aipla 2011 mid-winter institute ebulletin

BULLETINAmerican Intellectual Property Law Association

2011 Mid-Winter InstituteOrlando, FL

DaviD W. Hill............................................................................................................................................................. President901.New.York.Avenue,.NW,.Washington,.DC.20001.

William G. BarBer............................................................................................................................................ President-Elect600.Congress.Avenue,.Suite.2120,.Austin,.TX.78701

Jeffrey i.D. leWis...................................................................................................................................... First.Vice-President1133.Avenue.of.the.America,.New.York,.NY.10036

Wayne P. soBon.....................................................................................................................................Second.Vice-President1050.Rnterprise.Way,.Suite.700,.Sunnyvale,.CA.94089

alan J. KasPer...................................................................................................................................Immediate.Past.President2100.Pennsylvania.Avenue,.NW,.Washington,.DC.20037

JonatHan W. ricHarDs................................................................................................................................................ Secretary1000.Eagle.Gate.Tower,.60.East.South.Temple,.Salt.Lake.City,.UT.84111

GeorGann s. GruneBacH............................................................................................................................................Treasurer2121.Avenue.of.the.Stars,.Los.Angeles,.CA..90067

Q. toDD DicKinson.......................................................................................................................................Executive.Director241.18th.Street,.South,.Suite.700,.Arlington,.VA.22202

Board.of.Directors.(Terms.Expire.October.2011)

roBert W. clariDa.......................................................................1133.Avenue.of.the.Americas,.New.York,.NY.10036-6799elizaBetH ann morGan.........................................................................260.Peachtree.Street,.Suite.1601,.Atlanta,.GA.30303naomi aBe voeGtli....................................................................................................349.Wine.Circle,.Blountville,.TN.37617marK l. WHitaKer.......................................................................... 1299.Pennsylvania.Avenue,.NW,.Washington,.DC.20004

(Terms.Expire.October.2012)

Brian B. Darville............................................................................... 211.N..Union.Street,.Suite.100,.Alexandria,.VA.22314merceDes K. meyer.................................................................1500.K.Street,.NW,.Suite.1100,.Washington,.DC.20005-1209PHiliP t. Petti........................................................................................................... 550.W..Adams.Street,.Chicago,.IL.60661micHael W. PiPer....................................................................................5601.Granite.Parkway,.Suite.750,.Plano,.TX..75024

(Terms.Expire.October.2013)

samson HelfGott .....................................................................................575.Madison.Avenue,.New.York,.NY..10022-2585PHiliP s. JoHnson .......................................................................One.Johnson.&.Johnson.Plaza,.New.Brunswick,.NJ..08933carl oPPeDaHl.....................................................................................................................P.O.Box.5940,.Dillon,.CO..80435KimBerly n. van voorHis.....................................................................................755.Page.Mill.Road,.Palo.Alto,.CA..94304

BULLETIN.

OFFICERS 2010 – 2011

in this issue.. .

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

Introduction ......................................................................................................................................................3President’s Page ..............................................................................................................................................5Board of Directors Meeting Dates ...................................................................................................................13

Association Activities ..................................................................................................................................14Membership Applications.................................................................................................................................14

Future Meetings Calendar ...............................................................................................................................32News of Members ...........................................................................................................................................34C.L.E. Update .................................................................................................................................................35Copyright Office Affairs ....................................................................................................................................39Thank You to Sponsors ...................................................................................................................................45 Photo Pages ....................................................................................................................................................47

Committee Reports:Alternative Dispute Resolution ........................................................................................................................60Amicus .............................................................................................................................................................61Anti-Counterfeiting and Anti-Piracy..................................................................................................................61Antitrust ...........................................................................................................................................................61Biotechnology ..................................................................................................................................................62Chemical Practice............................................................................................................................................63Copyright Law..................................................................................................................................................64Corporate Practice...........................................................................................................................................64Diversity in IP Law ...........................................................................................................................................65Education.........................................................................................................................................................65Electronic and Computer Law .........................................................................................................................67Emerging Technologies ...................................................................................................................................71Fellows ............................................................................................................................................................72Industrial Designs ............................................................................................................................................72International and Foreign Law .........................................................................................................................73International Education ....................................................................................................................................73International Trade Commission (ITC).............................................................................................................74Inventor Issues ................................................................................................................................................75IP Law Associations .........................................................................................................................................75IP Practice in Europe .......................................................................................................................................76IP Practice in the Far East ...............................................................................................................................76IP Practice in Japan .........................................................................................................................................77IP Practice in Latin America .............................................................................................................................77Law Practice Management ..............................................................................................................................77Law Students ...................................................................................................................................................78Licensing and Management of IP Assets ........................................................................................................78Membership .....................................................................................................................................................79Mentoring.........................................................................................................................................................79Online Programs..............................................................................................................................................80Patent Agents ..................................................................................................................................................82Patent Law.......................................................................................................................................................82Patent Litigation ...............................................................................................................................................84Patent Relations with the USPTO ...................................................................................................................84PCT Issues ......................................................................................................................................................85Professional Programs ....................................................................................................................................86Professionalism and Ethics .............................................................................................................................87Public Appointments ........................................................................................................................................87Public Education ..............................................................................................................................................87Special Committee on the FDA .......................................................................................................................89Special Committee on Genetic Resources, Traditional Knowledge, and Folklore...........................................90Special Committee on National IP Practitioner Associations Worldwide ........................................................91Special Committee on IP Practice in China .....................................................................................................92Special Committee on Legislation ...................................................................................................................93Special Committee on Mergers and Acquisitions ............................................................................................93Special Committee on National IP Practitioner Associations Worldwide .........................................................94Special Committee on Standards and Open Source .......................................................................................95Trade Secret Law ............................................................................................................................................96Trademark Internet ..........................................................................................................................................97Trademark Law ................................................................................................................................................98Trademark Litigation ........................................................................................................................................99Trademark Treaties and International Law ....................................................................................................100Trademark-Relations with the USPTO ..........................................................................................................100USPTO Inter Partes Patent Proceedings ......................................................................................................100Women in IP Law ..........................................................................................................................................101Young Lawyers ..............................................................................................................................................102

president’spageby:.David W. Hill,.AIPLA.President

It has been an extremely busy time for AIPLA over the last several months, and I am pleased to provide this report of

some of the many ways this association has been serving you. Member Services:

New AIPLA Website Rollout - If you have not yet visited the new AIPLA website, please take a minute to check it out. It provides a much improved display and a more user-friendly interface for members, and gives the association tremendous flexibility for future expansion of the site. Among the enhancements to the site are:

• Robust site search• Helpful tabs featuring website highlights, makes navigation easier• Quick and easy access to AIPLA’s Career Center, ADR Registry, and the latest news in AIPLA

Reports• Revamped Committee website communities• Improved member center where you can update your profile, committee participation, and access

the online member directory• New “Learning Center” consolidates all of the educational offerings available through AIPLA

Mid-Winter Institute in Orlando - Our Mid-Winter Institute took place in Orlando, Florida from February 2-5 at the Peabody Hotel. Despite many travel challenges created by bad weather in various parts of the country, we had an excellent turnout for the meeting, and those in attendance enjoyed the great program put together by our Officer-in-Charge, Bill Barber and his planning committee. Special thanks are due to the Chair, Kevin Tottis, his able Vice-Chairs, Kieran Doyle and Marc Hubbard, and Cathleen Clime, our staff Director of Meetings and Programs, as well as the entire planning committee. One of the many highlights of the meeting included the fantastic luncheon program featuring NASA Astronaut, Dr. David E. Wolf, who guided the audience through some of the training and several space shuttle and Mir missions in which he had participated. His video presentation and candid remarks resulted in one of the largest and most-sustained ovations of any AIPLA luncheon speaker in many years. We also had another “table-talk” luncheon, similar to the one we introduced two years ago at the Spring meeting in San Diego, where attendees could choose from an array of topics and sit with others to discuss their chosen area of interest.

2011 mid-winter institute issue aipla bulletin 3

Our committees provided their usual wide variety of excellent programs which attracted keen interest. We especially thank the many companies and firms who contributed to the Mid-Winter Institute as sponsors.

U.S. PTO Design Day - On April 5, AIPLA co-sponsored with the USPTO, AIPLA, IPO, ISDA and the ABA Section of Intellectual Property Law. This program brought together USPTO Management and Examiners, Design Patent Practitioners and industrial designers from across the country for a lively and thought provoking discussion on current issues in Design Patent Law. Topics included the critical role that US Design Patent Applications play in a global patent strategy, design appeals before the Board of Patent Appeals and Interferences, as well as how recent trends in industrial design will impact design patent prosecution and defense.

Women in IP Law Dinners - On May 4, AIPLA again hosted a series of dinners around the country organized by our dynamic AIPLA Women in IP Law Committee. This year, dinners took place in more than 23 cities on the same date, and we had a very large turnout of participants. Check our website for details.

Spring Meeting in San Francisco, May 12-14 - This week we will host our spring meeting in San Francisco from May 12-14, 2011. If you have not yet registered, you can still register on-site. This meeting promises to be another great one, with programs in the areas of patent damages, USPTO practice, trademark best practices, appellations of origin, a mock hearing on jurisdiction and venue issues, international agreements, ACTA, trade secrets, ITC, bankruptcy, attorney billing, the Google book settlement, and much more. Additional committee educational programs and meetings, numerous networking social opportunities, and a wonderful venue in San Francisco make this a meeting you should not miss.

Advocacy:

U.S. Patent Law Reform - The continuing progress of the efforts toward passing patent reform legislation have been a major focus of AIPLA since the Annual Meeting in October. The new 112th Congress wasted no time in addressing this issue, with very prompt hearings and a unanimous vote by the Senate Judiciary Committee. Following weeks of intense work by our Executive Director, Todd Dickinson and our Deputy Executive Director, Vince Garlock, and a vigorous debate on the Senate floor, the Senate passed S. 23 by an overwhelming margin of 95-5 on March 8. During the final days before the Senate vote, AIPLA utilized its Capwiz system to provide a vehicle for members to easily contact their Senators and urge their support of the bill. This resulted in more than 530 communications by our members to Senators in more than 33 states at a critical point in the Senate debate. Our

president’spage(continued)

4 aipla bulletin 2011 mid-winter institute issue


Executive Director also was asked to twice brief Senate staff members on key issues in the bill in the days leading up to its passage.

The focus has now shifted to the House of Representatives, where hearings have recently been held, and a bill (H.R. 1249) that largely tracks the Senate-approved bill, was approved by the House Judiciary Committee on April 14 by a vote of 32-3. The debate in the House promises to be interesting, particularly in the areas where the House bill differs from the Senate version. Your AIPLA Board is considering the legislation carefully in light of its prior resolutions and positions, and we will continue to seek passage of a law that best represents the interests of our members at-large. Given the momentum which has been established by the Senate’s strong action, and the numerous public pronouncements and the strong bi-partisan support in the House Judiciary Committee, it seems highly likely that a bill will be passed in the coming months.

Amicus Activity - AIPLA continues to have a busy year in the area of amicus brief filings, ably led by Ed Reines and Jerry Selinger, the Chair and Vice-Chair of the Amicus Committee, respectively. The Federal Circuit’s April 20, 2011 decision in TiVo, Inc. v. EchoStar Corp. vindicated most of the positions stated in our amicus brief. In that case, the Court streamlined the process for finding contempt and stressed that the focus of the determination on an attempted design-around should be the features initially found to be infringing. Other cases in which AIPLA participated are discussed below:

On February 2, 2011, AIPLA filed an amicus brief in the Supreme Court case of Microsoft Corp. v. i4i Limited Partnership, where Microsoft argued that evidentiary standard for proving a patent invalid should be “a preponderance,” rather than “clear and convincing” evidence. AIPLA argued that the clear and convincing standard applies as a judicial rule of evidence, following a position previously stated in AIPLA’s response to an FTC report and based on 150 years of practice. The highlight of the April 18, 2011 oral argument was Justice Breyer’s express reference to the AIPLA amicus brief as presenting a potential solution to issue. This is second time in the last year that he cited our brief in oral argument, doing so first in Costco.

