemical engineering technology. The leadership of the Subcommittee


will provide members with periodic reports and will play a role in advocacy considerations, when pertinent.

Public EducationOur Committee will investigate involvement with other organizations like ACS to improve the public perception of IP. We will coordinate this effort with other Committees, especially the Public Education Committee.

Member ServicesA quarterly published newsletter prepared by the Newsletter Subcommittee will include three to five case law reports focused on chemical, pharmaceutical, polymer and natural product fields. Members will be able to submit their own perspectives and interesting articles and opinions regarding related issues.

Many of the other Subcommittees will focus on member services, as well. For instance, the Pharmaceutical Subcommittee will focus its efforts on disseminating current information as it relates to industry trends, important case law, and statutory and regulatory developments in the wake of the changing landscape of the pharmaceutical patent laws. The Litigation/ITC Subcommittee will prepare a review of chemical ITC cases and district court cases focused on issues affecting chemical practice and will generate articles on chemistry litigation, appeals and all related issues. The Corporate Subcommittee will focus its efforts on monitoring and reporting on domestic and international legislative affairs as they relate to the corporate chemical practices. Continuing education and IP and chemical mentorship in the corporate environment will be provided to the members while local grassroots programs will provide a foundation to connect for corporate chemical practitioners.

Finally, webinars will be organized by both the Webinar Subcommittee and other Subcommittees interested in addressing legal issues that arise in the chemical and pharmaceutical industries.

Global OutreachThe main focus of the International Subcommittee will be to provide a forum for discussion of chemical practice issues around the world. In particular, the activities will be directed to identifying divergent practices between different jurisdictions and international ‘best practice.’ The topical content will be provided on a semi-annual basis in the form of a newsletter and webinars which will be held on an ‘as needed’ basis.

SubcommitteesSince the AIPLA Spring 2013 Meeting in Seattle, Washington, Committee leaders Bill Kezer and Jeff Townes worked to establish a new Subcommittee structure with leaders who now are actively seeking members to team up and join in their efforts to make this Committee a resource and advocate for its members while providing a diverse business network.

The following Subcommittees have been created (and Chairs or Co-Chairs appointed):

Newsletter SubcommitteeRoy P. Issac, Ph.D., J.D. ([email protected])

Debora Plehn-Dujowich, Ph.D., J.D. ([email protected])

Webinar SubcommitteeKim Choate ([email protected])

Microsite Enhancement SubcommitteeJohn Marquardt ([email protected])

Professional Programs SubcommitteeDrew Patty ([email protected])

Pharmaceutical SubcommitteeGerard Reinhardt ([email protected])

Paul Sudentas ([email protected])

Litigation/ITC SubcommitteeJeffrey W. Abraham ([email protected])

Maximilienne Bishop, Ph.D., J.D. ([email protected])

Post-Grant Proceedings SubcommitteeHerb Hart ([email protected])

Corporate Practice SubcommitteeMichele M. Tyrpak ([email protected])

Sara Hinkley ([email protected])

International SubcommitteeJulie Carlisle, Ph.D. ([email protected])

Tatiana Almeida Silveira ([email protected])

Bill Kezer ([email protected])


Electronic and Computer LawChair: James D. HallenbeckVice Chair: Michael P. Dunnam

Vision, Mission and ValuesThe ECLC has the mission of considering electronic, computer, and software technology and the laws, administrative practices, and judicial decisions, both foreign and domestic, with respect to securing, promoting, and enforcing the various intellectual property rights in such technology and to cooperate with the AIPLA Board of Directors with recommendations as requested in such matters. As detailed below, the ECLC has fulfilled this mission quite substantially through the work of the Committee, through collaboration with the USPTO on various projects and open communication, and by including practitioners in the leadership of our Committee from several diverse countries.

The ECLC also strives to meet the AIPLA vision of expanding its role as an innovator, powerful advocate, and visible global leader in intellectual property through our Committee’s commitment to education, outreach, member service, and advocacy by way of our annual Electronic and Computer Patent Law Summit and webinars. Further, the registration fees for the Electronic and Computer Patent Law Summit, thanks to our efforts to obtain financial support from law firms and community-focused patent law Associations throughout the country, is a very low cost when compared to comparable programs. By obtaining the financial support from law firms and community-focused patent law Associations, we are not only able to keep the registration fee low, we are also gaining buy-in from the sponsoring firms and Associations thereby expanding our reach and building a stronger, more cooperative IP community.

As also detailed below, the ECLC has partnered with the New Lawyers, Women in IP Law, Diversity, Patent Law, Patent Litigation, and Corporate Committees to continue building Committee relationships, cohesiveness in the AIPLA community, and to encourage participation by all AIPLA members in the activities and leadership of our Committee.

More recently, in response to a request from the 2013 Mid-Winter Planning Committee, ECLC created a new Subcommittee which developed a track session at the 2013 MWI in partnership with the Emerging Technologies and ITC Committees.

Thus, for at least these reasons, it is respectfully submitted that the ECLC actively and successfully seeks to fulfill the missions of both the AIPLA and the Committee while meeting the vision and adhering the values of AIPLA.

ProjectsPlans for stated meetings: 2013 Annual Meeting20th Annual Partnering in Patents program was held at the USPTO on October 23, 2013.

Annual Committee Leadership and USPTO Tech Center Directors Luncheon at the USPTO on October 25, 2013.

Joint CLE Committee Session with the Patent Law Committee.

“Through the Looking Glass: Section 101 in View of CLS Bank v. Alice and Myriad”

Committee Leadership Meeting

2014 Mid-Winter MeetingCommittee Educational Session – Topic TBD

2014 Spring MeetingCommittee Educational Session – Topic TBD

Plans for coordination between stated meetings: The ECLC utilizes the Lyris list to stay in touch with the membership between meetings and to distribute newsletters (with links to the ECLC microsite). The ECLC leadership has teleconferences as needed and exchanges email amongst the leadership group and subsets thereof on a frequent basis. The ECLC also conducts the annual Electronic and Computer Patent Law Summit each year as well as a teleconference in late spring with the USPTO technology center directors as discuss elsewhere herein.

Plans for communication with the Committee clusters/Board Liaisons: The ECLC stays in contact with certain other Committees, such as for partnering in Committee programming at stated meetings. However, this should be a continuing topic of discussion.

AdvocacyThe ECLC continues to monitor major case law and legislation. The ECLC will advise AIPLA and request AIPLA participation as relevant issues arise, particularly as to the scope of patentable subject matter. In the recent past the ECLC surveyed our Committee on AIPLA positions relating to the scope of patentable subject matter and reported results to the Amicus Committee. Our surveys were used as background in forming AIPLA amicus briefs, to which the ECLC contributed by drafting, editing, and/or organizing. The ECLC also created a helpful compilation of decisions subsequent to the CAFC’s Bilski decision. The ECLC maintains a Subcommittee that is ready to respond when


requested or when the Committee otherwise identifies an issue in need of attention.

Public EducationThe ECLC organized the 2013 Electronic and Computer Patent Law Summit held in San Jose in August 2013. The Summit included nationally recognized speakers including Professor Mark Lemley; Michelle Lee, Director, Silicon Valley USPTO; Reggie Davis, General Counsel, Zynga; patent counsel from Google, Cisco, eBay; Honorable Judge Whyte, Senior District Court Judge, ND CA; and several members of the Silicon Valley venture capital community; among others. The event was a sellout with over 130 participants in attendance. This number would have been larger if a larger room were available. The ECLC has proposed the 2014 Electronic and Computer Patent Law Summit for Chicago in June 2014.

In recent years, the ECLC has been active in hosting webinars on topics of interest to the ECLC and will continue to do so. The most recent webinar was entitled “Using the USPTO’s Bilski/Section 101 Guidelines to Gain Allowance of Software and Business Method Inventions.” The Webinar Subcommittee is currently planning additional webinars for presentation over the next year.

The ECLC will continue the annual Partnering in Patents program hosted jointly with the USPTO. The 20th annual program took place on October 23, 2013. Planning for the program in 2014 will begin in spring 2014.

The ECLC will continue to maintain its long standing dialog with group directors in technology centers corresponding to electronics and computer related inventions. Our most recent roundtable lunch discussion, held last October during the AIPLA Annual Meeting, was the best attended and most productive meeting to date. New initiatives were planned by the USPTO in which the ECLC will actively participate. We also held our annual teleconference in June and will continue this practice.

The ECLC will continue to work cooperatively with the New Lawyers, Women in IP Law, Diversity, and Corporate Committees. For example, the New Lawyers Committee and the ECLC have been working together in support of ECLC organized track and Committee education sessions, and pairing mentors and mentees within the AIPLA mentoring program. The collaboration has been very positive.

Member ServiceThe ECLC will continue to procure track and Committee sessions at upcoming stated meetings.

At the 2013 Spring Meeting, the ECLC held a joint session with the Patent Law Committee. The topics included presentations and discussions regarding litigation, prosecution, post-grant practice, and intersections there between.

At the 2013 Annual Meeting, the ECLC partnered with the Patent Law Committee to conduct a CLE Committee educational session regarding patent eligible subject matter following the CLS Bank v. Alice and Myriad decisions. The moderator was Robert Wilkes of Magna International and the speakers were Bruce Sunstein, Courtenay Brinkerhoff, and Jerry Selinger.

New for the ECLC this past year was the addition of a Newsletter Subcommittee. The purpose of this Subcommittee is to provide informational updates to the ECLC membership regarding past and upcoming events, requests for input and participation, and an outlet for the membership to provide short articles with regard to issues of interest to practitioners from the US and other jurisdictions. Through the newsletter, it is hoped the large ECLC membership will be more informed and become more engaged in Committee activities. The publication is electronic and accessible from the ECLC portion of the AIPLA website. Two editions of the newsletter have been published and it has been well received. We will look to increase the publication to at least three times over the next year.

The ECLC has numerous Subcommittees that focus on different aspects of IP practice. We continue to encourage the Subcommittees to remain active and to encourage participation by the general membership. The current list of Subcommittees is set forth below.

Global OutreachAt recent AIPLA meetings, the ECLC has partnered with the IP Practice in Japan, Europe, Latin America, and Far East Committees in presenting joint Committee sessions. These sessions have included speakers not only from the US, but also from the relevant jurisdictions of the other Committees. The ECLC has also recently conducted a Committee session that included a presentation on the state of patent eligibility of computer-implemented inventions in Canada and Europe. Members of the ECLC have also participated in webinars organized by the International Education Committee for attorneys outside of the US. Additionally, ECLC Subcommittees include leaders from outside the US and in-house attorneys from non-US entities.

SubcommitteesTSC Subcommittee - Liaison to Young Lawyers

Chair: Frank Bruno [email protected]

Coordinates interactions between ECLC and Young Lawyers

Liaison to Women in IP Law and Diversity Committees

Chair: Bea Koempel-Thomas [email protected]

Coordinates interactions between ECLC and Women Lawyers, Diversity Committees


Liaison to Corporate Practice Committee

Chair: Valentina Boyet [email protected]

Coordinates interactions between ECLC and Corporate Practice Committee

Copyright SubcommitteeChair: David Einhorn [email protected]

Addresses issues related to securing copyright protection for computer software. Liaison with the Copyright Committee. Also, make or coordinate at least one presentation during a webinar as coordinated by the Webinar Subcommittee.

International Affairs SubcommitteeChairs: Ed Round [email protected]; Jennifer Jannuska [email protected]

Tracks changes in the laws of other countries and informs the Committee of these changes. Also, make or coordinate at least one presentation during a webinar as coordinated by the Webinar Subcommittee.