We filed an amicus brief in the Supreme Court case of Board of Trustees for Leland Stanford Junior University v. Roche Molecular Systems, Inc., where the issue is whether a federal contractor university’s rights in inventions arising from federally funded research under the Bayh-Dole Act, 35 U.S.C. §§ 200-212, can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor’s rights to a third party. In this case we supported neither side but argued that the Bayh-Dole Act did not change the traditional rule that patents issue initially to the person named as an inventor, and that, without a proper assignment, the funded institution has no patent rights to convey to the government.


An AIPLA Supreme Court amicus brief was also filed in Global-Tech Appliances Inc. v. SEB S.A., on January 3, 2011. In its brief supporting the respondent, AIPLA argued that liability for inducing infringement does not require that the inducer know of the patent violated, and that the Federal Circuit incorrectly inferred that requirement from the Supreme Court’s copyright decision in Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd. This case was argued before the court on February 23, 2011.

In addition to these Supreme Court cases, AIPLA filed a Federal Circuit amicus brief in Association for Molecular Pathology v. Myriad Genetics, Inc. In this brief, filed on October 29, 2010, AIPLA argued that purified and isolated DNA molecules and methods of using them for diagnosing increased cancer risk are eligible for patent protection under 35 U.S.C. §101. The brief urges reversal of a summary judgment finding that the product claims in the patent are directed to products of nature and that the method claims in the patent are directed to abstract ideas. Oral argument took place on April 4, 2011.

We are awaiting decisions in several other cases in which AIPLA filed amicus briefs, including Beer v. United States (judicial compensation); Therasense, Inc. v. Becton, Dickinson and Co. (basis for a finding of inequitable conduct); and Viacom Int’l v. Youtube, Inc. (safe harbor provisions of the DMCA). The committee is actively monitoring pending cases for additional opportunities for AIPLA involvement, and one further amicus brief is now in preparation.

Comments to Government and Administrative Authorities - Advocacy before US and other government agencies, and administrative authorities is one of AIPLA’s most important services to its members. An extraordinary number of comments and other submissions to government agencies and administrative authorities were generated in the past few months. Below are listed some of the more important of these submissions, all of which depended on the hard work of relevant committees, AIPLA staff, and the Board of Directors.

1. AIPLA Recommendations regarding Nomination of Judges to the United States Court of Appeals for the Federal Circuit, available on AIPLA website.

2. AIPLA Response to USPTO “Request for Comments on Trademark Litigation Tactics”, January 7, 2011

3. AIPLA Comments to USPTO on the Bose Roundtable Suggestions to Improve the Accuracy of Identifications of Goods and Services in Trademark Applications and Registrations at the USPTO, January 12, 2011

4. AIPLA Response to USPTO on Request for Comments regarding “Proposed Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals”, January 14, 2011




5. AIPLA Response to USPTO on Request for Comments regarding “Examination Guidelines Update: Developments in the Obviousness Inquiry after KSR v. Teleflex”, 11 February, 2011

6. AIPLA Comments on Standardization Feedback for Sub-Committee on Standards to Dr. Patrick D. Gallagher, Director, National Institute of Standards and Technology, and Co-Chair, National Science and Technology Council’s Sub-Committee on Standards, February 18, 2011

7. Response to USPTO regarding Request for Comments on Changes to Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures, March 7, 2011

8. AIPLA Letter to Ms. Julie Dennett, Committee Secretary, Australia Senate Legal and Constitutional Committee regarding Inquiry into The Patent Amendment (Human Genes and Biological Materials) Bill 2010 of the Legal & Constitutional Affairs Legislation Committee, 15 March 2011

9. AIPLA Comments to WIPO Circular C. PCT 1288 Concerning the Development of a PCT Third Party Observation System, March 24, 2011

10. AIPLA Comments to USPTO regarding “Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications”, April 11, 2011

Global Outreach:

Asia Pacific Cooperation in the 21st Century Program - On March 7-8, the USPTO hosted a program for the patent offices of the Asia-Pacific Economic Cooperation (APEC) countries aimed at issues of patent harmonization. In advance of this program, on February 22, AIPLA hosted an industry meeting at our office to review and discuss a report prepared by a panel of international experts on the topic of patent harmonization for the PTO program. Comments of the representatives at our meeting on the report were then shared with the Director of the USPTO for consideration in the context of preparation for the APEC program.

In addition, AIPLA hosted a dinner on March 7 for the delegates attending the APEC program at the original patent office in the National Portrait Gallery. Chief Judge Randall Rader of the Court of Appeals for the Federal Circuit was the dinner speaker, and the attendees, which included the heads of most of the APEC intellectual property offices and Director Kappos, expressed their appreciation to AIPLA for hosting the dinner.

USPTO Roundtable on the Procurement and Enforcement of Utility Model and Design Patents in China - On March 29, AIPLA and the Global IP Academy of the USPTO hosted a half-day program to explore the issues and problems related to the procurement and enforcement of design patents and utility models in China. The success of this program was a result of the hard work of a number of members, including Manny Schecter, Skip Fisher, Tom Moga, and Mark Cohen.



IP Practice in Europe Trip - From February 27 to March 5, the AIPLA IP Practice in Europe Committee made its annual trip to Europe, visiting four countries in five days. The Chartered Institute of Patent Agents hosted a dinner in London on February 27, followed by a meeting and lunch on February 28. The delegation then moved to Paris, where it met with CNCPI (Compagnie Nationale des Conseils en Propriete Industrielle—National Company of Industrial Property Advice) on March 1. The following day, March 2, the group moved to Munich and met with the Patent Attorneys Association (Patentanwaltskammer), and EPI, the organization of European Patent Attorneys. On March 3, the delegation visited the EPO, where they observed an EPO Opposition hearing, and had lunch and a briefing by EPO representatives. Later in the day, a meeting was held with GRUR, a German attorneys association, which also hosted a dinner that evening. Finally, on Friday, March 4, the group travelled to Milan and participated in a symposium with AIPPI Italy, followed by a dinner with them. At each of these meetings, members of the AIPLA delegation gave presentations on relevant topics of US IP law, selected by each organization, and also heard updates on important issues of European and related national practices. The presentation materials are available on the AIPLA committee website.

Meeting with Jesper Kongstad, Chair of Administrative Council of EPO - On March 10, Mr. Jesper Kongstad, the Director General of the Danish Patent & Trademark Office and also the Chair of the Adminstrative Council of the EPO, visited AIPLA headquarters in Arlington to meet with your President and Executive Director. A wide ranging discussion of issues was held, including a review of the US patent reform efforts, recent changes in EPO practice, and prospects for a European Union Patent and European Patent Court.

FICPI EXCO Meeting - From March 13-17, your President attended the Executive Committee meeting of the International Federation of Intellectual Property Attorneys (FICPI) in Cape Town, South Africa, as a invited guest of FICPI. This organization of practitioners from many countries has a significant agenda of important IP issues that are being studied, and it has gained much influence throughout the world for its educational programs and other initiatives. AIPLA was privileged to be asked to participate as an observer in this important organization.

ASIPI-INTA Program - AIPLA Deputy Executive Director Vince Garlock attended a program sponsored jointly by Inter-American Association of Intellectual Property (ASIPI) and the International Trademark Association (INTA) from March 19-21 on the topic “Trademarks in the Sports and Entertainment Worlds: The Business of Making Money.” This important subject was especially relevant in view of the planned World Cup Soccer Tournament in Brazil in 2014, and AIPLA appreciated the opportunity to participate in this program.

IPTA Annual Meeting - At the invitation of the Institute of Patent and Trademark Attorneys of Australia (IPTA), your President attended the annual meeting of this association from April 6-10. A full agenda



of topics, including sessions on the protection of traditional knowledge and folklore, ICANN changes, and recent changes in Australian IP laws and procedures were included in the program.

Network of National IP Practitioner Associations - Following up on the progress made last year in organizing a new network of national IP practitioner associations for the exchange of information, education and best practices, plans are now underway for the third meeting of this group to be held in Rome on November 9, 2011. AIPLA is participating on the Steering Committee of this network, where Alan Kasper, our immediate past president, currently serves as chair.

Public Education:

World IP Day Program - One of AIPLA’s important strategic goals is to help educate the public about the daily value of intellectual property so that its importance is understood and appreciated. In furtherance of this goal, our Public Education Committee, lead by Evelyn McConathy, cosponsored a World IP Day program on May 5, 2011 with the USPTO and WIPO. The program featured a cast of luminaries as speakers, including House Judiciary Committee Chairman Lamar Smith, Commerce Secretary Gary Locke, US Trade Representative Ambassador Ron Kirk, USPTO Director David Kappos, WIPO Deputy Director General for Patents James Pooley, and our own Executive Director Q. Todd Dickinson.

Membership - In my last President’s Page report, I asked for your help to reach out to your colleagues and friends, your foreign associates, and your clients to tell them about AIPLA. Your efforts have had some significant results, but we still need your help to maintain and expand our membership roles. Our membership categories were expanded in the last several years, so US and foreign patent and trademark agents, and patent and trademark offices professionals can now join. Please continue to encourage your colleagues and friends to take advantage of membership in this great organization!

Active Involvement - As you can see from the above report, your association is extremely active at this important time in the intellectual property community. We need you to help with the many initiatives that are on our agenda, and I encourage you to come to our meetings, participate in our committees, and offer your assistance to those in leadership positions. I assure you that we welcome your interest and help, and that you will benefit from the opportunities to work on interesting issues, speak for committees and other audiences, and lend your expertise to the work of the association.


Inequitable Conduct and the Federal Circuit: Where are We Now?Wednesday, June 1, 2011 12:30 - 2:00 pm eastern *limited ethics credits available*

Course Description: The State of the Inequitable Conduct: The Federal Circuit’s Review of Therasense, Inc. v. Becton, Dickinson and Co. Why Attend?The doctrine of inequitable conduct is in dire need of clarification as the standard for proving inequitable conduct has varied over time in the Federal Circuit’s case law, making the standard unclear for quite some time. This uncertainty has spurred concern among patent holders because they can never be certain whether they are protected from a claim of inequitable conduct. The purpose of the inequitable conduct doctrine is to render patents that were attained in an improper manner unenforceable. Materiality and intent are two factors that must be proven in an inequitable conduct proceeding; however, the exact standard of materiality and intent remains unclear.

This timely and fascinating program will discuss the current state of the Inequitable Conduct Doctrine. This program will explore:• What is inequitable conduct? • The Facts of Therasense, Inc. v. Becton, Dickinson and Co. • The Materiality Standard• The Intent Standard• Can intent be found based upon materiality?• Should patent law look to common law or federal agency law?• What are the implications of the inequitable conduct doctrine?

Presented By:Felicia J. Boyd, Barnes & Thornburg LLPJonathan M. Sobel, Sobel & Feller LLP

CLE Information: Please visit us online for complete information regarding CLE:http://www.aipla.org/learningcenter/live_webinars/Pages/default.aspx#Inequitable

* please note, topics are subject to change*

For more information, Check our website: www.aipla.org or call: 703.415.0780

2011upcoming online program

AIPLA


2011Meeting Dates

board ofdirectors

Wednesday, July 13, 2011Board Meeting

AIPLA HeadquartersArlington, VA

Friday, September 16, 2011Board Meeting

Jackson Hole, WY

Wednesday & Saturday, October 19 & 22, 2011Board Meeting

Marriott Wardman ParkWashington, DC


http://www.fitzpatrickcella.com

association activities

MembershipThe following applications for membership are being published in accordance with Article II of the By-Laws. We welcome all of our new members.