Patents, Legislative Affairs, and Advocacy Subcommittee Chairs: Lance Reich [email protected]; David Swenson [email protected]; Jeff Ranck [email protected]; Robert O’Connell [email protected]; Justin Dillon [email protected]; Eamon Wall [email protected]

Track pending legislation, particularly concerning the patenting of electronic and computer technologies. Monitor judicial matters and pending cases, rulemaking, and corporate issues, especially emerging issues. Interfaces with PTO Relations Subcommittee and other AIPLA Committees as needed (e.g., Amicus, Copyright, Patent Law, Patent Litigation, Patent-Relations with the USPTO, Special Committee on IP Legislation, Public Education). Identify law review articles and other media of interest to the ECLC and generate responses, in coordination with the larger AIPLA community, as determined necessary. Coordinate a presentation periodically throughout the year during webinars as arranged by the Webinar Subcommittee.

USPTO Relations SubcommitteeChairs: Lynn Anderson [email protected]; Mike Stein [email protected]

Organizes the Partnering in Patents seminar, the annual Brown Bag lunch meetings with TC directors, and manages our Committee’s efforts to provide technical training to PTO examiners.

Licensing, Transactions, and Monetization SubcommitteeChairs: Wenjie Li [email protected]; Ernie Beffel [email protected]

Addresses issues concerning licensing, transaction, and

monetization of electronic and computer technologies. Also, make or coordinate at least one presentation during a webinar as coordinated by the Webinar Subcommittee.

Professional Programs Subcommittee Chairs: John Salazar [email protected]; Michael Drapkin [email protected]; Tim Christman [email protected]

Responsible for the educational programs presented by the ECLC during stated meetings.

Webinars SubcommitteeChairs: Steve Lundberg [email protected]; Thiery Lo [email protected]

Responsible for on-line education programs presented by the ECLC. Partner with the other Subcommittees to develop content.

Road Show/IP Summit SubcommitteeChairs: Michael Drapkin [email protected];

Responsible for travelling education programs presented by ECLC.

Technology and Business SubcommitteeChairs: Sandy Godsey [email protected]; Randy Canis [email protected]

Addresses the advancement of technology, research, and development in business related computing with a focus on business methods and Covered Business Methods under the AIA. Also, make or coordinate at least one presentation during a webinar as coordinated by the Webinar Subcommittee.

ECLC Website SubcommitteeChair: Steve Weed [email protected]

Maintains ECLC website and dissemination of information to the membership.

Electronic and Computer Patent Prosecution SubcommitteeChairs: Tim Bianchi [email protected]; Scott Stinebruner [email protected]

Holds periodic electronic round table meetings to discuss current patent prosecution issues. This will likely include at least one webinar per year with the cooperation of the Webinar Subcommittee.


Newsletter SubcommitteeChairs: Scott Higdon [email protected]; Francisco Castro [email protected]; Per Larsen [email protected]; Paul Schramm [email protected]

Gathers updates from the Chair, Vice-Chair, and Subcommittee Chairs to inform the membership on Committee activities and upcoming events/activities and request and receive articles from the Committee membership.

Food and DrugChair: Stephen B. ParkerVice Chair: William R. Childs

Vision, Mission and ValuesThe Food and Drug Committee seeks to increase the number, profile, and involvement of AIPLA members whose interests include intellectual property, administrative law, and/or the FDA.

ProjectsPlans for stated meetings: The Food and Drug Committee made two presentations at the Annual Meeting: a joint presentation with the Biotechnology Committee: “Overcoming Barriers to Protection of New Technologies;” and a joint presentation with the Alternative Dispute Resolution, Antitrust, and Chemical Practice Dommittees. We are calling for presentations for the Annual and Spring meetings.

Plans for coordination between stated meetings: The Food and Drug Committee hosted a series of phone conferences to determine the direction of the Committee for the upcoming year. We also plan to start a monthly newsletter to communicate more effectively with the overall Committee. We are calling for topics and presentation ideas for AIPLA webinars.

Plans for communication with the Committee clusters/Board Liaisons:We have discussed strategies with Barbara Fiacco for effectively working within the infrastructure of AIPLA to raise the visibility and activity of the Committee.

AdvocacyWe are currently looking to fill the role of Legislative Liaison, in preparation for monitoring and reporting on the legislative changes in Congress, the USPTO, and FDA.

Member ServiceThe Food and Drug Committee is currently planning to issue a monthly newsletter containing announcements, case law summaries, and current events. The Food and Drug Committee also plans to schedule webinar coordination with the Online Committee.

SubcommitteesANDA/Hatch Waxman–Chair, Pamela Polintis

Biosimilars–Chair, Kevin Nelson and Vice-Chair, Stacey Cohen

Medical Devices–Chair, Adrian Zahl and Vice-Chair, James L. Gannon II

Plants and AG–Chair, David M. Saravitz

Each of the Subcommittee Chairs has been asked to contribute ideas for presentations, to review case review summaries, to provide insight into the strategic goals of the Committee, and most importantly, to recruit active members and presenters.

Patent AgentsChair: Esther M. KepplingerVice Chair: J. Ritu Chander (not pictured)



Patent LawChair: Marc A. HubbardVice Chair: Paul R. Kitch

Vision, Mission and ValuesThe Patent Law Committee provides an open community for the exchange of ideas and concerns on US patent law and underlying policy, disseminates information on recent developments in patent law, develops educational programming on patent law for the membership and policy leaders, assists other Committees with developing educational and other programming, identifies to the membership and AIPLA important issues of patent law, and assists with developing positions on issues of patent law to be advocated by AIPLA. The Committee will do so without regard to any particular technology.

ProjectsPlans for stated meetings: 2013 Annual: The Committee hosted a CLE session together with the Electronic and Computer Law Committee on patent eligibile subject matter entitled “Through the Looking Glass: Section 101 in View of CLS Bank v. Alice and Myriad.” The session was moderated by Robert Wilkes of Magna International Inc. Speakers included Bruce Sunstein (Sunstein Kann Murphy and Timbers), Courtenay Brickerhoff (Foley and Lardner), and Jerry Selinger (Patterson and Sheridan). The Patent Law Programs Subcommittee Chairs (Paul Kitch – Nixon Peabody and Sarah Knight – Saliwanchik, Lloyd & Eisenschenk) coordinated the session.

2014 Mid-Winter: The Committee will participate in the planned Committee Expo.

2014 Spring: We plan to put on a substantive CLE session on a topic to be determined.

Plans for coordination between stated meetings: The leadership of the Committee will coordinate activities via email and teleconferences. Committee leadership intends to have regular, monthly conference calls. The Committee plans to coordinate with the Committee at large via the newsletter, the microsite, emails, LinkedIn group posts, and periodic substantive teleconferences.

Plans for communication with the Committee clusters/Board Liaisons:The incoming and outgoing Committee leadership had a teleconference on September 6, 2013. This teleconference was joined by Board Liaison Kevin Rhodes. The Committee has regular communications with other Committees as needed, such as in planning Joint Sessions at the stated meetings.

AdvocacyOne of the Committee’s primary objectives is to assist AIPLA in its advocacy by monitoring issues that arise concerning the substantive aspects of US patent law and bringing those issues to the attention of the membership and AIPLA. The Committee gathers input from its members on issues involving patent law, and recommends positions to be taken by AIPLA. It also drafts, on behalf of AIPLA, resolutions, and comments in response to requests from governmental agencies concerning patent law. The Advocacy Subcommittee assists the Committee in these efforts.

In addition to their efforts in summarizing and soliciting and collecting comments on the NPRMs, the Advocacy Subcommittee continues to monitor case law, PTO publications and NPRMs for issues that may need to be addressed by AIPLA. If an issue is deemed worthy by the Subcommittee, they will make recommendations to the Amicus Committee or prepare a draft resolution for consideration by the Board.

Recent activities of the Patent Law Committee relating to advocacyThe Committee has collected, or is in the process of collecting, comments from Committee members in response to Federal Register Notices relating to (1) real parties in interest, (2) RCE practice, (3) the partnership for enhancement of quality of software related patents and (4) preparation of patent applications, (5) the global dossier, (6) PPAC’s proposal for streamlined prosecution, and (7) the AIPLA’s Harmonization Task Force.

Ken Nigon, as Committee Chair, testified on behalf of AIPLA at the Roundtable on Real Party In Interest. The Committee drafted the formal comments on the Federal Register Notice and submitted them to the Board for approval.

Members of the Committee commented upon SIPO Examination Guidelines for design patents and utility models.

Ken Nigon also testified on behalf of AIPLA at the Roundtable for the partnership for enhancement of quality for software related patents. A task force including members of the Patent Law Committee and the Electronic and Computer Law Committee prepared formal comments on the Federal Register Notice and submitted them to the Board for approval.


Recent activities of our Legislation Subcommittee:Our Legislation Subcommittee, Chaired by Eric Mirabel and Lance Reich, continues work on developing a position that can be recommended to the Board concerning a revision to 35 USC. § 101. An ad hoc Committee of members of the Patent Law, Biotechnology and Electronic and Computer Law Committees has been formed for this purpose. Comments on possible proposals from the ad hoc Committee are being collected through a forum. Once comments have been collected they will be reviewed and the Committee will prepare one or more resolutions for consideration and approval to the Board.

Members of this Subcommittee also worked on comments for the software patent quality FRN.

At the request of the Legislation Committee, The Committee collected and summarized comments on a proposal to amend Title 35 to clarify that the territory of the United States, for purposes of its patent laws, encompasses the exclusive economic zone (EEZ), which is the geographic area beyond US territorial waters but within 200 miles of the coastline.

Public EducationThe Committee is a resource for the Public Education Committee for developing materials for use in public education. In January, we reviewed and commented upon educational materials prepared for middle-school students by the Public Education Committee. We will continue to work with the Public Education Committee to ensure issues relating to the public perception of IP law are addressed.

Vice-Chair Marc Hubbard worked with Michael Piper and the Public Education Committee on coordinating the World IP Day event for Dallas. The event was co-hosted by the Greater Dallas Chamber.

Member ServiceThe Committee serves members of the Committee and AIPLA through a number of different avenues.

First, our substantive Subcommittees provide forums or communities through which Committee members exchange information and thoughts on current legal developments and policy questions. As described above, the Advocacy Subcommittee has solicited and submitted comments to the AIPLA Task Force regarding the Notices of Proposed Rule Making under the AIA. The Patent Law Committee is fortunate to have a technically–diverse membership, enabling it to cover all technologies that arise, including software and the life sciences. Because of the success of the Subject Matter Eligibility Subcommittee, we have expanded its scope to include all issues relating to patentability and renamed it to the Patentability Issues Subcommittee. This Subcommittee is Co-Chaired by Ben Borson and Gary Cohen.

Second, the Committee regularly arranges and sponsors educational programming during the stated AIPLA meetings, often for CLE credit through its Programs Subcommittee, which is Chaired by Paul Kitch of Nixon & Peabody and Sarah Knight of Saliwanchick, Lloyd Eisenschenk. The Subcommittee is responsible for planning educational content during the Committee’s meetings. The Programs Subcommittee has been coordinating with the Professional Programs and the Mid-Winter Institute Committees, as well as the Online Education Committee, by providing to those Committees ideas for programming, and assistance and resources in connection with producing the programming.

Third, the Committee assists other Committees with programming content.

Fourth, the Committee informs its members of important legislative and administrative initiatives, and provides a mechanism through which members may contribute collectively to comments that will be submitted in response to those initiatives.

Newsletter The Committee issued its first newsletter on August 5, 2013 and is currently in the process of editing content for the second issue. The quarterly newsletter will contain articles written by Committee members that highlight current activities of the Committee and important developments relating to the patent system. Daniel Hegner of Reising Ethington is the editor-in-chief. Other members of the Committee are assisting with the editing process.

Social MediaThe Committee recently set up a LinkedIn group. The group currently has 96 members. The Committee’s intention is to use the group as an additional avenue of providing information to members on current activities and interests of the Committee, and as a forum for Committee members to discuss important topics and to provide feedback to the Committee in connection with its activities.

The Subcommittee organized a free conference call on July 9, 2013, which was open to the entire Committee, to discuss the en banc decision in CLS v. Alice. A separate call to discuss the Supreme Court’s decision in the Myriad case is being planned for the near future.

A Free teleconference held on October 1, 2013 discussed another current case, St. Jude Medical vs. Access Closure, Inc. This discussion covered an important aspect of Restriction and Election of Species, and challenges to patents based on lack of concordance of follow on patents in light of prior restriction or election of species.

The Subcommittee continues to monitor developments generally in the area of patentability, including subject matter eligibility, anticipation, obviousness, and §112 issues, for


the purpose not only of holding regular conference calls to discuss important cases, but also bringing the Association’s attention to them and working with Committee leadership, the Amicus Committee and the Board on developing positions to be taken on important issues.

Activities of the Programs Subcommittee

The Subcommittee planned a joint CLE program for the Spring Meeting in Seattle with the Mergers and Acquisitions Committee. The speakers discussed unique aspects to representing start-ups including establishing patenting strategies, working with Venture Capitalists for financing, monetizing investments through the selling IP, handling the acquisition of the start-up, and even how to represent the start-up company when it fails. The speakers were Sabrina Chang of Epicenter, Sharon Barkume of Canrock Ventures, and Keith Grzelak of Wells St. John.

The Subcommittee is working with the Online Programs Committee to produce a webinar based on the Spring Meeting program.

For the 2013 Annual Meeting, the Committee held a two-hour joint CLE meeting with the Electronic and Computer Law Committee. The program was titled “Through the Looking Glass: §101 in view of CLS Bank v. Alice and Myriad.” Rob Wilkes of Magna International was the moderator. Bruce Sunstein untangled the Federal Circuit’s en banc CLS Bank decision. Courtenay Brinkerhoff addressed the Supreme Court’s decision in Myriad. And, Jerry Selinger tried to make sense of it all by discussing generally the state of the law relating to §101.

Global OutreachOur Programs Subcommittee will work with the International Education Committee by making available resources and speakers on US patent law, as well as suggest possible topics and programs that might be of interest to an international audience.

SubcommitteesPatentability Issues: Co-Chairs Gary Cohen and Ben Borson plan teleconferences and suggest speakers related to patent eligible subject.

Professional Programs: Co-Chairs Paul Kitch and Sarah Knight plan and serve as coordinators for the Committee sponsored CLEs at the stated meeting.

Advocacy: Chair S. Gregory Herrman

Legislation: Co-Chairs Lance Reich and Eric Mirabel – See Advocacy section above.

Communications

Newsletter: Chair Dan Hegner

Social Media

102, 103, 112, Inequitable Conduct Subcommittee: Dan Schwartz and Steve Lipman

Rapid Response Team: Matthew Boxer

Recording secretary: Seth Hudson

USPTO Relations: Margaret “Peg” Buck

Patent LitigationChair: Scott J. PivnickVice Chair: Matthias A. Kamber

ProjectsPlans for stated meetings: We have a damages panel for the Annual Meeting and will be soliciting ideas for the Mid-Winter Institute and Spring Meeting with the intent of having CLE-Eligible Committee presentations at both. Possible topics include upcoming changes to the Federal Rules of Civil Procedure and MDL procedures.

Plans for coordination between stated meetings: Most of the work of the Committee will be done by the various Subcommittees, which include Subcommittees on damages, experts, AIA, emerging issues and model patent jury instructions. We will conduct Committee-wide conference calls, and perhaps a survey, to generate new ideas and projects for the Committee. In particular, we would like to generate ideas for webinars with the hopes of putting one on every two months.

Plans for communication with the Committee clusters/Board Liaisons: We will continue our regular calls/meeting with the Committee clusters and Board Liaisons.

AdvocacyNew Federal Rules of Civil Procedure have been introduced and our Committee intends to review these new rules and present the AIPLA Board with a proposal for public comments on the proposed Rule changes. We also expect to review any new proposed legislation related to patent litigation matters and present proposals to the Board as appropriate.

Public EducationWe would like to team up with the Diversity Committee to


begin an outreach program to historically black colleges with engineering programs as well as other universities and colleges with large populations of female engineering students to introduce these students to potential careers in intellectual property. It is hoped that such outreach could improve the diversity among the ranks of patent prosecutors and litigators.

SubcommiteesDamages Subcommittee: Co-Chaired by Matthias Kamber (Keker & Van Nest) and S. Christian Platt (Paul Hastings, LLP)

Litigation Issues Relating to AIA: Co-Chaired by Maya Eckstein (Hunton & Williams) and Alex Goranin (Woodcock Washburn LLP)

Expert Witness Subcommittee: Chaired by Christopher Kennerly (Baker Botts)

Model Jury Instructions Subcommittee: Co-Chaired by David De Bruin and Ben Hodges

Federal Rules of Civil Procedure Subcommittee: Just getting established and leadership not yet finalized.

Patent-Relations with the USPTOChair: Gregory D. AllenVice Chair: Nicholas P. Godici

Vision, Mission and ValuesThis Committee monitors and provides membership comments on various patent-related activities of the United States Patent and Trademark Office (USPTO) that may be of interest or concern to the profession or the public. The Committee focuses on the USPTO practices and procedures and their effectiveness in furthering the objectives of the patent system; the statutory and regulatory aspects of USPTO practice with respect to the examination of patent applications, as reflected in the Manual of Patent Examining Procedure and in actual cases coming to the attention of the Committee; the effectiveness of that practice in furthering the objectives of the patent system; and the effectiveness of the facilities afforded by the USPTO to the public interested in patent matters, including publications.

ProjectsPlans for stated meetings

The Committee typically invites a USPTO official to stated meeting Committee meetings to discuss the current status of patent operations and programs, and any new patent policies, practices, or procedures that have recently been adopted or proposed, and plan to do the same for the 2014 Spring and 2014 Annual meetings.

For the 2014 Mid-Winter Institute, the Committee is planning to participate in the Committee Expo to showcase Committee activities and accomplishments.

Plans for coordination between stated meetings:The Committee is in the process of developing and further establishing Subcommittee and liaison aspects.

Plans for communication with the Committee clusters/Board Liaisons:The Committee is in the process of developing and further establishing Subcommittee and liaison aspects.

AdvocacyThe Committee seeks input from its members, and other interested Committees, on USPTO Federal Register Notices, for consideration and evaluation for possible AIPLA comment to the USPTO. Most recently, the Committee worked with several other Committees to prepare comments to the USPTO’s Strategic Plan for 2014-2018.

Public EducationThe Committee typically invites a USPTO official to stated meeting Committee meetings to discuss the current status of patent operations and programs, and any new patent policies, practices, or procedures that have recently been adopted or proposed. The latter is usually a joint meeting with at least one other interested Committee. In addition, the Committee often joins with other Committees at the stated meetings for their Committee meetings.

For example, at the Annual Meeting, the Patent Relations With the USPTO and Patent Agents Committees held a joint one-hour meeting where Peggy Focarino, Commissioner for Patents, made general remarks regarding USPTO operations; Michelle Lee, Director of the Silicon Valley Satellite Office, discussed White House Executive Actions relating to the USPTO; Andrew Faile, Deputy Commissioner for Patent Operations, discussed fling and backlog statistics, and efforts to reduce the backlog; Remy Yucel, Director of Central Examination Unit, reviewed the Patent Application Initiatives web page, which is a result of the RCE Outreach efforts and interactions with this Committee; Drew Hirshfeld, Deputy Commissioner for Patent Examination Policy, covered the Patent Law Treaty (PLT) and Patent Law Treaties Implementation Act (PLTIA); and Bruce Kisliuk,


Deputy Commissioner for Patent Administration, provided an update on the USPTO’s use of the Cooperative Patent Classification (CPC). More details on the presentations can be found in the slides posted on this Committee’s microsite.

Member ServiceThe Committee actively maintains the Committee microsite to provide information of particular use to the membership. The Committee microsite coordinator is Michael Berger.

The Committee is also looking into use of social media and a newsletter to provide information to members.

SubcommitteesThe Committee is in the process of developing and further establishing Subcommittee and liaison aspects.

USPTO Inter Partes Patent ProceedingsChair: Brad PedersenVice Chair: Steven M. Auvil

Vision, Mission and ValuesThe areas of responsibility of the USPTO Inter Partes Patent Proceedings Committee include all aspects of post-grant patent practice in the US, including interferences, post-grant review, inter partes review, inter partes reexamination, ex parte reexamination, supplemental examination, derivation proceedings, transitional program for covered business method patents, and reissue proceedings.

The Committee plans to continue to study issues raised by the Final Rules and Practice Guidelines for the Trial Division of the Patent Trial and Appeal Board, and by the members of the Committee, related to post-grant proceedings in the USPTO. The Committee will consider Trial Division decisions and orders, Federal Circuit opinions, possible legislation relating to post-grant proceedings and potential additional rule changes concerning formal and substantive issues concerning such proceedings. After receiving approval from the Board, the Committee will report any approved recommendations to the USPTO and the Trial Division, as appropriate, on behalf of the AIPLA.

AdvocacyThe Committee continues to provide comments and advice to the AIPLA Board as requested, particularly pertaining to rulemaking under the America Invents Act.

Public Education & Member ServiceThe Committee put on a two-part webinar series on the new review proceedings with the AIPLA Online Committee in May.

At the Annual Meeting, we had a Committee meeting with the traditional “State of the Board” presentation by a member of the Board followed by a Q&A session from the audience. We also used part of the meeting to create and coordinate Subcommittee working groups in a number of areas, including:

Identifying and nominating order, papers and decisions in review proceedings for designation by the PTAB as “representative.”

Creation of digests of important PTAB decisions related to the new review proceedings and making those available on the Committee website.

Formation of a working group to identify areas of concern and clarification on the new reviewing proceedings to communicate with the PTAB and possible rule changes in rule comments, including drafting of proposed resolutions to be forwarded to the AIPLA Board of Directors for consideration and adoption. One resolution that will be proposed relates to the adoption of a Standing Order for review proceedings similar to what has been used in interference practice for helping practitioners and the Board standardize expected practice details and “fill in the gaps” for issues not addressed in the rules.

Investigation of the processes and potential costs involved in putting on a bimonthly conference call for the Committee.


Alternative Dispute ResolutionChair: J. William Frank IIIVice Chair: John M. Delehanty

Vision, Mission and ValuesThe overall mission of the Committee will be to perform chosen activities in a manner that comports with AIPLA’s values in order to implement AIPLA’s mission and, thus, fulfill AIPLA’s vision.

ProjectsPlans for stated meetings: We co-sponsored a joint Committee CLE at the Annual Meeting and we have a topic on the program at the 2014 Mid-Winter Meeting. At the Spring Meeting we will at least have a Committee meeting and possibly work with other Committees on a joint Committee CLE.

Plans for coordination between stated meetings: We are continuing to work on an Mediation Advocacy Road Show to be held some time in 2014. We will also have at least on Committee Forum phone call on a topic of interest to the Committee.

Plans for communication with the Committee clusters/Board Liaisons: Participate in Cluster phone calls and work with the Board Liaison at Stated Meetings.

Advocacy None

Public EducationThere will be a large education component to the Committee activities for the coming year. See the Projects above.

Member ServiceThe various CLE and road show and Forum calls will have a member service benefit.

Global OutreachThe Committee will continue to monitor changes in procedural rules of International ADR providers and in

document exchange rules/guidelines relating to international arbitration. The Committee is considering developing a CLE program to discuss such changes and the practical implications for conducting international arbitrations. This may be accomplished by engaging international arbitration practitioners and representatives from international ADR providers. We have already announced such changes to Committee members through email and provided links to the new rules on the Committee’s microsite.