REGULAR

James AckleyGolden Valley, MN

Dariush G. AdliLos Angeles, CA

Edmund Jason AlbertRedmond , WA

Beth E. ArnoldBoston, MA

Michael AutuoroNew York, NY

Amelia Feulner BaurCambridge, MA

William D. BelangerBoston, MA

Esther Lois BellKnoxville, TN

Taras BemkoGifu City, Japan

Grady K. BergenDallas, TX

James J. BindseilWashington, DC

Eric M. BramPoughkeepsie, NY

Elizabeth Rogers BrannenRedwood Shores, CA

Kahleen BrickenPortland, OR

Michael J. BridgesBellevue, WA

Karen BruceResearch Triangle Park, NC

Steve P. CahnRoslyn Heights, NY

Jennifer C. ChenSan Francisco, CA

Teresa ChenPrinceton , NJ

Theodore J. ChiacchioChicago, IL

Kenneth Y. ChoyHong Kong, Peoples’ Rep. of China William B. ClemmonsMemphis, TN

Richard C. ConoverBozeman, MT

Bradley W. CrawfordChicago, IL

Janet CraycroftSanta Clara, CA

Charlette M. CrissmanLos Angeles, CA

John CrosettoSeattle, WA

Jason Lee De FrancescoBradenton, FL

Karen DeBenedictisEast Hanover, NJ

James DelanisNashville, TN

Julianna DeligansOklahoma City, OK

John D. DellingerAlexandria, VA

Joel DionPhiladelphia, PA

David F. DockeryDenver, CO

Andrew N. DownerChicago, IL

Robert M. DowneyBoca Raton, FL

James R. DubyEast Lansing, MI

Danielle EdwardsSilver Spring, MD

Mark R. FeldhausSaint Louis, MO

Darla P. FonsecaSugar Land, TX

Lionel J. FrankLawrenceville, NJ

Martha FrankelWarwick, RI

Jennifer FraserWashington, DC

Barbara FriedmanRockville, MD

Kristin J. FrostSaint Louis, MO

Giles GalahadEl Paso, TX

Sean D. GarrisonPhoenix, AZ

Jason T. GaskillSarasota, FL

Christopher N. GeorgeChicago, IL

Peter GratzingerLos Angeles, CA

Casey GriffithDallas, TX

Horacio E. GutierrezRedmond , WA

Richard P. HadornMcLean, VA

Jeffrey T. HanAustin, TX

Robert E. HansonDallas, TX


Stephen D. HarperPaoli, PA

Erin Marie HarrimanBethesda, MD

Linda L. HarrisSaint Louis, MO

Kevin M. HartHouston, TX

Joseph F. HetzChicago, IL

Tanya De La Fuente HollandMilpitas, CA

Dennis Matthew HolmgrenDallas, TX

Dewayne A. HughesTelford, PA

William Gary JamesWashington, DC

LaRhonda JeffersonNew Orleans, LA

George W. JonasSan Jose, CA

Cynthia L. KanikBoston, MA

Ellen J. KapinosSouth Hadley, MA

Barry E. KaplanAtlanta, GA

Catherine J. KaraSanta Cruz, CA

Adam R. KellyPortland, OR

Eric L. KillmeierLouisville, KY

David L. KinsingerGreenville, TX

Sean M. Kneafsey Los Angeles, CA

Michael A. KrolChicago, IL

Joseph KucalaChicago, IL

Eric LambIndianapolis, IN

Steven LautNorco, CA

Simona A. LeviMarblehead, MA

Leana LevinYork, PA

Christopher R. LewisValley Forge, PA

Jason LindhReno, NV

Constance LindmanIndianapolis, IN

Chris LonegroCrofton, MD

Theodore P. Lopez Santa Rosa, CA

Joseph MallonIrvine, CA

Karen MangasarianNew York, NY

Annette L. MartinMinneapolis, MN

Elana Sabovic Matt Bellevue, WA

Frederick W. MauAnn Arbor, MI

Gregory L. MaybackFort Lauderdale, FL

James M. McAleenanCambridge, MA

William J. MccabeNew York, NY

John W. McGlynnWilmington, DE

Richard P. McGuire Union, NJ

Brian C. MeadowsAtlanta, GA

Malcolm T. MeeksCrofton, MD

Stefan MentzerNew York, NY

Jeffrey A. MillerRedwood City, CA

Adam C. MishconRedwood City, CA

Ralph A. MittelbergerWashington, DC

Donald F. MoffrodCanton, MA

Robert W. Morris New York, NY

Bradley P. NelsonChicago, IL

Elizabeth A. O’BrienMansfield , MA

Stasia L. OgdenDeerfield, IL

Keum ParkLafayette, CA

Amy PearsonGlenview, IL

Louis PerryIndianapolis, IN

Antigone PeytonArlington, VA

Jill PierardSt Louis, MO

Janet A. PioliChicago, IL

Stephen J. PresuttiAkron, OH

Sasha G. RaoPalo Alto, CA

Jessica H. K. RauckmanSt. Paul, MN

Georg ReitboeckNew York, NY

Michael T. RenaudBoston, MA

Katharine R. RiceChicago, IL

Scott Charles RichardsonQuincy, IL

Joseph RichettiHolbrook, NY

Chris RiesTuckahoe , NY

Paul Ripp Chicago, IL

Erick RobinsonRaleigh, NC

Kurt A. RohlfsPortland, OR

Paul M. SaraceniSan Francisco, CA

Dennis S. SchellIndianapolis, IN

Joel Mark SchoenfeldStamford, CT

Bryan A. SchwartzCleveland, OH

Nicholas SeayMadison, WI

Steven M. SelnaSan Francisco, CA

Taylan K. SenBuffalo, NY

Barton E. ShowalterDallas, TX

Edward SiegelIrving, TX

Donald J. SilvertNorthbrook, IL

Peter J. SistareWashington, DC


Billie Jean SmithMilwaukee, WI

Michael SmithPalo Alto, CA

Amy Beth SpagnoleDelray Beach, FL

Michael C. SpillnerMenlo Park, CA

Elizabeth StaplesArlington, VA

Jackquelyn StricklandDallas, TX

Amy Sun Carlsbad, CA

Kara SzpondowskiChicago, IL

Rouz TabaddorSanta Ana, CA

Monica Riva TalleyWashington, DC

Manu J. TejwaniBellevue, WA

Robert D. TousleeLittleton, CO

Guy Kevin TownsendLakewood, CO

Thomas J. TreutlerHanoi, Vietnam

Katherine W. UmplebySan Diego, CA

Glenn E. Von TerschBelmont, CA

Kevin G. WaddickMinneapolis, MN

George Fairchild WallaceCape Coral, FL

James M. WarnerSan Francisco, CA

Mark Alan WatkinsAkron, OH

Jonathan A. WithrowWilloughby, OH

Douglas J. WolinskyBurlington, VT

Bryan A. WongMinneapolis, MN

Alan A. WrightGreat Falls, VA

David ZdurneYork, PA

ACADEMIC

Deidre A. FrancisAda, OH

Steven G. KroneLos Angeles, CA

Christian E. MammenSan Francisco, CA

Brett Allen ReylanderGrays, Essex, United Kingdom

FOREIGN

Tehemtan N. DaruwallaMumbai, India

Joaquim BallesOntario, Canada

David ColbTel-aviv, Isreal

Declan Cushley Birmingham, England

Mark DanielsBirmingham, England

Subhra Sankar DattaKolkata, India

Francois Delumeau Paris, France Elena DmitrenkoSt. Petersburg, Russia

Matthew English Singapore, Peoples’ Rep. of China

Huw EvansLondon, England

Jennifer FajelagutanBonafiacio Global City, Phillipines

Nancy GutierrezMexico City, Mexico

Michael HartigMunich, Germany

Yoshickika InoueNagoya, Japan

Anne Mariae Cel Vios JumadlaMakati City, Phillipines

Chong Yee KhooSingapore, Peoples’ Rep.of China

Reinhard KnauerMunich, Germany

Rajendra KumarGurgaon, India

Sam LiNanjing, Peoples’ Rep. of China

Dong Liu Quebec City, Canada

Hector Ariel ManoffBuenos Aires, Brazil

Armando MeridaGuatemala City, Guatemala

Ana Isabel MessinaSanto Domingo, Dominican Republic

Arun Chalam MohanChennai, India

Annick PairaultParis, France

Kenneth PhilpQueensland, Australia

Clint SmallmanLondon, England

Junichiro YanagiTokyo, Japan

GOVERNMENT

Retford O. BerkoForestville, MD

Clark S. CheneyWashington, DC

Virginia De La PuenteBerkeley, CA

Eric S. FrahmFalls Church, VA

William G. FrenchWaco, TX

Leonard T. Guzman Berkeley, CA

Jeffrey David LukaszykMorristown, NJ

Jonathan Grant MortonWashington, DC

William Rivera-PaleoBayamon, PR

William J. StoffelAlexandria, VA

Bruce R. WinsorAlexandria, VA

Rosamond XiangArlington, VA

JUNIOR

Taniel E. AndersonWashington, DC

Umar ArshadReston, VA

Yiu AuColorado Springs, CO

Will Charles AutzNew York, NY

Tony BaconSt. Joseph, MI

Frank BednarzBoston, MA


Christopher H. BlaszkowskiValley Forge, PA

Jeremy P. BondCambridge, MA

Jim BowmanRichmond, VA

Robert BranhamSan Antonio, TX

Logan BuckDurham, NC

Kimberly S. BursumSarasota, FL

John Michael BusinoAlplaus, NY

Nicholas CadmusHopewell Junction, NY

Jason Robert CampbellOsaka, Japan

Amanda Jean Carmany-Rampey Seattle, WA

Christopher Matthew CaubleHouston, TX

Christopher Y. ChanWashington, DC

Yong ChenNew York, NY

Linnea P. CiprianoNew York, NY

Ryan W. CobbCarson City, NV

Daisy Danielle ColemanSan Francisco, CA

Kyle S. ColemanDes Moines, IA

Crissa A. CookOverland Park, KS

Jared W. CropPhoenix, AZ

Joseph A. CuligChicago, IL

Dan CustodioRoseville, CA

Neeta DagaChicago, IL

Sandhya DeoWashington, DC

Michael J. DonovanPhoenix, AZ

Charles S. DuanIrvine, CA

Sarah C. DukmenPhiladelphia, PA

Sandon M. Duncan Portland, OR

Andrew Lawson DunlapClarksburg, MD

Gretchen A.M. EckChicago, IL

Benjamin Edlavitch Deerfield, IL

William R. Everding Saint Louis, MO

Rebecca FettNew York, NY

Benjamin E. FullerDoylestown, PA

Darcy L. GrunwaldSt. Paul, MN

Paul M. GurzoVienna, VA

Albert HaegeleCentennial, CO

Colby M. HansenConcord, NH

Phillip A. HarrisRaleigh, NC

Jared HarshbargerMarion, IA

Diana Ho Phoenix, AZ

Donald Kenneth HobdayDublin, OH

Benjamin J. HodgesSt. Louis, MO

Maria HokeAvon Lake, OH

David W. HopkinsSterling, VA

Jason S. IngermanForest Hills, NY

Robert A. JefferisCleveland Heights, OH

Mukta JhalaniPalo Alto, CA

Shazi JiangNashville, TN

Clara N. JimenezCambridge, MA

Paul KangReston, VA

Rajit KapurWashington, DC

Kelley Clements KellerCarlisle, PA

Harleen KhanijounToronto, ON, Canada

Maja KieturakisLos Altos Hills, CA

Jamie KitanoPalo Alto, CA

Karen Chuang KlineBoca Raton, FL

Holly LanceWashington, DC

Andrew C. LandsmanMilwaukee, WI

Christopher Lyle LarsonDenver, CO

Monique LeeHong Kong, Peoples’ Rep. of China

Barry R. LewinNew York, NY

Agatha H. LiuNew York, NY

Brent LorentzMinneapolis, MN

Kennedy LuvaiBoise, ID

Daniel MaffeoSioux Falls, SD

Timothy D. Mainzer Seattle, WA

Mark D. MarsdenSan Diego, CA

Michael D. Marston South Bend, IN

Matthew J. MayChicago, IL

Kelly McClellanPalo Alto, CA

Alison S. McGearyResearch Triangle Park, NC

Carol A. McKeeverPearl River, NY

Lisa A. MeadWayne, PA

Seema MehtaHouston, TX

Richard L. MertlNew York, NY

Ameet A. ModiNew York, NY

Leonard A. MonfredoNew York, NY

Robert Ryan MortonArlington, VA

Jayanti MuliyilOakland, CA

Daniel NadelWashington, DC


Timothy D. NicholsSalt Lake City, UT

Keith B. O’DohertyWashington, DC

Frances PaiSan Francisco, CA

Ryan N. PhelanChicago, IL

Edward S. PlattNew York, NY

Thatcher RahmeierWilmington, DE

Derek RollerBoston, MA

Evan M. RosenbaumNew York, NY

Rehan M. SafiullahHouston, TX

Laurence M. SandellWashington, DC

Eric ScheuerleinLos Gatos, CA

Stephanie L. SchonewaldWashington, DC

Margaret Anne ScoolidgeNew York, NY

Nawshaba M. SiddiqueeGolf, IL

Saqib SiddiquiAlexandria, VA

Shannon L. SilversmithTopeka, KS

Alexis SimpsonAtlanta, GA

Rebecca A. SmirkIselin, NJ

Bridget SmithIrvine, CA

Dana StangelWestminster, CO

Jason R. SwartzIrvine, CA

Jason R. SytsmaCedar Rapids, IA

Ashley TanNew York, NY

Wenye TanVienna, VA

James H. VelemaQuincy, MA

Chandrika ViraNew York, NY

Tatyana VoloshcukStamford, CT

Joseph M. WalkerBoston, MA

David WallacePalo Alto, CA