SubcommitteesNone

AmicusChair: Jerry R. SelingerVice Chair: Guy Donatiello (not pictured)

Vision, Mission and ValuesThe Committee’s overall mission is to scrutinize judicial and administrative decisions which involve significant issues of law or practice which affect intellectual property, and make recommendations to the Board of Directors that amicus briefs be filed (or not filed) in appropriate circumstances. The Committee’s overall mission involves its own due diligence, as well as responding to requests from party advocates, members of substantive Committees, and the Board. The Committee also makes recommendations to the Board as to brief drafters, and members often volunteer their services pro bono to do so. The Committee’s deliberations are confidential, but we met our mission objectives.

AdvocacyAs set forth above, much of the Committee’s work relates to advocacy and member services. The Committee routinely seeks input from substantive Committees having an interest in a judicial or administrative decision, e.g., the Patent Law Committee, the Patent Litigation Committee, the Copyright Law Committee, the Trademark Law Committee, the Antitrust Law Committee, the Chemical Practice Committee,

Specialized IP & Policy Committees


the Electronic and Computer Law Committee, the Biotech Committee, and the Trademark Litigation Committee.

Public EducationAmicus briefs originating from internal Committee discussion are circulated to other IP Associations by one of our sister Committees. In addition, the amicus briefs are posted on the AIPLA website.

Member ServicesSee above. In addition, briefs filed by AIPLA are posted on its website.

Global OutreachSee above.

SubcommitteesNone

Antitrust LawChair: Geoffrey D. OliverVice Chair: Paul Ragusa

Vision, Mission and ValuesThe Committee’s mission is to: promote the balance between intellectual property rights and competition laws and policies, thereby fostering innovation and competition; keep our members informed of developments in the intersections between IP and competition laws and policies; provide input to the AIPLA Amicus Committee and Board on IP/competition issues arising in the courts, government agencies, and legislature; and actively involve as many of our members as possible in the Committee’s efforts.

AdvocacyThe Committee has worked with the Amicus Committee and Board to develop and draft positions for amicus briefs and legislative initiatives in the IP/competition area. The Committee has also worked with the Standards and Open Source Committee to provide input to the Board on standard-essential patent issues. In December 2012, the Committee prepared and presented to the Board a proposed letter to the FTC expressing First Amendment and other concerns

regarding the FTC’s position in connection with a proposed consent order that a patentee’s seeking an injunction for a standard-essential patent would be a violation of FTC Act §5. In January 2013, the FTC proposed a similar consent order regarding a different patentee’s seeking an injunction; the Committee prepared and sent to the Board a proposed letter to the FTC raising the same concerns. The Board sent letters to the FTC expressing those concerns.

The Committee worked with the IP in China Committee, as well as the Standards and Open Source Committee, in organizing a program for the 2013 Spring Meeting on Innovation Versus Regulation: Enforcing Patent Rights Globally in View of Antitrust/Competition Law, focusing on standards, licensing, and pharmaceuticals. For the Spring Meeting, we also held a joint Committee meeting with the Food & Drug and Alternative Dispute Resolution Committees on “Reverse Payment” Settlements of Hatch-Waxman Litigations. For the Annual Meeting, we took the lead in planning a joint CLE meeting with the Food & Drug, Alternative Dispute Resolution, and Chemical Practice Committees focusing on such settlements after the Supreme Court’s recent FTC v. Actavis decision, and invited a speaker from the FTC to discuss that enforcement agency’s priorities in the IP area for pharmaceuticals.

Members of the Committee also worked with members of the Food & Drug Committee to provide input to the Amicus Committee and Board for the AIPLA’s amicus brief in the FTC v. Actavis case. Members of the Committee also worked to keep its membership informed on various legislative efforts in the area, including The Preserve Access to Affordable Generics Act and FTC rulemaking.

Member ServiceThe Committee has a newsletter for which its members contribute articles on IP/competition issues. It is published at the time of each AIPLA meeting and distributed electronically to our members. It provides a forum for our members to express their views and educate our members about current topics in the IP/competition area. The Committee has established Subcommittees to focus on three important topics at the intersection of IP and competition law—pharmaceuticals, standards, and IP acquisitions and licensing—and has held periodic telephone conference calls in which members of our Subcommittees share important developments in their focus areas with members of the Committee as a whole.

Global OutreachThe Committee has presented programs on international IP/competition issues, and encouraged members outside the United States to provide newsletter articles about IP/competition developments in their countries or areas of the world.


SubcommitteesPharmaceuticals: Paul Ragusa, Subcommittee Chair

Standards: Richard Stark, Subcommittee Chair

IP Acquisitions and Licensing: David Blonder, Subcommittee Chair

Newsletter: David Swenson, Subcommittee Chair

Emerging TechnologiesChair: Robert Capriotti (not pictured)Vice Chair: Denise M. Kettelberger


International Trade CommissionChair: James B. AltmanVice Chair: Michael W. Maas


LegislationChair: Ann Mueting Vice Chair: Griffith B. Price, Jr.

Vision, Mission and ValuesThe overall mission of the Committee is to support the Board and facilitate rapid consideration of legislative proposals. This includes generation of proposals, as well as consideration of both internally-generated and externally-generated proposals. The Committee also works closely with the various substantive law Committees to ensure that the Board has.

The Committee on Legislation supports the vision of the organization by continually seeking to improve the laws governing intellectual property rights, by considering members views as represented by the Committee membership and substantive law Committees with whom we coordinate and communicate, and by supporting the Board and leadership of AIPLA in advocating on the Congress.

The Committee on Legislation supports the Association by keeping members informed regarding legislative developments and initiatives and advocating for fair and effective intellectual property laws. The Committee serves the Association by generating legislative proposals and providing commentary and views of the membership on various legislative proposals to the Board and the leadership.

ProjectsPlans for stated meetings: The Committee members will meet at the stated meetings and discuss outstanding issues.

Plans for coordination between stated meetings: The Committee members will have teleconferences as needed to discuss outstanding issues.

Plans for communication with the Committee clusters/Board Liaisons: The Committee leadership will participate in any cluster meetings and teleconferences.

AdvocacyThe Committee supports the Board and leadership, as requested. This includes generating, reviewing, commenting on, and preparing legislative proposals, positions on legislative proposals, and testimony regarding legislative proposals. We work closely with the substantive law


Committees in doing so and serve as a liaison between the Board and those Committees to ensure that proposals are carefully considered by those with relevant expertise and experience in order to provide to the Board sound recommendations and the studied judgment of the members.

The Committee on Legislation is currently monitoring several issues, including: laws governing Non-Practicing Entities, patent litigation reform, copyright issues, trademark issues and other issues on which the Board has requested assistance from the Committee.

Public EducationThe Committee on Legislation works primarily through the Board, the leadership of the Association, and substantive law Committees.

Member ServiceThe Committee on Legislation actively solicits the substantive law Committees in performing its mission. We seek to provide the Board with a sense of the membership on the various issues that are considered by the Committee.

Global OutreachAs the Committee is directed to US legislation, we consider and coordinate primarily regarding US legislation. Nonetheless, a number of legislative proposals require consideration of various international issues, as well as harmonization with other countries’ laws. The Committee addresses these issues in the regular course of its work.

SubcommitteesThe Committee on Legislation addresses issues, in coordination with substantive law Committees, in various areas, including:

• Copyright • Industrial Designs • Patents/Litigation• USPTO/Agency Practice• Trademark • Committee membership is by appointment.

Licensing and Management of IP AssetsChair: Robert O. Lindefjeld Vice Chair: Penny Lynn Prater

The major activities of this Committee in 2013 have been two educational sessions, hosted at the Spring Meeting in Seattle and the Annual Meeting in Washington, DC, respectively.

During the Spring meeting in Seattle, the educational session was directed to In re Spansion, 2012 US App. LEXIS 26131, decision and the question, “Is a covenant not to sue a license?” The Court in Spansion considered the crucial issue of what type of agreements qualify as licenses to fall within the protection of Section 365(n) of the Bankruptcy Code. The Court relied on an expansive view of what constitutes a license and held that a “covenant not to sue” is a license and as such Section 365(n) applies. The issues involved in this decision were discussed by a panel made up of Pat O’Reilly, of Finnegan Henderson, Hal Wegner of Foley and Lardner, and Michael Lastowski of Duane Morris, LLP Mr. Lastowski is a bankruptcy expert.

Authors of supporting papers included Donika Pentcheva of Westman Champlin,and Koehler and Roy Isaac of Elmore Patent Law Group. Daniel Lev of Finnegan Henderson, wrote on the related case, Already v. Nike, (Already LLC d/b/a Yums v. Nike Inc., US, No. 11-982, 1/9/13).

During the Annual Meeting in Washington, DC, Joseph Eng, of King and Spalding, worked with He Jing of the Anjie Law Firm and Benajmin Bai, of Allen and Overy, to prepare a paper on the Fundamentals of Licensing Intellectual Property in China. Joe then made a PowerPoint presentation on licensing issues in China. In his presentation he explained the “shanzai phenomenon” which downplays the taboos associated with copying and piracy, with amusing examples. He also discussed recent developments in China’s anti-monopoly laws and their effect on the determination of a fair, reasonable and non-discriminatory (FRAND) royalty rate, as demonstrated by the Huawei Technologies and Interdigital Technology Co. decision.


Mergers and AcquisitionsChair: Peter E. MimsVice Chair: Carey C. Jordan

Vision, Mission and ValuesTo engage and educate the membership on intellectual property issues arising in mergers and acquisitions and to raise the awareness of the membership regarding the importance of intellectual property to mergers and acquisitions.

ProjectsPlans for stated meetings: During the 2013 Annual Meeting, the Mergers and Acquisitions Committee (“MAC”) featured two speakers discussing tax issues relating to IP and in particular mergers and acquisitions as well as transfer pricing issues. We co-hosted this presentation with the Corporate Practice Committee. We held a sponsored networking social following the presentation and discussed the issues presented to provide a networking opportunity for MAC members. Plans are still being put together for the 2014 Mid-Winter Institute and Spring Meeting.

Plans for coordination between stated meetings: Our Committee holds monthly conference calls that are intended to be of benefit to member education. All members are invited to participate in these monthly calls. Besides discussing the activities of the Subcommittees (Best Practices, International, M&A Case Law Project, Networking, and Programs and Website) and the MAC at upcoming meetings, we sometimes include a case law highlight in these monthly conference calls.

Plans for communication with the Committee clusters/Board Liaisons:Our Committee participates in the quarterly calls led by Sharon Israel regarding Special Committees. Through these calls we have shared how to set up Subcommittees and have coordinated to join to host events at past stated meetings. For example, over the past few years, we have conducted joint Committee meetings with such varied Committees as Electronics, Emerging Technologies, Law Student, Corporate, and Women in IP Law.

AdvocacyWe have not engaged in advocacy as of yet, but there may be opportunities in the future. For example, there is conflict in the rulings in various courts regarding the assignment or transferability of intellectual property license agreements. We hope to have a Committee presentation at the Spring Meeting or the Annual Meeting on this topic with the goal of developing the membership’s views on these issues.

Public EducationThe Committee is in the process of expanding its website to feature the output of two new Subcommittees: “Best Practices” and “M&A Case Law Project.” After these projects are more fully developed, it may be possible that this information could eventually be made public or the basis for a webinar.

Member ServiceWe have implemented monthly conference calls that are intended to be of benefit to member education. All members are invited to participate in these monthly calls. Besides discussing the activities of the Committee at upcoming meetings, we often include a case law highlight.

In 2013, we have appointed Chairs for the five Subcommittees as listed above. The primary goal of these Subcommittees is member service. We plan to use the Committee website to provide members “best practices” forms and case law resources regarding the mergers and acquisition practice area. With the Networking Subcommittee, we hope to help professionals in the M&A IP practice to meet and discuss their practices with their colleagues. Based on discussions in the past on these conference calls, in some cases, the M&A IP practitioner works alone on the IP issues in an M&A deal and so we believe that a Networking Subcommittee could provide a useful service of facilitating communications and sharing of experiences among the members.

We have or will be conducting joint Committee meetings with presentations with other Committees, such as the Corporate Practice Committee at the 2013 Annual Meeting.

We have provided as many opportunities as possible for Committee members to be involved – through Subcommittees, speaking, moderating, project managing, etc.

Global OutreachWe have had some attendance at convention meetings by international members of AIPLA. One of the long-term goals of the Committee will be to engage the IP Practice in Japan, China, Europe and other similar Committees to conduct joint sessions with regard to mergers and acquisitions in other jurisdictions. Such a program would be well-suited for an Annual Meeting, which is the meeting at which we tend to have the best attendance by international members of the AIPLA. We have formed an International Subcommittee with


two members who practice internationally as Co-Chairs.

SubcommitteesBest Practices (Chair: Ram Menon, Research In Motion and Stanton D. Weinstein, Lockheed Martin Corporation)

International (Co-Chairs: Edwin Molino (Jimenez, Molino y Moreno) and Arthur Au (Deacons)

M&A Case Law Project (Co-Chairs: Andrew Maas, University of Akron Research Foundation, and and Elise Selinger, Conley Rose)

Networking (Co-Chairs: Jacki Daspit, C. R. Bard, Inc. and Jeff Wolfson,Haynes & Boone)

Programs and Website (Chair: Neil Henderson)

Standards and Open SourceCo-Chair: Monica M. BaroneCo-Chair: Christopher J. Dervishian


Trade Secret LawChair: Janet Craycroft Vice Chair: John F. Marsh



2014 Seminars & Road Shows

USPTO Design DayApril 8, 2014

Alexandria, VA

Trademark Boot CampJune 5–6, 2014Arlington, VA

Legal Secretaries & Administrators’ Conference

June 9–10, 2014Arlington, VA

Electronic and Computer Patent Law Summit

June 17, 2014Chicago, IL

Patent Cooperation Treaty (PCT) SeminarJuly 21-22, 2014

Denver, CO

July 24-25, 2014Arlington, VA

Practical Patent Prosecution Training for

New LawyersAugust 7–8, 2014

Arlington, VA

Legal Secretaries & Administrators’ Conference

December 1–2, 2014Arlington, VA


Member NewsAwardsFelicia Boyd Named as 2013 “Attorneys of the Year” Honoree

Minnesota Lawyer magazine has named Felicia J. Boyd, partner with Barnes & Thornburg, Minneapolis, as one of its “Attorneys of the Year” honorees for 2013. She was one of 41 honorees for this year’s award.

A selection committee chose honorees based on a number of criteria, including leadership in the profession, involvement in major cases or other newsworthy events, excellence in corporate or transactional services and public service.

An administrator of the Minneapolis IP group, Boyd’s litigation experience spans several industries, including medical devices, software, music, pharmaceuticals, and manufactured goods. Her victories on behalf of clients have included preliminary injunction motions, summary judgment motions, favorable settlements, and jury verdicts at trial.

She has received several professional honors, including in The Best Lawyers in America for the years of 2010-2014 in the field of intellectual property law, and in Who’s Who Legal for her trademark practice. In 2013, she was recognized by Chambers USA for her IP Litigation practice, and was highly ranked in the 2013 edition of World Trademark Review (WTR) 1000, a publication that annually identifies the world’s leading trademark professionals.

In addition, she is deeply involved in the local community as an active volunteer in organizations, including Ballet Royal, the Girls Scouts, The Neighborhood House, Fairview Foundations, and Susan G. Komen.

New PositionsParithosh K. Tungaturthi and Martin E. Miller have joined the Washington, DC office of RatnerPrestia. Tungaturthi as Scientific Advisor, and Miller as an Associate.

Tungaturthi brings several years of research and technical experience to RatnerPrestia having worked at prominent law firms in the Washington D.C. area and as a USPTO examiner, and will work with a wide range of IP-related services in the area of patent prosecution.

He is experienced in drafting and prosecuting US and international patent applications, providing technical support for patent investigations and litigation activities to help conduct due diligence and performing competitive

intellectual property analyses. He has counseled, advised and educated clients in the areas of validity, scope and enforceability. His technology experience includes antibody engineering, cancer therapeutics, plant science, organic chemistry, molecular diagnostics, pharmaceuticals, medical devices and nanotechnology. He has written several publications examining cell biology and DNA.

Tungaturthi received his B.S. in Microbiology and Chemistry from The Louisiana State University in 1997 and his Ph.D. from Thomas Jefferson University in 2003. He currently attends the University of Baltimore School of Law and will graduate with his J.D. in December 2013.

Miller will focus on patent prosecution leveraging his extensive industry background in mobile technology, social networking, LED display technology, computer software, analog circuit design, telecommunications, consumer electronics, video coding, image analysis and business methods.

Miller brings 10 years of legal experience to RatnerPrestia having worked at prominent law firms in the Washington D.C. area and the USPTO. His experience includes drafting patent applications and managing complex patent prosecution dockets including US and foreign patent applications.

Miller earned his J.D. from the George Washington University Law School (2003) and received his B.S. degree in Electrical Engineering from the Citadel (1988). Before attending law school, Martin spent ten years working as an engineer in the defense industry.

In MemoriamLong-time AIPLA member, Howard W. Bremer, passed away October 11, in Milwaukee, WI after a brief illness with esophageal cancer. He was 90.

Bremer received a degree in Chemical Engineering from the University of Wisconsin in 1944. He then served in the US Navy on the destroyer, U.S.S. Stickell from 1944 to 1946. After his time in service was completed, he attended the University of Wisconsin Law School from which he graduated in 1949. Following graduation he was employed by the Procter and Gamble Company in Cincinnati, Ohio as their patent counsel. In 1960 he and his young family headed back to Madison where he accepted a position as Patent Counsel for the Wisconsin Alumni Research Foundation. He retired officially in 1988, but chose to stay on at WARF as a consultant and continued working there until September 2013.


He was admitted to practice before the Bars of the State of Wisconsin, the Supreme Court of the United States, the Court of Appeals for the Federal Circuit and the District Court of the Western District of Ohio. He was registered to practice in the Patent and Trademark Office and served on the National Advisory Committee on Patent Law Reform. His professional organizations were many: Wisconsin Intellectual Property Law Association, of which he was president from 1989-1990; the Association of University Technology Managers, of which he was president from 1978-1980 and a Trustee from 1986-1988. For this organization he engaged in extensive national legislative affairs on behalf of the university sector; the Council on Government Relations; Patent, Trademark and Copyright Section of the State Bar of Wisconsin; American Bar Association where he served as committee chairman for a number of years; the American Intellectual Property Law Association, serving as committee chairman. He was on the Editorial Board of the Journal of the Association of Technology Managers for many years and a member of the International Advisory Board of the Journal of Industry and Higher Education.

He was listed in Who’s Who in American Law and Who’s Who in America in 1996-1997. He was the author of many articles and a lecturer on Intellectual Property Law and Technology Transfer.

He was considered the “father of university licensing” by assisting in the passage of the Bayh-Dole act in 1980. It took 20 years to secure the passage of Bayh-Dole. In 2000 he received a Recognition Award from the University Of Wisconsin College Of Agriculture and Life Sciences, the Jefferson Medal from the New Jersey Intellectual Property Law Association in 2006, the Edgewood High School Alumni Appreciation Award in 1990 and the EHS Servant Heart Award in 2012 (with his wife, Caryl).

John O. Tramontine, retired senior partner at Fish & Neave, LLP, in New York City, and former NYIPLA President (1985-86), passed away on September 21 in his home at St. Andrew’s Golf Course in Hastings on Hudson, NY. He was 81. He died of natural causes following years of respiratory and pulmonary illness. John lived a fun, loving, full and undeniably successful life. He earned his bachelor’s degree in Chemical Engineering from Notre Dame University; and his Law Degree from New York University. He served in the United States Marine Corps, and for most of his career he was a partner at Fish & Neave LLP (later acquired by Ropes & Gray, LLP). John was a renowned intellectual property litigation attorney.

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The following applications for membership are being published as of January 3, 2014 in accordance with Article II of the By-Laws. We welcome all of our new members.