Abhay A. WatweVienna, VA

Linda WuestehubeLafayette, CA

James WyninegarMineola, NY

Tsz Lung YeungRosemead, CA

Christopher ZhangCupertino , CA

PATENT AGENT

Katherine S. BoyleStillwater, MN

Stacy H. CombsOakland, CA

Mengmeng FahrniAtlanta, GA

Brian C. GencoPlano, TX

Joan C. HarlandOakland, CA

Thomas J. LavanLongmont, CO

David M. MasonSan Jose, CA

Jonathan P. MitchellNew York, NY

PATENT AGENT - JUNIOR

Michael T. BarberHamilton, NJ

Derek BarnettChicago, IL

Brian BaxterWashington, DC

Shing-Yi ChengWashington, DC

Justin E. CoeTucson, AZ

Robert A. EspositoPhiladelphia, PA

Richard M. HannaPikesville, MD

William G. HeedyBoca Raton, FL

George M. HutchinsonSan Antonio, TX

Peter M. JarvisHighlands Ranch, CO

Byeongju ParkPlainview, NY

Artie Atwell PenningtonBee Cave, TX

Erik William PerezWilmington, DE

Michael Sungjoon PioHouston, TX

Mark SprinkleYork, PA

Ty TaitchSpokane, WA

Thomas H. WallsPhiladelphia, PA

John ZabilskiColumbus, OH

USPTO - PROFESSIONAL

Pablo S. HuertaWashington, DC

Paul MasurAlexandria, VA

Toyomi OharaPhiladelphia, PA

STUDENTS

Addie AbelsonMechanicsburg, PAPennsylvania State University,Dickinson School of Law

Adil AhsanuddinBuffalo, NYState University of New York atBuffalo School of Law

Lucas AmodioBloomington, INIndiana University School of Law, Bloomington

George C. AtkinsSan Jose, CASanta Clara UniversitySchool of Law

David J. BeardallMoscow, IDUniversity of Idaho College of Law

Kimberly Louise BerkowskiChicago, ILNorthwestern UniversitySchool of Law

Alison BesserLudlow, KYUniversity of CincinnatiCollege of Law


Kimberly D. BraslowWashington, DCUniversity of MarylandSchool of Law

Laura M. CamusPittsburg, PADuquesne UniversitySchool of Law

Molly F. ChenNashville, TNVanderbilt UniversitySchool of Law

Tony Tou-Jen ChenPalo Alto, CAUniversity of San DiegoSchool of Law

Cheryl CheungWashington, DCGeorge Washington UniversityNational Law Center

Devin ChidesterMount Pleasant, SCCharleston School of Law

Calmann J. ClementsArlington, VAGeorge Washington UniversityNational Law Center

Tandi L. CollissonSeattle, WAUniversity of San DiegoSchool of Law

Ypsita Demunshi Washington, DCGeorge Washington University National Law Center

Tony DonnesHonolulu, HIUniversity of HawaiiLaw School

Tanya DunbarOakland, CAUniversity of California,Hastings College of the Law

Joseph M. EllsworthOklahoma City, OKOklahoma City UniversitySchool of Law

Jennifer FassettAnn Arbor, MIThomas M. Cooley Law School

Alfredo Gabriel FernandezWest Hartford, CTUniversity of ConnecticutSchool of Law

Daniel Aaron FleisherNewton, MANortheastern UniversitySchool of Law

Mathew GardlikColumbus, OHCapital University Law School

Karin M. GerstinSan Diego, CAUniversity of San DiegoSchool of Law

Nelson GiddinsGainesville, FLUniversity of FloridaCollege of Law

Daniel Robert GopenkoPotomac, MDGeorge Washington UniversityNational Law Center

Thomas M. GroveYorktown Heights, NYPace University School of Law

Arnold GumSan Diego, CAUniversity of San DiegoSchool of Law

Li GuoRockville, MDGeorge Washington UniversityNational Law Center

Tony GuoMiami, FL University of Miami School of Law

S. Brei GussackPhiladelphia, PATemple University School of Law

Benjamin M. HaberLa Crescenta, CALoyola Law School

Keith HardenDallas, TXSouthern Methodist University, Dedman School of Law

Martin HayesWoodbridge, VAFranklin Pierce Law Center

Blake Patrick HurtGreensboro, NCWake Forest UniversitySchool of Law

William JacobsonMatthews, NCCharlotte Law School

Leslie Ann JaluriaTrumbull, CTPace University School of Law

Mark JansenPalo Alto, CASanta Clara UniversitySchool of Law

Brian JelinekSunnyvale, CAGeorge Mason UniversitySchool of Law

Michael KahelinAlexandria, VAGeorgetown University Law Center

Goutham KondapalliSunnyvale, CASanta Clara UniversitySchool of Law

Mart K. KuhnAlexandria, VAGeorge Washington UniversityNational Law Center

Ka Wah LeeFresh Meadows, NYUniversity of Buffalo Law School

Yun Haeng LeeAlexandria, VAGeorgetown University Law Center

Ziyong LiSeattle, WAUniversity of WashingtonSchool of Law

Adrianne LoSan Francisco, CAUniversity of California at DavisSchool of Law

John LunsfordMount Pleasant, SCCharleston School of Law

Justin MacyBloomington, INIndiana UniversitySchool of Law-Bloomington

James Joseph MauneChula Vista, CAUniversity of San DiegoSchool of Law

Tyler McAllisterSpokane, WAGonzaga University School of Law

Justin S. McAnallyLubbock, TXTexas Tech UniversitySchool of Law

Sean McBeathKeller, TXSouthern Methodist University, Dedman School of Law

Orchadia McLeanMiami, FLUniversity of Miami School of Law

Charles A. Meeker Bloomington, INIndiana University School of Law, Bloomington

Elizabeth Egasti MillerBrookfield, WIMarquette University Law School

Seth NelsonSan Francisco, CAUniversity of San FranciscoSchool of Law

Kenneth NewtonLos Angeles, CAUniversity of Californiaat Los Angeles School of Law


Tiffany Kim NgoSanta Clara, CASanta Clara UniversitySchool of Law

Amit PatelHoboken, NJNew York Law School

Pauline PelletierBaltimore, MDUniversity of MarylandSchool of Law

Jacob PetersonDavis, CAUniversity of California at DavisSchool of Law

Terence PhanOrange, CAChapman UniversitySchool of Law

Bryan Matthew QuinnReston, VAGeorgetown University Law Center

Rebecca L. RabensteinNew York, NYThe University of MichiganLaw School

Christopher D. ReavesGermantown, MDGeorge Washington UniversityNational Law Center

David A. RiegnerNaples, FLAve Maria School of Law

Carlos John RosarioSan Jose, CASanta Clara UniversitySchool of Law

Heather M. RosePhiladelphia, PADrexel University School of Law

Rhonda Sadler Macon, GAMercer University Law School

Diana SantosOzone Park, NYFordham University School of Law

Nicholas T. SantucciWashington, DCGeorge Mason UniversitySchool of Law

Camille SauerWest Hartford, CTUniversity of ConnecticutSchool of Law

Chris Ryan SchmidtSanta Clara, CASanta Clara UniversitySchool of Law

Jennifer SchroederSan Francisco, CAUniversity of California,Hastings College of the Law

Britten D. SessionsSan Jose, CASanta Clara UniversitySchool of Law

Sara SkulmanArlington, VAGeorge Mason UniversitySchool of Law

Andrew SmithBrooklyn, NYNew York Law School

Stannis M. Smith Baltimore, MD

Yon S. SohnDallas, TXSouthern Methodist University,Dedman School of Law

Camille A. Stewart Silver Spring, MDAmerican University,Washington College of Law

Brooks D. TuetingLaramie, WYUniversity of WyomingLaw School

Joseph P. VardnerSomerville, MAHarvard University Law School

M. WangShenzhen, Peoples’ Rep. of ChinaUCLA School of Law

Robert D. WellsWashington, DCGeorgetown University Law Center

Monique L. Winters San Diego, CAUniversity of San Diego

Erin C. WongWashington, DCNi YanGlen Mills, PAWidener University School of Law

Yi YaoSan Francisco, CAUniversity of California at DavisSchool of Law

Yirsroel S. Yellin Santa Clara, CASanta Clara UniversitySchool of Law

Hongbiao YuReston, VAUniversity of MarylandSchool of Law

Brandon V. ZunigaBrookline, MABoston University School of Law



http://www.henrygoh.com

http://eapdlaw.com

May 23-25International Judges Conference(IPO), Brussels, BE

June 4-8LESI Annual Conference, London, UK

June 10AIPLA Trademark Boot Camp, Hilton Alexandria Old Town Alexandria, VA

June 8-11ECTA 30th Annual Conference, Stockholm, Sweden

June 12-16FICPI ABC Meeting, Bath, UK

June 16-17AIPLA Legal Secretaries and Administrators Conference - Alexandria, VA, (703-415-0780)

June 19-21IP Business Congress/Hall of Fame, San Francisco, CA

June 23AIPLA Chemical Patent Practice Road Show--Prosecution and Litigation Strategies; Chicago Marriott Downtown; Chicago, IL

June 26-29ACPC Summer Meeting. Seattle, WA

July 13AIPLA Board Meeting, Arlington, VA

July 25-26AIPLA Patent Cooperation Treaty (PCT) Seminar, Arlington, VA; Hilton Alexandria Old Town; Alexandria, VA;

August 4-9 ABA Annual Meeting

August 4-9 ABA Annual Meeting, Toronto, Canada

August 16AIPLA Electronic & Computer Patent Law Summit; Minneapolis, MN

August 25-26AIPLA, Practical Patent Prosecution Training for New Lawyers (Patent Prosecution Boot Camp), Alexandria, VA;

September 11-13 IPO Annual Meeting, Los Angeles, CA (202/466-2396) www.ipo.org

September 14-16IPIC Annual Meeting, Chicago, IL

September 15-17AIPLA Board Retreat, Jackson Hole, WY

October 14-16AIPPI Forum & Executive Committee Meeting, Hyderabad, India

October 20-22 AIPLA Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

November 6-11FICPI ExCo and Open Forum, Rome Italy

November 8-12INTA Leadership Meeting, Miami, FL

November 12-13APEC Summit, Honolulu, HI

January 23-26 AIPLA Mid–Winter Institute, Ceasar’s Palace, Las Vegas, NV (703-415-0780)

future meetingscalendar

2011

2012


http://www.ipo.org/

April, Date TBD Design Day, cosponsored by AIPLA, ABA-IPL and IPO, at the USPTO, Alexandria, VA

April, dates TBD ABA-IPL Section Annual IP Conference (www.abanet.org/intelprop)

May 5-9 INTA Annual Meeting, Washigton, DC (www.inta.org)

May 10-12 AIPLA Spring Meeting, Hilton Austin, Austin, TX (703-415-0780)

July, dates TBD AIPLA Patent Cooperation Treaty Seminar (703-415-0780)

August, dates TBD AIPLA Patent Prosecution Boot Camp. Practical Patent Prosecution Training for New Lawyers. (703-415-0780)

September 9–11IPO Annual Meeting, San Antonio, TX (202/466-2396) www.ipo.org

October 20–24AIPPI World Intellectual Property Congress, Incheon, Rep. of Korea

October 25–27AIPLA Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

January 30– February 2AIPLA Mid–Winter Institute, Tampa Marriott Waterside Hotel & Marina, Tampa, FL (703-415-0780)

May 15–17AIPLA Spring Meeting, The Westin Seattle, Seattle, WA (703-415-0780)

October TBDAIPLA Annual Meeting, Hotel TBD, Washington, DC (703-415-0780)

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

2013

2014

future meetingscalendar


http://www.abanet.org/intelprop

http://www.inta.org/

news of members

The intellectual property law firm of Caesar, Rivise, Bernstein, Cohen and Pokotilow is pleased to announce that David Gornish has been elected to partnership.