Alan M. GrimaldiWashington, DC

Andrew Charles GustPort St. Lucie, FL

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Junqi HangWashington, DC

Bree HannSan Francisco, CA

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Mark A. HarperTroy, MI

Charles HarrisSt. Petersburg, FL

Michael D. HarrisWestlake Village, CA

Sarah T. HarrisDulles, VA

Joshua A. HartmanWashington, DC

Mher HartoonianDenver, CO

Jason HayesDurham, NC

James L. HaynesBeijing, Peoples’ Republic of China

Daniel M. HinkleChicago, IL

Jesse A. HirshmanPittsburgh, PA

Mark Alan HoffmanMargate, NJ

Libby HopeSan Clemente, CA

Susanne HopkinsWashington, DC

Michael R. HoustonChicago, IL

Thomas M. HuffLeesburg, VA

Toshikatsu ImaizumiAlexandria, VA

Blair M. JacobsWashington, DC

Marylee JenkinsNew York, NY

Marti A. JohnsonNew York, NY

Gregory KaihoiMinneapolis, MN

J. Scott KarrenSalt Lake City, UT

Gregory T. KavounasBellevue, WA

Michael G. KelberChicago, IL

Tasha R. KelleyIndianapolis, IN

Michael K. KinneyMiddletown, CT

Gregory J. KirschAtlanta, GA

Ann KnabGuilford, CT

Delphine W. Knight BrownNew York, NY

Bernard KnightWashington, DC

Paul J. KorniczkyChicago, IL

Eric J. KrausIndianapolis, IN

Michael R. KrawzsenekAustin, TX

Eric T. KrischkeChicago, IL

Julie P. LaineNew York, NY

Peter C. LauroBoston, MA

Kevin Kyumin LeeSeoul, South Korea

Michael E. LeeHouston, TX

Shawna Cannon LemonRaleigh, NC

Jacob R. LenzkeChicago, IL

Jeffrey LesovitzPhiladelphia, PA

Erika F. LietzanAlexandria, VA

Wallace K. LightseyGreenville, SC

Douglas LineberryGreenville, SC

Xiang LongFremont, CA

Anna LumelskyBoston, MA

Michael C. LynnNatick, MA

Mark LyonPalo Alto, CA

Malcolm J. MacDonaldAlexandria, VA

Craig J. MadsonSalt Lake City, UT

Lauren E. MaguireWilmington, DE

Sean B. MahoneyMaple Grove, MN

Phil MakrogiannisCarlsbad, CA

Suzette M. MartenyTampa, FL

Elizabeth E. MathiesenCambridge, MA

Peter Joseph MatteiGrass Lake, MI

Julie N. MatthewsChicago, IL

Anthony MatulewiczMcAllen, TX

Kevin McAndrewsFremont, CA

Deidre McAuleyAlexandria, VA

Michael E. McCabeBaltimore, MD

Justin Ford McNaughtonNashville, TN

Russ MerbethWashington, DC

Safet MetjahicNew York, NY

Steven MeyerNew York, NY

Michael MoranoMelville, NY


Adam K. MortaraChicago, IL

Kenton MullinsIrvine, CA

James P. MurphyChicago, IL

Timothy M. MurphyBoston, MA

Dale Ellen NelsonBurbank, CA

Michael S. NeustelFargo, ND

Herbert A. NewbornMarblehead, MA

Paul H. Nguyen-BaFairfax, VA

Dean D. NiroChicago, IL

Shane OlafsonPhoenix, AZ

Daniel E. OvanezianPalo Alto, CA

Patrea L. PabstAtlanta, GA

Doran R. PaceGainesville, FL

Merriann PanarellaNatick, MA

Paul ParkerSeattle, WA

Dustin PaulNorfolk, VA

Enoch PeaveyReston, VA

Aaron PedersonMinneapolis, MN

John R. PerkinsGreenville, SC

David PieperFayetteville, AR

Bernard G. PikeRichmond, VA

Charles P. PoirierIndianapolis, IN

Deborah Pollack-MilgateIndianapolis, IN

Letao QinCary, NC

Karl J. QuackenbushBellevue, WA

Andres QuintanaCalabasas, CA

Janet E. ReedWilmington, DE

Irene M. ReiningerAbbott Park, IL

Glenn RiceChicago, IL

Wendy E. RiederLexington, MA

John A. RissmanBoston, MA

David G. RosenbaumNorthbrook, IL

Gabrielle S. RothWashington, DC

Adam K. SacharoffChicago, IL

Michael J. SambrookAvon Lake, OH

Stephanie SandersWashington, DC

Michael F. SarneyNew York, NY

Michael A. SchierlohArlington, VA

Kyle SchlueterManchester, NH

Paul W. SchrierPlano, TX

Mairead SchwabChicago, IL

Maria A. ScungioNew York, NY

Adam P. SeitzOverland Park, KS

Nainesh ShahCoppell, TX

Kenichi ShibataTokyo, Japan

Jeffrey C. ShiehNew York, NY

Michael A. ShimokajiIrvine, CA

Scott M. SlabyCleveland, OH

Ronald D. SluskyNew York, NY

Christopher C. SmithSouthfield, MI

Kelly J. SmithIndianapolis, IN

Leslie SpencerNew York, NY

Thomas SteinbergMcLean, VA

Jeffrey StephensSalt Lake City, UT

Mark David StignaniMinneapolis, MN

Yi-Ming SuRaleigh, NC

John V. SwinsonBrisbane, QLD, Australia

Seyed V. Sharifi TakiehNew Holland, PA

Tammy TerryHouston, TX

Jeffrey L. ThompsonScandia, KS

Joseph P. TitteringtonOklahoma City, OK

Mei TsangIrvine, CA

Robert M. TylerRichmond, VA

Sriranga VeeraraghavanSan Jose, CA

Siddhartha VenkatesanMenlo Park, CA

Todd F. VolynNew Brunswick, NJ

Linda A. WadlerWashington, DC

Naomi WaltmanNew York, NJ

Daniel WanSan Francisco, CA

David WarmboldCordova, TN

Erik WeibustBoston, MA

Jordan D. WeissNew York, NY


Cameron W. WestinNewport Beach, CA

Craig WhitneyNew York, NY

Karen K. WilliamsSan Francisco, CA

Kathleen M. WilliamsBoston, MA

Jacque R. WilsonFort Wayne, IN

Drew WinghartRedwood City, CA

Vance A. WoodwardSanta Monica, CA

Ruby ZefoSanta Clara, CA

Elizabeth ZidonesAda, MI

Timothy J. ZiolkowskiPort Washington, WI

ACADEMICGaia BernsteinNewark, NJ

Francis J. FodaleNaples, FL

FOREIGNGang BaiBeijing, Peoples’ Republic of China

Dana BentataCaracus, Venezuela

Alex BrownLondon, United Kingdom

Andrew CaleMelbourne, VIC, Australia

Rahul ChaudhryGurgaon, India

Simon Nicholson ClarkLondon, United Kingdom

Arturo CovarrubiasSantiago, Chile

Junaid DaudpotaDubai, United Arab Emirates

Scott Earl DavidsonCalgary, AB, Canada

Sergio De AlvaMexico City, D. F., Mexico

Begüm DumanAnkara, Turkey

Robert FinnMelbourne, Aruba

Humphrey Charles FooteWellington, New Zealand

Michael HartigMunich, Germany

Darren Lee HillRio de Janeiro, Brazil

Steven HoweLondon, United Kingdom

Mei HuangBeijing, Peoples’ Republic of China

Andreas HuebelDusseldorf, Germany

Muzammil HusainNew Delhi, India

Rupert HuttlerMexico City, Mexico

Magdalena Marta JablonskiFarmington Hills, MI

Jeffrey KangToronto, ON, Canada

Ayako KobayashiTokyo, Japan

Malathi LakshmikumaranNew Delhi, India

Alvin LamLondon, United Kingdom

Otto Banho LicksRio de Janeiro, Brazil

Phillip LucasSurrey, United Kingdom

Mingo PalacioBuenos Aires, Argentina

Raymundo PerezAlvaro Obregon, Mexico

Ryan PixtonLondon, United Kingdom

Nikki PowellBristol, United Kingdom

Dafne RamosLima, Peru

Simon ReesBristol, United Kingdom

Hai Yan RenBeijing, Peoples’ Republic of China

Roch RipleyVancouver, BC, Canada

David RushtonBristol, United Kingdom

Thomas SchmitzDusseldorf, Germany

Yoon Suk ShinSeoul, South Korea

Masayuki ShobayashiTokyo, Japan

Yulius Susanto CungJakarta, Indonesia

Shinji TakanoTokyo, Japan

Arved WaltematheHamburg, Germany

Hitoshi WatanabeTokyo, Japan

Stephen YangBeijing, Peoples’ Republic of China

GOVERNMENTKofi AdzamliWildwood, MO

Joslyn BarrittWashington, DC

Robert A. CassityAlexandria, VA

William ChengArlington, VA

Kirsten DonaldsonArlington, VA

Lindsay Kate EastmanArlington, VA

Stephani FlemingLansing, MI

David Allen FoleyWashington, DC

Albert GagliardiLorton, VA

John Joseph GillonSilver Spring, MD

Phillip GrayAlexandria, VA

Sara C. HamiltonApex, NC

Miriam Adele LevinAlexandria, VA

Leonard Earl LucasSilver Spring, MD

Sharon S. LynchArlington, VA


Oneal MistrySugar Land, TX

Vu NguyenAlexandria, VA

Mark PrentyAlexandria, VA

Jerry RahllAlexandria, VA

Jill SechserAlexandria, VA

Deenea ShepherdBrooklyn, NY

Timothy SlabouzQuantico, VA

Jonah SmithFalls Church, VA

Thomas StollMcLean, VA

Marcus A. StreipsHagerstown, MD

Brad William ThiesAlexandria, VA

Shannon TwohigAlexandria, VA

Sury VepaEllicott City, MD

Alexander VuWashington, DC

Kwin XieAlexandria, VA

JUNIORElla AikenNew York, NY

Steven AndrewsBeijing, Peoples’ Republic of China

Jeffrey S. BeckerDallas, TX

Brian BoermanNew York, NY

Lotta BreyerMinneapolis, MN

Christina D. Brown-MarshallRedwood City, CA

Stephanie BuntinLas Vegas, NV

Michael BuschbachWoodbury, MN

Stephen T. BychowskiBoston, MA

Wei Ren CampbellBoston, MA

Paromita ChatterjeeWashington, DC

Ya-Fen ChenSaratoga, CA

DaeKeun ChungSeoul, South Korea

Andrew CooperKansas City, MO

Justin William CrottyAlexandria, VA

Justin R. CruzDenver, CO

Melissa Kay DobsonNiskayuna, NY

Patrick T. DriscollBoston, MA

Rich EisznerKansas City, MO

Matthew D. EskueCorvallis, OR

Emi FehrmanLos Angeles, CA

Jennifer L. FordBoston, MA

Angela B. FreemanIndianapolis, IN

Jonathan FrostOakland Park, FL

Eric B. FugettNashville, TN

Joseph J. Funston, IIIDallas, TX

Miklos GasznerWashington, DC

Tanya S. GaylordCleveland, OH

Mark M. HamiltonToledo, OH

Christian HansenMinneapolis, MN

Matthew H. HortonWashington, DC

Leonard HuaChicago, IL

Trevor JoikeMadison, WI

Forrest A. JonesWashington, DC

Jason T. JonovskiCincinnati, OH

Robert Ford KappersChicago, IL

Ernest A. KawkaGeneva, Switzerland

Michael P. KochkaWest Orange, NJ

Jeannette M. KuhnToledo, OH

Patrick LaffertyWashington, DC

Matthew P. LarsonWashington, DC

Elizabeth LauderbackOklahoma City, OK

Zheng LiBeijing, Peoples’ Republic of China

W. Andrew LiddellAustin, TX

Tina LinArlington, VA

Willa LinNew York, NY

Michael LoiSan Marcos, CA

Peter C. MagicNew York, NY

Joshua MalinoSpringfield, NJ

Jonathan MarshallSanta Barbara, CA

Michael MathaiselConcord, NH

Luke McCammonWashington, DC

Scott L. McMillanDenver, CO

Rigel James MenardSt. Paul, MN

Seth A. MilmanCanton, MA

Ian S. MulletCambridge, MA

William K. NelsonFresno, CA


Gabriel OlanderMcLean, VA

James Y. PakNew York, NY

Natalia PenceNorfolk, VA

Carlos P. Perez-ToroWashington, DC

Victor PyterRedondo Beach, CA

Garrett Kent QuilliaWhite River Junction, VT

David C. ReeseWashington, DC

Daniel L. RognaChicago, IL

Frederic E. RothChicago, IL

Caroline J. RoushBoston, MA

Thara Lakshmi RussellNew York, NY

Cecilia SanabriaWashington, DC

Michael P. SantonocitoWashington, DC

Reza SarbakhshHopewell Junction, NY

Hong ShiAustin, TX

Sushil ShrinivasanDallas, TX

Catherine Ann ShultzThe Hague, Netherlands

Cory G. SmithPhoenix, AZ

Jonathan SoikeDes Moines, IA

Andrew StricklandAtlanta, GA

Ethan TownsendWilmington, DE

Eugene VamosTucson, AZ

Anjie VichayanondaWashington, DC

Bradley WagnerSeattle, WA

Benajmin G. WalczakSaint Louis, MO

Bryan L. WalkerErie, PA

Yuanheng Sally WangNew York, NY

Rebecca M. WeisenbergChandler, AZ

Joshua A. WhitehillNew York, NY

Tyson WildeSalt Lake City, UT

Michael David WinterValparaiso, IN

David J. WoldChicago, IL

Yunhye YimSeoul, South Korea

Adam YowellReno, NV

PATENT AGENTMelissa W. AcostaFort Worth, TX

Jodi L. ConnollyPortland, OR

Brian A. DonahuePalo Alto, CA

Kimya HarrisWaltham, MA

Pam KachurGreensburg, IN

Brad J. LoosMenlo Park, CA

Kathryn P. OdlandScottsdale, AZ

Sean A. PryorTysons Corner, VA

Jonathan PutnamCarlsbad, CA

Anton SabetaToronto, ON, Canada

Patricia L. TwaddleRaritan, NJ

Sean X. ZhangToronto, ON, Canada

PATENT AGENT–JUNIORDaniel S. AlbrechtColumbus, OH

Brian ApelAnn Arbor, MI

Brian BillettLos Angeles, CA

Kameron F. BonnerBloomfield Hills, MI

Anand S. ChellappaAlbuquerque, NM

Brent ClothierDallas, TX

Weidan FanChicago, IL

Amanda FeestMcGaw Park, IL

Jon LarsonPittsburgh, PA

Christopher LylePalos Verdes Estates, CA

Anson M. NomuraSan Diego, CA

D.H.R. SarmaWest Lafayette, IN

Ekatherina SeryshevaHouston, TX

Daniel L. SiegelRehovot, Israel

Jayanthi SimhaCupertino, CA

Andrew M. SteinerSalt Lake City, UT

Jeffrey TraceyToronto, ON, Canada

Robert WardWilmington, DE

George P. WhiteLong Beach, CA

USPTO PROFESSIONALSejoon AhnAlexandria, VA

John W. CabecaAlexandria, VA

Peter ChoiAlexandria, VA

Mark Allen CohenAlexandria, VA

Naveed S. HasanFairfax Station, VA

Jeffrey J. LookBonham, TX

Michael MaicherWashington, DC


Nathan ShrewsburyWoodbridge, VA

STUDENTNabil A. AbdallaSeattle University School of LawKirkland, WA

Saba AhmedAmerican University, Washington College of LawWashington, DC

Taimur AlamgirGeorge Washington University National Law CenterWashington, DC

Phillip ArredondoStanford Law SchoolStanford, CA

Gizelle BabikLiberty University School of LawPhoenix, MD

Ida Angela BaenaMarquette University Law SchoolSan Diego, CA

Pinar BaileyStanford Law SchoolSan Bruno, CA

Jason W. BalichQuinnipiac College School of LawHartford, CT

Jessica BallGeorge Washington University National Law CenterArlington, VA

Deanne BarrowGeorge Washington University National Law CenterWashington, DC

Richard BaysMississippi College School of LawMadison, MS

Matthew BeddingfieldDuquesne University School of LawCoraopolis, PA

Gidget Gabriela BenitezAmerican University, Washington College of LawWashington, DC