Mr. Gornish’s practice involves all aspects of intellectual property law, including intellectual property litigation matters for both plaintiffs and defendants. His patent defense work largely involves representing generic pharmaceutical companies in “Hatch-Waxman” litigation. Mr. Gornish also is registered to practice before the U.S. Patent and Trademark Office and handles patent work for large established companies, as well as individual inventors and startup companies. Mr. Gornish is a member of the Pennsylvania and New Jersey Bars and received his undergraduate degree in Mechanical Engineering from Drexel University and his law degree from Temple University School of Law. While at Drexel, he worked for two years as an engineering intern for a leading global medical device company, designing implants and instruments for orthopedic and spine surgery.

With a proud heritage spanning 85 years, Caesar Rivise, Bernstein, Cohen & Pokotilow is recognized as a leading intellectual property law firm. The firm has been called upon to obtain thousands of US and international patents and trademarks and to act as lead counsel in hundreds of

trials and appeals throughout the United States.

The intellectual property law firm of Caesar, Rivise, Bernstein, Cohen and Pokotilow is pleased to announce that Francine Li, Ph.D. has joined the firm as an associate.

Dr. Li’s practice will focus on patent prosecution, client counseling and opinion work in the chemical and biotech arts. A graduate of Villanova Law School, Dr. Li received her undergraduate degree in chemical engineering from East China University of Science and Technology in Shanghai, China and her Ph.D. from Carnegie Mellon University in organic chemistry. Prior to attending law school, she was a research scientist at Protez Pharmaceuticals and Nuada Pharmaceuticals where her work concentrated on organic synthesis and drug discovery. Dr. Li is fluent in Chinese (Mandarin) and is admitted to practice in both Pennsylvania and New Jersey.

Said firm Managing Partner Manny Pokotilow, “We are delighted to have someone with Dr. Li’s expertise to further augment our technical capabilities in the chemical and biotech arts and contribute to the expansion of our international practice. She will be a tremendous asset to our clients both here and abroad.”


With a proud heritage spanning 85 years, Caesar Rivise, Bernstein, Cohen & Pokotilow is recognized as a leading intellectual property law firm. The firm has been called upon to obtain thousands of US and international patents and trademarks and to act as lead counsel in hundreds of trials and appeals throughout the United States.

Honigman Miller Schwartz and Cohn LLP (Honigman) is pleased to announce that Meghan M. Klaric has joined the firm as an Attorney in the Intellectual Property Practice Group of

its Corporate and Securities Department. She will be located in the firm’s Kalamazoo office. Honigman’s IP practice has grown significantly in recent years, with the number of IP attorneys rising from 10 to 31 in approximately two and one-half years.

Klaric will concentrate her practice on assisting with a full range of patent and intellectual property issues and brings to Honigman a strong background in Chemistry.She earned a J.D., cum laude, from Villanova University School of Law, an M.A. in Chemistry from the University of Southern California (USC) and a B.S. in Honors and a B.S. in Chemistry from Villanova University. Klaric served as a teaching assistant in

the chemistry labs at USC and Villanova University and as a summer research assistant at two major pharmaceutical companies while earning her degrees.

Klaric comes to Honigman from Pennsylvania, where she worked as an independent contractor for two law firms after graduating from law school.

Honigman’s IP practice encompasses a wide variety of patent, trademark, copyright and trade secret law, including search, registration, enforcement, anti-counterfeiting, litigation and transactional work involving IP rights. The professionals in the IP Practice Group have experience in a variety of industries, including automotive (OEM and suppliers), retailing, publishing (newspapers, books, magazines, multi-media), gaming and hospitality, e-commerce, food and beverage, restaurant, advertising, insurance, software, electronics, consumer products, fashion, banking, transportation, telecommunications, medical services and devices, pharmaceuticals, biotechnology, and real estate.

Honigman is a leading business law firm based in Michigan with an international practice. Headquartered in Detroit with offices in Lansing, Oakland County, Ann Arbor and Kalamazoo, the firm has attorneys practicing in more than 50 different areas of concentration. Honigman’s highly-credentialed attorneys and staff, along with its customer-service focus, provide clients in a wide variety of industries timely and cost-effective counsel. For more information about Honigman visit www.honigman.com.


news of members

American Intellectual Property Law Association member elected to partnership.

The intellectual property law firm of Caesar, Rivise, Bernstein, Cohen and Pokotilow is pleased to announce that Dr. Joseph Murphy has been elected to partnership.

Dr. Murphy’s practice involves all aspects of intellectual property law, including patent prosecution in the biotechnological, chemical, and pharmaceut ical

arts. He has extensive experience in the prosecution of Inter Partes Reexaminations, and prosecution before the Board of Patent Appeals and Interferences. Dr. Murphy’s practice also includes opinion work, including validity, invalidity, infringement and freedom to operate. He prepares Paragraph IV Certifications for submission to the FDA with ANDA filings, and also Paragraph IV Certification Notice Letters. Prior to joining the firm, Dr. Murphy worked for 6 years in the U.S. Patent and Trademark Office as a Biotechnology Patent Examiner. He had Full Signatory Authority and was a Master’s Level Examiner. Dr. Murphy received his Ph.D. in Physiology from the University of Virginia in 1997. He did his post-doctoral fellowship at the A.I. DuPont Institute in the Epithelial Cell Biology

Laboratory. From 1997-1999, he served as a Post Doctoral Scientist for Message Pharmaceuticals, Inc. A graduate of George Washington University School of Law (2005), Dr. Murphy received his undergraduate degree in Biology from St. Joseph’s University in 1989.

With a proud heritage spanning 85 years, Caesar Rivise, Bernstein, Cohen & Pokotilow is recognized as a leading intellectual property law firm. The firm has been called upon to obtain thousands of US and international patents and trademarks and to act as lead counsel in hundreds of trials and appeals throughout the United States.


C.L.E. update

ALABAMA ......................................................... 3.70ALASKA ............................................................ 3.60ARIZONA .......................................................... 3.50ARKANSAS ...................................................... 3.75CALIFORNIA .................................................... 3.50COLORADO ..................................................... 4.00CONNECTICUT ......................................................DELAWARE ...................................................... 4.40FLORIDA .......................................................... 4.50GEORGIA ......................................................... 3.60IDAHO .............................................................. 3.50 ILLINOIS ........................................................... 3.50INDIANA ........................................................... 3.70IOWA ................................................................ 3.75KANSAS ........................................................... 4.00KENTUCKY ...................................................... 3.75

LOUISIANA ....................................................... 3.66MAINE .............................................................. 3.60MINNESOTA ..................................................... 2.50MISSISSIPPI .................................................... 3.70MISSOURI ........................................................ 4.40MONTANA ........................................................ 3.75NEBRASKA ...................................................... 3.50NEVADA ........................................................... 3.50NEW HAMPSHIRE ........................................... 3.60NEW JERSEY .................................................. 4.00NEW MEXICO .................................................. 3.50NEW YORK ...................................................... 4.00N. CAROLINA ................................................... 3.50N. DAKOTA ....................................................... 3.50OHIO ................................................................ 3.50OKLAHOMA .................................................... 4.00

OREGON .......................................................... 3.75PENNSYLVANIA ............................................... 3.50RHODE ISLAND ............................................... 4.40S. CAROLINA ................................................... 1.50TENNESSEE .................................................... 3.75TEXAS .............................................................. 3.50UTAH ................................................................ 3.50VERMONT ........................................................ 3.50VIRGINIA .......................................................... 3.50WASHINGTON ................................................. 3.75W. VIRGINIA ..................................................... 4.40WISCONSIN ..................................................... 4.00WYOMING ........................................................ 3.75

Partnering in Patents • Madison Auditorium at the US Patent & Trademark OfficeAlexandria, VA • October 20, 2010

ALABAMA ............................................... 17.50 (2.5) ALASKA .................................................. 17.50 (2.5) ARIZONA ................................................ 17.50 (2.5) ARKANSAS ............................................ 17.50 (2.5) CALIFORNIA .......................................... 17.50 (2.5) COLORADO ........................................... 21.00 (3.0) CONNECTICUT ...................................................... DELAWARE ............................................ 21.00 (3.0) FLORIDA ................................................ 21.00 (3.0) GEORGIA ............................................... 17.00 (2.5) IDAHO .................................................... 17.50 (2.0) ILLINOIS ................................................. 17.00 (2.5) INDIANA ................................................. 17.00 (2.5) IOWA ...................................................... 17.50 (2.5) KANSAS ................................................. 18.00 (3.0) KENTUCKY ............................................ 17.50 (2.5)

LOUISIANA ............................................. 17.00 (2.5) MAINE .................................................... 17.50 (2.5) MINNESOTA ........................................... 17.00 (2.5) MISSISSIPPI .......................................... 17.50 (2.5) MISSOURI .............................................. 21.00 (3.0) MONTANA .............................................. 17.50 (2.5) NEBRASKA ............................................ 17.00 (2.5) NEVADA ................................................. 17.00 (2.5) NEW HAMPSHIRE ................................. 17.00 (2.5) NEW JERSEY ........................................ 21.00 (3.0) NEW MEXICO ........................................ 17.50 (2.5) NEW YORK ............................................ 21.00 (3.0) N. CAROLINA ......................................... 16.00 (2.5) N. DAKOTA ............................................. 17.00 (2.5) OHIO ...................................................... 16.00 (2.5) OKLAHOMA ........................................... 21.00 (3.0)

OREGON ................................................ 18.00 (2.5) PENNSYLVANIA ..................................... 17.50 (2.5) RHODE ISLAND ..................................... 21.00 (3.0) S. CAROLINA ......................................... 17.50 (2.5) TENNESSEE .......................................... 17.5 (2.33) TEXAS .................................................... 17.50 (2.5) UTAH ...................................................... 17.50 (2.5) VERMONT .............................................. 17.50 (2.5) VIRGINIA ................................................ 17.50 (1.5) WASHINGTON ........................................ 17.00 (1.5 W. VIRGINIA ........................................... 21.00 (3.0) WISCONSIN ........................................... 21.00 (3.0) WYOMING .............................................. 17.50 (2.5)

Ethics credit is indicated in a parenthesis and is included in the total.

2011 Mid-Winter Institute • The Peabody OrlandoOrlando, FL • February 2-5, 2011

ALABAMA .............................................. 15.30 (4.0) ALASKA .................................................. 15.30 (4.0)ARIZONA ................................................ 15.25 (4.0)ARKANSAS ............................................ 15.25 (4.0)CALIFORNIA .......................................... 15.25 (4.0)COLORADO ........................................... 18.00 (4.8)CONNECTICUT ......................................................DELAWARE ............................................ 18.30 (4.8)FLORIDA ................................................ 19.00 (5.0)GEORGIA ............................................... 15.30 (3.9)IDAHO ............................................................ 14.75ILLINOIS ................................................. 14.75 (4.5)INDIANA ................................................. 15.30 (4.0)IOWA ...................................................... 15.00 (4.0)KANSAS ................................................. 18.00 (4.5)KENTUCKY ............................................ 15.25 (4.0)

LOUISIANA ............................................. 15.25 (4.0)MAINE .................................................... 15.25 (4.0)MINNESOTA ........................................... 14.75 (4.0)MISSISSIPPI .......................................... 15.30 (3.9)MISSOURI .............................................. 17.70 (4.8)MONTANA .............................................. 15.25 (4.0)NEBRASKA ............................................ 15.00 (4.0)NEVADA ................................................. 15.00 (4.0)NEW HAMPSHIRE ................................. 16.00 (3.9)NEW JERSEY ........................................ 18.00 (4.5)NEW MEXICO ........................................ 15.25 (4.0)NEW YORK ............................................ 18.00 (4.5)N. CAROLINA ......................................... 15.25 (4.0)N. DAKOTA ............................................. 15.25 (4.0)OHIO ...................................................... 15.00 (4.0)OKLAHOMA ........................................... 18.00 (5.0)

OREGON ................................................ 16.0 (2.25)PENNSYLVANIA ..................................... 15.50 (4.0)RHODE ISLAND ..................................... 18.30 (4.8)S. CAROLINA ......................................... 15.25 (4.0)TENNESSEE ........................................ 17.08 (2.83)TEXAS .................................................... 15.25 (4.0)UTAH ...................................................... 15.00 (4.0)VERMONT .............................................. 15.25 (4.0)VIRGINIA ................................................ 15.30 (3.0)WASHINGTON ....................................... 15.25 (4.0)W. VIRGINIA ........................................... 18.30 (4.8)WISCONSIN ........................................... 18.00 (4.5)WYOMING .............................................. 15.25 (4.0)


2010 Annual Meeting • Marriot Wardman Park HotelWashington, DC • October 21-23, 2010


Please check our website at www.aipla.org for current information.

ALABAMA ................................................. 7.30 (1.0)ALASKA .................................................... 7.30 (1.0)ARIZONA .................................................. 7.00 (1.0)ARKANSAS .............................................. 7.25 (1.0)CALIFORNIA ............................................ 7.25 (1.0)COLORADO ............................................. 9.00 (1.2)CONNECTICUT ......................................................DELAWARE .............................................. 8.70 (1.2)FLORIDA .................................................................GEORGIA ................................................................IDAHO .............................................................. 7.25ILLINOIS ................................................... 7.25 (1.0)INDIANA ................................................... 7.30 (1.0)IOWA ........................................................ 7.25 (1.0)KANSAS ................................................... 8.00 (1.0) KENTUCKY ............................................. 7.25 (1.0)

LOUISIANA ............................................... 7.25 (1.0)MAINE ...................................................... 7.25 (1.0)MINNESOTA ..................................................... 6.25MISSISSIPPI ............................................ 7.30 (1.0)MISSOURI ...............................................................MONTANA ............................................... 7.25 (1.0)NEBRASKA ...................................................... 6.30NEVADA .................................................. 7.00 (1.0)NEW HAMPSHIRE ................................... 7.25 (1.0)NEW JERSEY .......................................... 8.50 (1.0)NEW MEXICO .......................................... 7.25 (1.0) NEW YORK .............................................. 8.50 (1.0)N. CAROLINA ........................................... 7.00 (1.0)N. DAKOTA ............................................... 7.25 (1.0)OHIO ........................................................ 7.25 (1.0)OKLAHOMA ............................................. 8.50 (1.0)

OREGON .......................................................... 7.25PENNSYLVANIA ....................................... 7.00 (1.0)RHODE ISLAND ....................................... 8.70 (1.2) S. CAROLINA ........................................... 7.25 (1.0)TENNESSEE .................................................... 7.25TEXAS ...................................................... 7.25 (1.0)UTAH ........................................................ 7.00 (1.0)VERMONT ................................................ 7.30 (1.2)VIRGINIA .................................................. 6.50 (1.0) WASHINGTON ......................................... 7.25 (1.0)W. VIRGINIA ............................................. 8.70 (1.2)WISCONSIN ............................................. 8.50 (1.0)WYOMING ................................................ 7.25 (1.0)


2010 Electronic and Computer Patent Law Summit • The Grand HyattDenver, CO • June 24, 2010

ALABAMA ....................................................... 13.00ALASKA .......................................................... 13.00ARIZONA ........................................................ 13.00ARKANSAS .................................................... 13.00CALIFORNIA .................................................. 13.00COLORADO ................................................... 16.00CONNECTICUT ......................................................DELAWARE .................................................... 13.00 FLORIDA ........................................................ 15.50GEORGIA ....................................................... 13.00IDAHO ............................................................ 13.00 ILLINOIS ......................................................... 13.00INDIANA ......................................................... 13.00IOWA .............................................................. 12.75 KANSAS ......................................................... 15.50 KENTUCKY .................................................... 13.00

LOUISIANA ..................................................... 13.00 MAINE ............................................................ 13.00 MINNESOTA ................................................... 13.00MISSISSIPPI .................................................. 13.00MISSOURI ...................................................... 15.60MONTANA ...................................................... 13.00 NEBRASKA .................................................... 12.00NEVADA ......................................................... 13.00 NEW HAMPSHIRE ......................................... 12.75 NEW JERSEY ................................................ 15.50 NEW MEXICO ................................................ 13.00 NEW YORK .................................................... 15.50 N. CAROLINA ................................................. 13.00 N. DAKOTA ..................................................... 13.00 OHIO .............................................................. 12.75 OKLAHOMA ................................................... 15.50

OREGON ........................................................ 13.50 PENNSYLVANIA ............................................. 13.00 RHODE ISLAND ............................................. 15.60S. CAROLINA ................................................. 13.00TENNESSEE .................................................. 13.00 TEXAS ............................................................ 13.00UTAH .............................................................. 13.00 VERMONT ...................................................... 13.00 VIRGINIA ........................................................ 13.00 WASHINGTON ............................................... 12.75 W. VIRGINIA ................................................... 15.60 WISCONSIN ................................................... 15.50 WYOMING ...................................................... 13.00

2010 Patent Cooperation Treaty Seminar • Hilton Alexandria Old TownAlexandria, VA • July 26-27, 2010

ALABAMA ............................................... 15.00 (1.0)ALASKA .................................................. 15.00 (1.0)ARIZONA ................................................ 15.00 (1.0)ARKANSAS ............................................ 15.00 (1.0)CALIFORNIA .......................................... 15.00 (1.0) COLORADO ........................................... 18.00 (1.2)CONNECTICUT ......................................................DELAWARE ............................................ 18.00 (1.2)FLORIDA ........................................................ 18.00 GEORGIA .............................................. 15.00 (1.0)IDAHO .................................................... 14.50 (1.0)ILLINOIS ................................................. 15.00 (1.0) INDIANA ................................................. 15.00 (1.0)IOWA ...................................................... 15.00 (1.0)KANSAS ................................................. 16.00 (1.0) KENTUCKY ............................................ 15.0 (0.75)

LOUISIANA ............................................ 15.00 (1.0)MAINE .................................................... 15.00 (1.0)MINNESOTA ........................................... 15.00 (1.0)MISSISSIPPI .......................................... 15.00 (1.0)MISSOURI .............................................. 18.00 (1.2) MONTANA .............................................. 15.00 (1.0) NEBRASKA ............................................ 15.00 (1.0) NEVADA ................................................. 15.00 (1.0)NEW HAMPSHIRE ................................. 15.25 (1.0)NEW JERSEY ........................................ 18.00 (1.0)NEW MEXICO ........................................ 15.00 (1.0)NEW YORK ............................................ 18.00 (1.0)N. CAROLINA ......................................... 15.00 (1.0)N. DAKOTA ............................................. 15.00 (1.0)OHIO ...................................................... 15.00 (1.0)OKLAHOMA ........................................... 18.00 (1.0)

OREGON ................................................ 16.00 (1.0)PENNSYLVANIA ..................................... 15.00 (1.0)RHODE ISLAND ..................................... 18.00 (1.2)S. CAROLINA ......................................... 16.00 (1.0)TENNESSEE .................................... 15.5 (1.0 dual)TEXAS .................................................... 15.00 (1.0)UTAH ...................................................... 15.00 (1.0)VERMONT .............................................. 15.00 (1.0)VIRGINIA ................................................ 15.00 (1.0)WASHINGTON ....................................... 15.00 (1.0)W. VIRGINIA ........................................... 18.00 (1.2)WISCONSIN ........................................... 18.00 (1.0)WYOMING .............................................. 15.00 (1.0)


2010 Boot Camp • The Westin AlexandriaAlexandria, VA • August 25-26, 2010



http://computerpackages.com

AIPLA Quarterly JournalThe premiere intellectual property journal for intellectual property practitioners, the AIPLA QJ,

is seeking articles for publication. The AIPLA QJ is a scholarly journal designed to promote an

exchange of intellectual insight and debate on issues of intellectual property law. We welcome

submissions on a wide variety of intellectual property topics from all individuals studying

and practicing in the area of intellectual property law. Articles should be approximately 7000

words in length (excluding footnotes), double-spaced, with full citation in Bluebook format. All

submissions should be e-mailed to [email protected]. Articles are selected for publication

year-round and thus there is no submission deadline. As articles are selected they are slated in

the next available Journal issue.

callfor articlesAIPLA


http://www.hkindia.com

copyright office affairsby:.Wendi A. Maloney & Judith Nierman (photos.below)

Maria Pallante Appointed Acting Register of CopyrightsMaria Pallante, senior adviser to the Librarian of Congress, was appointed Acting Register of Copyrights, effective January 1, 2011. She will serve until the next Register of Copyrights is selected and assumes the duties of the position. The former Register, Marybeth Peters, retired on December 31, 2010, after 16 years in the position.

“The position of Register of Copyrights is extremely important to the copyright community, the Library of Congress, and the United States, and requires a significant skill set. It is important that we proceed diligently in making that appointment,” said Librarian of Congress James Billington. “In the meantime, Maria is an experienced copyright lawyer and manager, and I am grateful that she is willing to oversee the registration, policy and other important functions of the Copyright Office for as long as we need her.”

Prior to her appointment as Acting Register, Pallante was a senior advisor to the Librarian, where she worked with the Library’s senior management on strategic assignments related to the mission and operations of the Library of Congress and its future in a world digital economy. She previously held two senior positions in the Copyright Office. From December 2008 to October 2010, she was the associate register in charge of the office of policy and international affairs. From January 2007 to December 2008, she was deputy general counsel. In both positions she helped to shape domestic and international policy initiatives, working with congressional offices, Executive Branch agencies, and constituents from the private sector. She was also

a policy planning advisor in the Copyright Office from June 1996 to November 1997.

Pallante has spent much of her career in New York. From 1999-2007, she served as intellectual property counsel and director of licensing for the Guggenheim Museums, where she advised on programmatic and business initiatives related to worldwide publishing, product development, and branding; the acquisition and exhibition of contemporary art; and the operation of overseas affiliates and licensees. Earlier in her career, she worked in private practice and on the staffs of the Authors Guild and National Writers Union, respectively.

Pallante earned her juris doctor degree from George Washington University and her bachelor’s degree from Misericordia University, where she was also awarded an honorary doctorate of humane letters.