Alexander BermanGeorge Washington University National Law CenterArlington, VA

Arpita BhattacharyyaBoston University School of LawBoston, MA

Rexford B. BrabsonUniversity of San Diego School of LawLa Jolla, CA

Aaron BrosnanGeorge Washington University National Law CenterWashington, DC

Nathan BrownArizona State University College of LawGilbert, AZ

Tiane A. BrownWayne State University Law SchoolWest Bloomfield, MI

Paola Vanessa BuitronUniversity of Florida College of LawAlexandria, VA

Lauren E. BurkeAmerican University, Washington College of LawSilver Spring, MD

Daniel R. CarosaUniversity of Buffalo Law SchoolBuffalo, NY

Jack ChangSeattle University School of LawSeattle, WA

Huacong ChenArizona State University College of LawTempe, AZ

Mei Ling ChenFranklin Pierce Law CenterConcord, NH

Kristen ClarkWilliam Mitchell College of LawSaint Paul, MN

Blake ColeSamford University, Cumberland School of LawHomewood, AL

Aaron CooperDePaul University College of LawChicago, IL

Benjamin Isaac DachFordham University School of LawForest Hills, NY

Porcsha DanielsCharlotte Law SchoolCharlotte, NC

Rian C. DawsonIndiana University School of Law-BloomingtonBloomington, IN

Blake DedasIndiana University School of Law, IndianapolisIndianapolis, IN

Jeffrey DePasoGeorge Washington University National Law CenterVienna, VA

Daniel Patrick DoneganGeorge Washington University National Law CenterWashington, DC

John DonnellyGeorge Washington University National Law CenterWashington, DC

Hannah Elizabeth FieldsUniversity of Maryland School of LawBaltimore, MD

Carolina FogliaWashington University School of LawSt. Louis, MO

A. Claire FrezzaGeorgetown University Law CenterWashington, DC

Celeste Noelle GainesFlorida State University College of LawTallahassee, FL

Yasmin GamboaRutgers, State University of New Jersey School of LawSouth Orange, NJ

Marta GarciaStanford Law SchoolBoston, MA

Daniel GarzaSt. Mary’s University of San Antonio School of LawSan Antonio, TX

Michael GasparGeorge Washington University National Law CenterPotomac, MD

Ryan GatzemeyerUniversity of California at Berkeley School of LawBerkeley, CA

Laura K. GaudreauGeorge Washington University National Law CenterWashington, DC


Kenneth Matt GerardUniversity of Idaho College of LawMoscow, ID

Michael Joshua GershoniGeorge Washington University National Law CenterWashington, DC

Aiyda GhahramaniFranklin Pierce Law CenterConcord, NH

Esther GoldschlagerHamline University School of LawSaint Paul, MN

Holly GordonGeorge Washington University National Law CenterWashington, DC

Catherine GourashWashington University School of LawPittsburgh, PA

Scott G. GreeneNew York University School of LawNew York, NY

Walter GutrickGeorge Washington University National Law CenterFort Washington, MD

Sarah HaagFordham University School of LawStamford, CT

Brandon HarrisFranklin Pierce Law CenterConcord, NH

Joaquin HernandezChicago-Kent College of LawRosette, IL

Danielle HertzSouthern University School of LawBaton Rouge, LA

Samuel J. HillhouseGeorge Washington University National Law CenterSilver Spring, MD

Eric A. HinojosaSt. Mary’s UniversitySchool of LawSan Antonio, TX

Alice HoGeorgetown University Law CenterWashington, DC

James M. HolmWilliam Mitchell College of LawMinneapolis, MN

Gregory M. HuffmanChicago-Kent College of LawChicago, IL

Jeung HuhUniversity of New Hampshire School of LawConcord, NH

Nordia HuntRutgers, State University of New Jersey School of LawIrvington, NJ

Truongson HuynhGeorge Washington University National Law CenterSpringfield, VA

Olamide Michelle ImoukhuedeGeorge Washington University National Law CenterArlington, VA

Arvind IyengarGeorge Washington University National Law CenterWashington, DC

Maria JammalGeorge Washington University National Law Centerarlington, VA

Jennifer JedraFranklin Pierce Law CenterSouth Bound Brook, NJ

Seong Il JeongChicago-Kent College of LawLisle, IL

Dina JerebitskiGeorgetown University Law CenterSilver Spring, MD

Tijana JovanovicAmerican University, Washington College of LawArlington, VA

Ryan Thomas karrGeorge Washington University National Law CenterSilver Spring, MD

Konstantia KatsouliGeorge Washington University National Law CenterWashington, DC

Sagun KcThe Catholic University of America School of LawArlington, VA

Jeffrey KettleAmerican University, Washington College of LawChevy Chase, MD

Jeonggyun Asher KimGeorgetown University Law CenterWashington, DC

Mary Jean KimAmerican University, Washington College of LawWashington, DC

Younghoon Raph KimAmerican University, Washington College of LawRockville, MD

Quinton KingUniversity of Montana School of LawMissoula, MT

David KnappGeorge Washington University National Law CenterWashington, DC

Mary KronkowskiThomas M. Cooley Law SchoolBrooklyn, NY

Anita LamGeorge Washington University National Law CenterWashington, DC

Han LeeGeorge Washington University National Law CenterWashington, DC

Sejung LeeBoston College Law SchoolReston, VA

Paul A. LeichtUniversity of PittsburghSchool of LawHermitage, PA

Michelle LelandGeorgetown University Law CenterWashington, DC

Xiaomin LiFranklin Pierce Law CenterConcord, NH

Johnathan LindseyGeorge Washington University National Law CenterWashington, DC

Jon Joseph LittyThomas Jefferson School of LawSan Diego, CA

Binqiang LiuFranklin Pierce Law CenterConcord, NH


Peggy LiuDePaul University College of LawChicago, IL

Kristin Danielle LockhartAmerican University, Washington College of LawWashington, DC

Kelly LuGeorge Washington University National Law CenterWashington, DC

Jennifer LunnThe Catholic University of America School of LawArlington, VA

Vara LyonsGeorge Washington University National Law CenterWashington, DC

Mark E. MagaroUniversity of Georgia School of LawAtlanta, GA

Brandon MarshAmerican University, Washington College of LawWashington, DC

Matthew MatzekUniversity of Maryland School of LawWashington, DC

Andrea MazingoNorthwestern University School of LawChicago, IL

Sarah McPhersonUniversity of Toledo College of LawHolland, OH

Octavio MellaGeorge Washington University National Law CenterWashington, DC

Shaton C. MenzieUniversity of Chicago Law SchoolAtlanta, GA

Katelynn MerkinUniversity of Denver College of LawDenver, CO

Lorena Maria MersanColumbia University School of LawNew York, NY

Rachael Million-PerezGeorge Washington University National Law CenterWashington, DC

Carl J. MinnitiRutgers, State University of New Jersey School of LawSewell, NJ

Jason N. MockArlington, VA

Camellia MokriNew York Law SchoolNew York, NY

Francesca MontalvoYeshiva University, Benjamin N. Cardozo School ofNew York, NY

Michael Robert MoreySanta Clara University School of LawSanta Clara, CA

Kaileigh Arnal MorganCleveland State UniversityNew York, NY

Joseph MorninUniversity of California at Berkeley School of LawBerkeley, CA

Christina P. MottSuffolk University Law SchoolBoston, MA

Jingyuan NanUniversity of Washington School of LawArlington, VA

Kristen Gabriela NivenYeshiva University, Benjamin N. Cardozo School of LawBrooklyn, NY

Brendan O’CallaghanGeorge Washington University National Law CenterWashington, DC

Lisa Anne PapaleGeorge Washington University National Law CenterArlington, VA

Minyoung ParkUniversity of Maryland School of LawBaltimore, MD

Sun Young ParkGeorge Washington University National Law CenterFairfax station, VA

Julia ParnellGeorge Washington University National Law CenterChevy Chase, MD

Alexis PattersonAmerican University, Washington College of LawWashington, DC

Katia Percca RagasUniversity of San Francisco School of LawCarpinteria, CA

Nicholas Domenic PetrellaGeorgetown University Law CenterWashington, DC

Robert Scott PickensNew York University School of LawNew York, NY

Robert David PointerLouisiana State University Law CenterAtlanta, GA

Lauren E. PowersUniversity of North Carolina School of LawChapel Hill, NC

Wali RajaFranklin Pierce Law CenterIselin, NJ

Bela RamGeorge Washington University National Law CenterWashington, DC

Beatriz Ramirez BravoGeorge Washington University National Law CenterAlexandria, VA

Andrew RapackeFlorida State University College of LawTallahassee, FL

Luciano A. RicondoHofstra University School of LawSea Cliff, NY

Carrie RosatoFlorida State University College of LawTallahassee, FL

Matthew RosenbergGeorge Washington University National Law CenterWashington, DC

Donovan Ashbrook RunkleThomas M. Cooley Law SchoolSouthfield, MI

Victoria A. RussellNorthern Kentucky University, Salmon P. Chase CollSpringboro, OH


Nazli SakaUniversity of California at Berkeley School of LawCambridge, MA

Anna SarkisyanYeshiva University, Benjamin N. Cardozo School of LawBrooklyn, NY

Keri SchaubertLoyola University School of Law, ChicagoChicago, IL

Thomas SchianoThe University of Texas School of LawDallas, TX

Scott A. SchlagerSuffolk University Law SchoolWeston, MA

Lisa M. SchreihartNorthern Kentucky University, Salmon P. Chase College of LawHighland Heights, KY

Heather SchubertRutgers, State University of New Jersey School of LawCamden, NJ

David SeastrunkUniversity of North Carolina School of LawChapel Hill, NC

Samantha ShermanUniversity of Maryland School of LawRockville, MD

Yue ShiJohn Marshall Law SchoolChicago, IL

Felix ShinLoyola Law SchoolStevenson Ranch, CA

Lauren D. ShinnGeorge Washington University National Law CenterFairfax, VA

Alison T. SlaterUniversity of New Hampshire School of LawNashua, NH

Cameron P. SmithSt. Mary’s University of San Antonio School of LawSan Antonio, TX

Elizabeth SneitzerGeorge Washington University National Law CenterWashington, DC

Ian SouleGeorge Washington University National Law CenterAlexandria, VA

Christina SprouseUniversity of California at Los Angeles School of LawSan Diego, CA

Matthew StanfordFranklin Pierce Law CenterChapel Hill, NC

Thomas H. StantonStetson University College of LawTampa, FL

Ari SteinerGeorge Washington University National Law CenterWashington, DC

Corinne StoneGeorge Washington University National Law CenterWashington, DC

Jacqueline StoughSeattle University School of LawSeattle, WA

Jennifer V. SuarezTexas Wesleyan University School of LawDallas, TX

Edward T. SweeneyChicago-Kent College of Law, Illinois Institute of TechnologyChicago, IL