Marybeth Peters Retires after 16 Years as Register of CopyrightsRegister of Copyrights Marybeth Peters retired December 31, 2010, after serving as Register for 16 years, a tenure longer than any other Register with the exception of Thorvald Solberg, the first to hold that office, who served from 1897-1930. Her exemplary service to the nation began in the Library of Congress in October 1965. She held numerous positions at all levels in the Copyright Office, beginning on February 14, 1966, with her appointment as an examiner in the former Music Section. For biographical information on Marybeth Peters, go to www.copyright.gov/history/index.html.


President Signs Copyright BillPresident Obama signed the Copyright Cleanup, Clarification, and Corrections Act of 2010 on December 9, 2010. Among other things, the act revises the copyright law to permit the Office to accept electronic signatures with documents submitted for recordation and to maintain its online service providers directory solely in electronic format. The General Counsel’s Office of the Copyright Office worked with the House and Senate Judiciary Committees on the legislation, which will help the Office improve its public service and efficiency.

Each year, the Office records more than 10,000 documents relating to copyright that cover hundreds of thousands of titles. Until passage of the new act, a document filed for recordation had to bear the actual signature of the person who executed it or be accompanied by a sworn or official certification that it was a true copy of the original, signed document. The new act states that “a sworn or official certification may be submitted to the Copyright Office electronically, pursuant to regulations established by the Register of Copyrights.”

This change facilitates the Office’s plan to develop an online system for recordation of documents. Right now, documents are submitted for recordation on paper, and each title must be entered manually into the Office’s online database, along with authorship information and other data, a labor-intensive and time-consuming process.

Regarding the Office’s directory of online service providers, Congress amended the copyright law in 1998 to limit the potential liability of service providers for copyright infringement carried out on their systems or networks. To take advantage of the limitation, the service providers had to file statements identifying

agents to receive notifications of infringement, and the Office had to make a current directory of agents publicly available in both electronic and hard-copy formats. The new act removes the requirement to keep the directory in both formats, making it possible for the Office to maintain it solely online.

The new act also clarifies several sections of the copyright law. For example, section 303(b), which deals with copyright duration, had provided that the “distribution before January 1, 1978, of a phonorecord shall not for any purpose constitute a publication of the musical work embodied therein.” This language has been amended to expand “the musical work” to “any musical work, dramatic work, or literary work.” The amendment clarifies that under the Copyright Act of 1909, the distribution of phonorecords without copyright notices did not place the musical, dramatic, or literary works appearing on those phonorecords in the public domain.

Other clarifications affect regulations issued by the Copyright Royalty Judges, subjecting them to judicial review in federal court under the Administrative Procedure Act, and royalty schedules for new types of eligible nonsubscription or new subscription services on which recordings are performed under section 114 of the Copyright Act.

In addition, the act includes technical amendments, including repeal of outdated provisions of the copyright law and correction of citations.

Sen. Patrick Leahy, chair of the Senate Judiciary Committee, noted on the Senate floor that the “Copyright Office provided important recommendations that are included in this legislation, and I thank [its staff] for their input and guidance on these issues. The changes made by this legislation are commonsense

copyright office affairs(continued)


improvements that will make the copyright system more efficient.”

Copyright Office Adopts Interim Regulations Governing Electronic Submissions of Applications for Registration of Certain Photographs The Copyright Office is adopting interim regulations governing the electronic submission of (1) applications for registration of automated databases that consist predominantly of photographs and (2) applications for group registration of published photographs. (76 FR 4072.) This interim rule establishes a testing period and pilot program during which the Copyright Office will assess the desirability and feasibility of permanently allowing such applications to be submitted through the Copyright Office’s electronic filing system(eCO).

Persons wishing to submit electronic applications to register copyrights of such photographic databases or of groups of published photographs should contact the Visual Arts Division for permission and guidance on electronic registration. Notwithstanding the ordinary deposit requirements for group registration of automated databases, an electronic application for group registration of an automated database that consists predominantly of photographic authorship must include the image of each claimed photograph in the database. The interim regulations also allow applicants to use forms other than Form TX, as appropriate, when submitting paper applications to register group automated databases.

The interim regulations were effective January 24, 2011. For further information, go to the Copyright Office website at www.copyright.gov.

Copyright Office Proposes Amendments to Regulations on Deposit Requirements for Electronic Registration of Automated Databases Consisting Predominantly of Photographs The Copyright Office proposed to amend its regulations governing the deposit requirements for applications for automated databases that consist predominantly of photographs. Like the recently published interim regulations (76 FR 4072) regarding electronic registration of automated databases that consist predominantly of photographs and group registration of published photographs, described above, the proposed amendments would require that, in addition to providing material relating to claimed compilation authorship, the deposits for such databases would include the image of each photograph in which copyright is claimed. The

proposed regulations would apply this requirement to applications submitted using paper forms. The Office believes that this amendment will align the deposit requirements for such databases with the deposit requirements for published or unpublished photographs as a single work or group registration of published photographs and provide a better public record identifying the scope of the copyright claim. Comments were due in the Copyright Office by February 28, 2011. For further information, go to the Copyright Office website at www.copyright.gov.

Copyright Office Initiates Study and Requests Comments on Federal Copyright Protection for Pre-1972 Sound RecordingsThe Copyright Office published a Federal Register notice requesting written comments from all interested parties on the desirability and means of bringing sound recordings fixed before February 15, 1972, under federal jurisdiction. Unlike sound recordings created on or after February 15, 1972, which are protected by federal copyright law, these earlier sound recordings currently are protected under a patchwork of state statutory and common laws from their date of creation until 2067. The Office sought these comments to assist it in conducting a study on pre-1972 sound recordings at the direction of Congress. Specifically, the Office sought comments on the likely effect of federal protection upon preservation of, and public access to, pre-1972 sound recordings and the effect upon the economic interests of rights holders. The Office also sought comments on how the incorporation of pre-1972 sound recordings into federal law might best be achieved. The notice of inquiry is available at www.copyright.gov/docs/sound. The deadline for comments was January 31, 2010. The deadline for reply comments is April 13, 2011.Copyright Office Proposes to Amend Termination Regulations; Requests CommentsThe Copyright Office proposed to amend its regulations governing notices of termination of certain grants of transfers and licenses of copyright under section 203 of the 1976 Copyright Act. The amendments are intended to clarify the recordation practices of the Copyright Office regarding the content of section 203 notices of termination and the timeliness of their service and recordation, including a clarification that the Office will accept for recordation under section 203 a notice of termination of a grant agreed to before January 1, 1978, as long as the work that is the subject of the grant was not created before 1978. Whether such notices of termination fall within the scope of section 203 will ultimately be a matter to be resolved by the courts.


The deadline for comments was January 24, 2011. For further information, go to the Copyright Office website at www.copyright.gov.

Public Records Reading Room Gets “Thin Clients”Most of the public workstations in the Copyright Office Public Records Reading Room got an overhaul in December 2010. Their bulky CPUs (central processing units) were removed and replaced by “thin client” devices, which operate from servers located in the basement of the Madison Building of the Library of Congress. Thin clients eliminate the need for hard drives, are easier to upgrade and support, provide for a more secure computing environment, and reduce lifecycle costs, according to staff who supervised introduction of the devices.

In addition, thin clients have ports for removable flash drives on which users can save copyright public records. The new system also makes it simple to send records by email, reducing the need for printers in the reading room.

Patrons of the Public Records Reading Room have commented favorably on the thin clients, calling them a “big improvement.” One frequent patron noted that she appreciates the speed of the new system, which permits her to search and download records faster, and the fact that logging in is no longer required. Before introduction of the thin clients, public users sometimes had to ask reading room staff to log in for them before starting to search records.

Register of Copyrights Marybeth Peters Presents Distinguished Lecture Register of Copyrights Marybeth Peters presented the sixth annual Finnegan Distinguished Lecture on

Intellectual Property on November 4, 2010, at the American University Washington College of Law in the District. The lecture was cosponsored by the Program on Information Justice and Intellectual Property of American University and the law firm of Finnegan, Henderson, Farabow, Garrett & Dunner, one of the largest intellectual property firms in the world. Entitled “The 1976 Copyright Act: Prologue and Epilogue,” the Register’s talk was not a scholarly presentation but a reflection on the time when the 1909 Copyright Act was being revised, a process that took nearly a quarter of a century. The Register said that the Copyright Office played a critical role in the enactment of the 1976 Copyright Act, and, in her talk, she paid homage to the Office for that role.

Also speaking were attorneys Jon Baumgarten, who served as general counsel in the Office from 1996 to 1979, and Arthur Levine of Finnegan, Henderson, who worked in the Copyright Office for eight years during the revision efforts.

copyright office affairs(continued)


thank you AIPLA 2011 mid-winter institute sponsors!bronzeCarlton Fields, PACo-Sponsor: Opening Night Reception

FinneganCo-Sponsor: Opening Night Reception

Fitzpatrick Cella Harper & ScintoSponsor: AIPLA Cyber Café

Howrey, LLPSponsor: Women in IP Law Breakfast

Patterson Belknap Webb & Tyler, LLPPartial Sponsor: Thursday Lunch Reception

Perkens CoieSponsor in part: Thursday Dinner

PirkeyBarber LLPSponsor in part: Friday Networking Happy Hour and Night on the Town

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

Sughrue Mion, PLLCSponsor: Friday Lunch Reception

crystal

pearl

Broad and Cassel, PACo-Sponsor: Opening Night Reception

Foley HoagSponsor: Joint Committee Meeting & Family Friendly Reception

Herbert L. Jamison & Co., LLCSponsor: Meeting Signage

McAndrews Held & Malloy, LTDSponsor: Tournament Golf Balls


2010

Mid

-Win

ter I

nstit

ute

pho

togr

aphs

by:

Ric

hard

Bur

gess

2011 mid-winter instituteAIPLA

leadershipDavid Hill, President, AIPLA

Q. Todd Dickinson,AIPLA Executive Director

Kieran DoyleProgram Vice-Chair

Mark HubbardProgram Vice-Chair

William BarberOfficer-in-Charge

Kevin TottisProgram Chair

a few speakers

Alyson Barker

Stephen D. Milbrath

Bradley Forrest.

Tanya Forsheit

Benjamin Leace

Beth Fulkerson

P. Anthony Sammi

Anthony Greene

Rose Auslander

Peter Menell

Dawn Cassie

Hathaway Russell

a few more speakers

Nagendra Setty

George Chan

Dianne B. Elderkin

Dr. David A. Wolf - NASA Astronaut

Michelle Sherman

Michael Dunnam

Hon. Paul R. Michel

Hon. Faith Hochberg

Matthew Bryan - WIPO

AIPLA would like to thank the sponsor of the new member/first-time attendee reception:

• Schwegman Lundberg & Woessner, PA

new member/f i rst-t ime attendee reception

opening night reception

AIPLA would like to thank the sponsors of the opening night reception:

• Broad & Cassel• Carlton Fields • Finnegan Henderson Farabow Garrett

& Dunner, LLP

f r iday dinner & enter tainment

AIPLA would like to thank the sponsor in part of the dinner & entertainment:

• Perkins Coie, LLP

golf and tennistournament

reception

Tournament golf balls sponsored by McAndrews Held & Malloy, Ltd.

other events

http://rws.com

Alternative Dispute ResolutionChair: Harrie R. Samaras (photo)Vice Chair: Stephen C. Durant (not pictured)___________________________________________

The Committee Chair, Harrie Samaras, the Committee Vice-Chair, Stephen Durant, the Board Liaison Mark Whitaker and Committee Members Don Martens, Jack Goldstein, Dale Hogue, Rodney Caldwell and Bill Frank attended the meeting in person, while Kevin Casey and Greg Whitehair attended by phone.

The discussion focused on the Committee’s progress in three main areas: (1) a substantive committee meeting planned for the Spring AIPLA meeting; (2) plans for a plenary session at the annual AIPLA meeting; (3) updating the Committee’s micro site; and (4) a special project. These will be expanded below.

A. ProgramsAIPLA Spring 2011 Meeting in San FranciscoThe Committee planned a 1-hour substantive committee meeting at the AIPLA Spring 2011 meeting in San Francisco.