Thomas SzollarUniversity of Dayton School of LawHilliard, OH

Richard TaoYale Law SchoolNew Haven, CT

Daniel Taylor-CohartUniversity of Chicago Law SchoolBrooklyn, NY

Steven TjoeGeorge Mason University School of LawArlington, VA

Darlene TzouAmerican University, Washington College of LawWashington, DC

Tearra VaughnIndiana University School of Law, BloomingtonCharlotte, NC

Elizabeth VaysmanAmerican University, Washington College of LawWashington, DC

Brittany VendryesHoward University School of LawHyattsville, MD

Sagar VengurlekarAmerican University, Washington College of LawWashington, DC

Jasjit VidwanGeorge Washington University National Law CenterWoodbridge, VA

Andrew WalterGeorge Washington University National Law CenterWashington, DC

Mao WangGeorge Washington University National Law CenterFalls Church, VA

Yueyue WangUniversity of Akron, C. Blake McDowell Law CenterAkron, OH

Angelina WhitfieldUniversity of MissouriSchool of LawSedalia, MO

James R. WhittleGeorge Washington University National Law CenterChevy Chase, MD

Doyon WonGeorge Washington University National Law CenterFairfax, VA

Larissa WoskobGeorge Washington University National Law CenterWashington, DC

Ellen Kaiwen WuNortheastern University School of LawDetroit, MI

Jessica WuGeorge Washington University National Law CenterWashington, DC

Wenyuan WuFranklin Pierce Law CenterConcord, NH


Xiaoban XinGeorgetown University Law CenterRockville, MD

Jae Won YoonFranklin Pierce Law CenterBrooklyn, NY

Qi ZhangUniversity of New Hampshire School of LawConcord, NH

Biyang ZhaoJohn Marshall Law SchoolChicago, IL

Chen ZhuThe Pennsylvania State University School of LawState College, PA

Gabriella E. ZiccarelliSanta Clara University School of LawPalo Alto, CA

Jessica ZurloUniversity of New Hampshire School of LawWashington, DC

Opportunities for IP Law Students

It’s a privilege to be chosen for this time-honored award, and to be able to follow in the footsteps

of some truly outstanding legal minds. As the field of intellectual

property continues to find its place in 21st-century society, I believe the next generation of young lawyers

is well-equipped to find new, innovative solutions to these

increasingly important problems. I am extraordinarily grateful to

the professors and faculty at GW Law, who gave me a strong foundation in legal

fundamentals, encouraged my creativity, and above all, instilled in me a love of legal reasoning

and problem-solving.

–Joe Newman

The American Intellectual Property Law Education Foundation’s mission is to promote diversity in the intellectual property bar by providing educational, mentoring and employment opportunities to minority law students, and acknowledging outstanding accomplishments in the study and practice of intellectual property law. The Foundation offers the following scholarships and awards:

To apply, visit www.aiplef.org

The Foundation awards scholarships to law students from minority groups that are presently under-represented among intellectual property attorneys, through the Sidney B. Williams, Jr. Intellectual Property Law Scholarships. In the last nine years the Foundation has awarded $1,030,000 to assist minority law students studying intellectual property law. Recipients have the opportunity to receive $10,000 a year for three years. Twelve new scholarships were given this year. Deadline to apply is March 14, 2014

The Foundation awards scholarships to law students from

Sidney B. Williams, Jr. IP Law Scholarship

The Jan Jancin Competition o� ers three separate awards to law students nominated by their schools who excel in the study of intellectual property law. First, and foremost, is the time-honored and prestigious Jan Jancin Award. The second award was established by the Intellectual Property Law Section of the Virginia State Bar and the third award was created by the Past Presidents of the American Intellectual Property Law Association. Deadline to apply is June 30, 2014

The Jan Jancin Competition o� ers three separate awards Jan Jancin Competition

As a recipient of the Sidney B. Williams Intellectual Property Scholarship, I am greatly

appreciative of the generous award funded by AIPLEF. This

scholarship has allowed me to focus less on financial obligations

and put more energy towards developing my legal career.

Beyond the monetary relief from the burden of law school tuition, it is

an honor and an invaluable opportunity to network with members of the intellectual

property community through this organization.

– Sydney English

2013–2014 Sidney B. Williams, Jr. Scholarship Recipients:

• DARNELL CAGE Saint Louis University• SYDNEY ENGLISH George Washington University Law School• IKEE GARDNER UNC Chapel Hill School of Law• ARIEL GREEN Stanford University School of Law• JOAQUIN HERNANDEZ Chicago-Kent College of Law• HYOSANG (MARK) KIM Stanford Law School• ERIN LEACH University of Chicago Law• OLUWAFEMI MASHA George Washingston University Law School• JASMIN BRAXTON UC Hastings College of Law• ANTHONY PETTES Duke University School of Law• JEFFREY (RANDY) ROESER University of Houston Law Center• JASPER TRAN Loyola Law School, Los Angeles• BRIAN WEISSENBERG Stanford Law School• JUSTIN WILSON Case Western Law• DANIELLE WRIGHT Howard University School of Law• ZELIN YANG UC Berkley School of Law

Recent Jan Jancin Winners:• 2013 – JOE NEWMAN George Washingston University

Law School• 2012 – SARA FINK St. John’s University

School of Law• 2011 – ANDREW SELLARS George Washington

University Law School• 2010 – LINDA KAHL WUESTEHUBE Santa Clara University

School of Law• 2009 – ACHAL OZA Boston University School of Law• 2008 – JESSICA K. FENDER Chicago-Kent

College of Law


Presents the:

2014 JAN JANCIN AWARD

On behalf of the American Intellectual Property Law Education Foundation (AIPLEF), the Intellectual Property Law Section of the American Bar Association (ABA-IPL), the American Intellectual Property Law Association and the Past Presidents of AIPLA, we are pleased to invite your institution to nominate a law student who has excelled in the study of intellectual property law for the Jan Jancin Award.

The late Jan Jancin served not only as President of AIPLA and Chair of the ABA-IPL Section, but served with distinction in other leadership roles in other intellectual property law associations nationally and internationally.

The Jan Jancin Award, which includes a cash award of $5,000 plus reasonable travel expenses to receive the award at the 2014 ABA Annual Meeting in August. The recipient must be able to attend in person to receive the award, which will be presented at the conference.

The second place winner will be awarded the AIPLA Past Presidents Award of $2,500 at the AIPLA Annual Meeting in Washington, DC.

To be considered, nominations must be received no later than May 30, 2014 addressed to:

American Intellectual Property Education Foundation

241 18th Street South, Suite 700Arlington, VA 22202

Award: $5,000Nomination Deadline: May 30, 2014

The award will be presented during the 2014 ABA Annual Meeting Luncheon in Boston, MA (August 7–12, 2014).

We invite your institution to nominate a law student who has excelled in the study of intellectual property law.

For More Information, Visit www.aiplef.orgor emailed to [email protected]


The 41st Annual AIPLAGiles Sutherland Rich Memorial Moot Court Competition

Presenting Problems in Intellectual Property Law

Regional CompetitionsMarch 21-23, 2014Boston • Chicago Houston • Silicon Valley National Finals CompetitionApril 23-25, 2014Washington, DC

National First PlaceAIPLA Giles Sutherland Rich Memorial Award— $2,000

National Second PlaceIrving Marcus Award— $1,000

Sponsored by:

American Intellectual Property Law Association

Awards:

For more information, Visit www.aipla.org/resources

Competitions:


Announces The:

2014RobeRt C. Watson Competition

How to Enter:Law students are encouraged to submit an article on

an IP topic, written on or before June 30, 2014. Judges

will consider the merit of the article as a contribution

to the knowledge respecting intellectual property and

the extent to which it displays original and creative

thought or information not previously written or

published by the author prior to July 1, 2013.

The winner will receive reasonable expense

reimbursement to attend the AIPLA Annual Meeting,

October 23-25, 2014 in Washington, DC, to receive

their award.

To be eligible for consideration, the article must have

been written solely by a student or students either in

full-time attendance at a law school (day or evening) or

prepared in connection with a law school course. The

article must be submitted to the American Intellectual

Property Law Association on or before June 30, 2014.

Papers should be approximately the equivalent of 10

law review pages, including footnotes (30–40 pages

typed copy). Submission must be made in PDF or text

format. Submission must include the submitter’s

name, current address, current telephone number,

and employment information, if applicable.

Submit articles to:

American Intellectual Property Law AssociationWatson Award Competition

[email protected]

Award: $2,000Submission Deadline: June 30, 2014

The award will be presented Friday, October 24, 2014 during the AIPLA Annual Meeting Luncheon in Washington, DC.

For More Information, Visit www.aipla.org/resources2

recognizing law students for outstanding articles on IP law


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electrOnic And sOFtwAre pAtents: lAw And prActice, tHird editiOn, witH 2013 cumulAtiVe supplement

steven w. lundberg, stephen c. durant, and Ann m. mccrackin, Editors-in-Chief

American intellectual property law Association

electronic and software patents: law and practice, third edition is

a strategy guide that helps practitioners deal with today’s lightning-paced technological developments, changes in USPTO policy and pivotal court rulings. This step-by-step guide provides perspectives and tactics, including guidance on tough decisions such as whether to seek patent protection at all, how to search for and evaluate prior art, how to use trade secret and copyright law in conjunction with patent strategy and how to draft claims for broad yet distinct interpretation; lessons on preparing computer-related patent applications under Alappat, its progeny, and the USPTO’s examination guidelines; compelling insights on drafting with the appropriate scope; and more.

The new 2013 cumulative supplement offers analysis of the federal Circuit Court of Appeals’ decisions in CLS

Bank International v. Alice Corp,. Ultramercial, LLC v. Hulu, LLC and WildTangent v. Ultramercial, LLC.; tips for drafting the specifi cation in view of recent decisions on enablement, best mode and written description requirements; examples of terminology that invokes and terminology that avoids 35 U.S.C. Section 112, Paragraph 6; practical advice for preissuance third party submissions; and special considerations for design patent protection on a graphical user interface.

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intellectuAl prOperty lAw in cyBerspAce, secOnd editiOn, witH 2013 cumulAtiVe supplement

G. peter Albert, Jr., Editor-in-Chief

American intellectual property law Association

intellectual property law in cyberspace, second edition offers up-to-date information on this cutting-edge area of law, with discussion of such

important topics as how the domain name system works, the latest on dispute resolution policies and new registration options; administrative dispute resolution policies proposed and implemented by domain name registrars—and how to protect registrations from challenges; and the application of trademark law to internet concepts such as metatags, hyperlinking, framing and spamming.

The new 2013 cumulative supplement covers recent judicial activity and trends, including developments in the area where personal jurisdiction lies in peer-to-peer fi le sharing protocols, such as BitTorrent; reexamined and updated judicial standards as to what constitutes

appropriate browsewrap and clickwrap agreements to provide website users reasonable notice of the site’s terms of use; challenges to Google’s Adwords program regarding trademark infringement/dilution claims against Google for its purchase and use of trademarks to trigger competitors’ advertising; and a class certifi cation challenge raised by Google against the Authors’ Guild in an ongoing dispute over the Google library Project.

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main Volume:2011/880 pp. hardcoverISBN 978-1-57018-753-7Order #1753/$385.00discount price: $288.75

supplement:2013/Approx. 200 pp. SoftcoverISBN 978-1-61746-306-8Order #2306/$215.00discount price: $161.25

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• Limits of Liability up to $5 million each claim/annual aggregate, including damages and claim expenses, available to qualified applicants• “Claims Made and Reported” form, providing coverage for claims that are first made against you and reported to CNA during the policy period or extended reporting period• Prior Acts coverage available to qualified firms• Claims will not be settled without the firm’s prior written consent• 1-year, 2-year, 3-year and 6-year extended reporting period options available• Innocent Insured coverage provided• Coverage provided for Libel, Slander, and Defamation in the rendering of legal services• Patent Agents included

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