The program speakers addressed the topics of: (1) The 21st Century Meets The 19th Century: Avoiding unauthorized practice of law in jurisdictions in which an attorney is not admitted; (2) Ethics in Negotiation (To Puff Or Not To Puff?); and(3) What are “suits” that trigger insurance coverage under a commercial general liability policy — ADR proceedings (e.g., mediation, arbitration)?

AIPLA 2011 Annual Meeting in Washington D.C.The Committee also proposed a program for the

2011 Annual Meeting that we learned was accepted. The program will be held on Friday, October 21, 2011 from 2:00 p.m. to 3:30 p.m.

The program will address the topics of: “How are companies using ADR to address recurring IP-related disputes between competitors and business partners (e.g., joint venture or development partners)?” This topic implicates creative uses of ADR that have been known to some for years but may be new or cutting-edge for others (e.g., using “dispute review boards” or “standing neutrals/arbitrators/mediators”) in IP and business/technology disputes. We have contacted the Corporate Practice Committee to partner in putting the program together.

We are seeking: (1) speakers (in-house counsel who have experience using ADR creatively as mentioned above – this may be through the use of pre-dispute resolution clauses in agreements or in stand-alone agreements companies have prepared for ongoing disputes and outside counsel who have helped clients with such arrangements); and (2) program planners (people who want to help develop the form and content of the program).

B. WebsiteGreg Whitehair is the Committee’s Website Subcommittee Chair. He has recently added the following content to the Committee’s site:

mid-winter institutefebruary 2-5, 2011

committee reports


Anti-Counterfeiting and Anti-PiracyChair: Jonathan Hudis (photo)Vice Chair: Crystal Gothard (not pictured) ___________________________________________

The Anti-Counterfeiting and Anti-Piracy Committee had been following a Senate bill (originally introduced in the 111th Congress) concerning measures to combat acts of trademark counterfeiting and copyright piracy on the Internet. The bill (S. 3804), was entitled “The Combating Online Infringement and Counterfeits Act (COICA),” which would have authorized the U.S. Department of Justice (only) to file an in rem civil action to obtain an injunction shutting down a domain name being used to promote and sell counterfeit or piratical products online. The bill also would have allowed the domain name owner or site operator to request that the court lift the injunction. In November 2010, the Senate Judiciary Committee reported favorably a substitute version of the bill, but the full Senate did not act on the legislation before the Congressional term ended.

At a Senate Judiciary Committee hearing held on February 16, 2010, entitled “Targeting Websites Dedicated to Stealing American Intellectual Property,” Senate Judiciary Committee Chairman Patrick J. Leahy (D-Vt.) said that legislation will be reintroduced in the 112th Congress to help curb online counterfeiting and piratical activities. During the Hearing, witnesses and a few Senators stressed the need for a private right of action in addition to the tools the COICA bill would have given to the Justice Department to curb online abuses of others’ trademarks and copyrighted works.The Committee will continue to follow these legislative efforts. Once a new bill is introduced in Congress, the Committee will prepare a proposed resolution commenting on its provisions for consideration by the AIPLA Board of Directors.

AmicusChair: Edward Robert Reines (photo)Vice Chair: Jerry R. Selinger (not pictured)___________________________________________

The Amicus Committee has no news to report.

• Under Useful Links and Resources – Links to “Ethics Resources” and “Training and Certification”.

• Committee Announcements – Greg is looking for published cases in the trademark, copyright and trade secret areas dealing with ADR-related issues. Bob Matthews, a Committee member, has kindly agreed to donate his time in collecting patent-related cases.

• Case Alerts – This page consists of summaries of cases addressing ADR issues in the IP context.

C. Special ProjectThe attendees suggested that the Committee focus on a project that would explore and report on different ADR forums. The Committee thus plans on compiling rules, articles and other information regarding ADR administering and non-administering organizations for domestic and international cases. A subcommittee will be convened for this purpose.


MidWinter Meeting ProgramsThe Biotechnology Committee hosted two programs, both co-sponsored with other committees. On Thursday, February 3rd, we held a roundtable discussion on how we talk about gene patents with folks who are not patent lawyers. This was a joint meeting with the Education and Public Education Committees. Attendees joined the discussion with our featured guests, Kevin Noonan of MBHB LLP, co-author of the Patent Docs blog, and who was interviewed on CBS’s 60 Minutes in connection with the Myriad case, Jackie Wright Bonilla, of Foley & Lardner and who wrote the amicus brief on behalf of Rosetta Genomics and George Mason University, Evelyn McConathy of Montgomery McCracken, chair of the Public Education Committee, which hosts the site: creativityinbloom.org. Also joining us was Sal Anastasi of the Public Education Committee, who demonstrated the content and features available on www.creativityinbloom.org. Participants learned about powerpoint presentations any of us can obtain from this web site to use when seeking to explain about intellectual property or when speaking at a career day about what it is like to be an IP attorney site (http://www.creativityinbloom.org/youtheducation.html).

After Sal’s presentation and a brief primer on genes, DNA, RNA and proteins provided by Jackie, we began our roundtable forum on gene patents. We discussed the challenge of countering the emotionally-compelling arguments such as “get your hands off my genes!” with factual and/or intellectual arguments. We discussed the double disadvantage of misinformation about both patent rights and the nature of DNA. Some points raised that are worth emphasizing include: noting that patents expire and are only in force for a relatively short time (referring to Judge Rader’s framing of patent system as a gift to future generations), information is not patented, consequences of no patent protection are worse, patentholders sue commercial entities and not researchers, noting that nobody owns your DNA, value of explaining the complexity of DNA as a chemical molecule. We also noted the important need to hear from companies and stories of improved outcomes that are attributable to patent protection and the need to help folks understand what would be lost of patent protection was removed. Finally, some discussed the differing points of view on whether isolated genes (or any isolated biological or other natural material) should be patent-eligible subject matter. We will post a working document on our committee page that can be used as a set of talking points.

BiotechnologyChair: Karen S. Canady (left photo)Vice Chair: James J. Kelley (right photo)___________________________________________

Antitrust LawChair: Richard S. Taffet (photo)Vice Chair: George Gordon (not pictured)___________________________________________

Consistent with these legislative initiatives, Anti-Counterfeiting and Anti-Piracy Committee held a joint presentation with the Copyright Committee at the AIPLA 2011 Spring Meeting regarding pending

legislation, the latest case-law decisions and pending litigation in the areas of online trademark and copyright infringement.

The Antitrust Law Committee has no news to report.


On Friday, February 4th, we held a joint meeting with the IP Practice in Europe and Chemical Practice Committees, addressing claim drafting and disclosure issues that are unique to Biotechnology and Chemical Practice, and differ between the United States and Europe. The program outlined the major issues in drafting claims and patent specifications for Chemical and Biotechnology inventions in the United States and Europe and addressed problems encountered when applications drafted from one jurisdiction are filed and prosecuted in the other. We thank our panelists: EPO Chemical: Andrew G. Smith, Patent Counsel, Lilly UK, Windlesham, Surrey, United Kingdom; EPO Biotech: Leonard L. Werner-Jones, Hoffmann - Eitle, Munich, Germany; US Chemical: James J. Sales, Barnes & Thornburgh, Indianapolis, Indiana; US Biotech: Shannon Mrksich, Brinks Hofer Gilson & Lione, Chicago, Illinois (who unfortunately was not able to attend the meeting). The speaker materials have been posted to our committee page.

NewsletterWe continue to provide a monthly newsletter to our committee to keep them informed of committee activity and new developments in biotechnology and related case law and legislative developments. The newsletter, called the Biotech Buzz, is being sent once a month to all subscribers to our committee lyris list. If you want to receive these emails and have not already, check your committee selections on your AIPLA member profile and be sure that you are a current member of the Biotechnology Committee.

Case Law UpdatesCase law reports, which previously had been distributed in connection with the three stated AIPLA meetings each year, are now distributed monthly as a feature of the Biotech Buzz. Any one interested in contributing case law reports should contact our Case Law Reports Subcommittee Chair, Melanie Szweras ([email protected]). If you have an article to share in an upcoming edition of the Biotech Buzz, please send it to the Editor, Eric Mirabel ([email protected]).

Spring Meeting ProgramsAt the Spring meeting in San Francisco, we will present a program at a joint meeting with the IP Practice in Latin America Committee and the IP Practice in Far East Asia Committee, to address protecting biotechnology in populous countries whose laws and policies seem less favorable to biotech patents. We will have speakers from Brazil, Argentina, China and India, and feature discussion of how to better understand and work

with the patent systems in these countries. We look forward to hearing from: Alicia Alvarez Berkenwal of Berken IP, Buenos Aires, Argentina; Gustavo Morais of Dannemann Siemsen, Rio de Janeiro, Brazil; Gesheng Huang of Zhongzi Law Office, Beijing, China; and Rajashree Sharma of Corporate Law Group, New Delhi, India.

We will also co-sponsor a program with Patent Law Committee and Emerging Technologies Committee. The topic of the committee meeting will be 35 U.S.C. § 112. Ken Nigon of RatnerPrestia will present on 35 U.S.C. § 112 as it applies to electronics and computer inventions. Mr. Nigon’s presentation will cover recent cases in Best Mode, Enablement, Written Description and Definiteness and the 112 guidelines issued by the USPTO on February 9, 2011. He will also discuss the implications of KSR, Ariad and Bilski on how patent specifications are drafted. Amy Hamilton of Eli Lilly and Company will give the bio/chem perspective, with an emphasis on the implications of the recent Ariad and Centocor cases on the burgeoning field of antibody therapeutics.

WebinarsIn response to popular demand, we have begun to offer free, non-CLE webinars to our members. Our first webinar was held on Dec. 8th: “Pinning down a moving target: Patenting biotech in uncertain times”, featuring John Engel of Engel & Novitt, Liz Fuller of Bird & Bird, and Anthony Tridico of Finnegan Henderson. It was a huge success, with 72 attendees. The program, complete with audio and slides, has been posted on the web. Thanks again to our sponsors: Bird & Bird, Engel & Novitt, and Finnegan Henderson. Our next webinar was Thursday, March 17, at 12:30 p.m. Eastern. The program addressed restriction practice for biotech applications in the US and Europe. The speakers include Linda Therkorn from the USPTO, Brian Lathrop, Ph.D., from Drinker, Biddle & Reath, and Simon Wright from JA Kemp & Co. Among other things, the panelists discussed the recently-issued guidelines for PTO examiners on definiteness, including the section on Markush groups, and their relation to restriction practice for biotech patent applications. Many thanks to our sponsors, Drinker, Biddle & Reath and JA Kemp & Co, for their financial and other support of this webinar and to the USPTO for its participation!

International IssuesIn addition to programs addressing international practice concerns, we also have been monitoring and commenting as appropriate on legislative and


regulatory developments in other countries that affect biotechnology IP-related issues, such as India’s Revised Draft Manual of Patent Office Practice and Procedure, the European regulations for biologicals, and pending legislation in Australia that would define biological materials as unpatentable. The latter is of particular concern, and our committee is preparing comments to forward to the AIPLA Board of Directors to be considered for submission to the Legal & Constitutional Affairs Legislation Committee of the Australian Senate.

New SubcommitteesWe announced the formation of two additional new subcommittees. Our new Bioinformatics Subcommittee held their first meeting in October. A medical device subcommittee has been formed as part of the Special Committee on FDA Law. Interested persons can contact the subcommittee chair, Stephen Parker.

Chemical PracticeChair: Michael R. Dzwonczyk (not pictured)Vice Chair: William B. Kezer (not pictured)___________________________________________The Biotechnology, Chemical Practice and IP Practice in Europe co-sponsored a Joint Committee Program titled: Patenting Issues in Biotechnology & Chemistry: US & EPO. Many claim drafting and disclosure issues are unique to Biotechnology and Chemical Practice both in the United States and Europe. US law and practice differs in significant respects from that before the European Patent Office and other European jurisdictions. This joint program outlined some of the major issues in drafting claims and patent specifications for Chemical and Biotechnology inventions in the United States and Europe. Uwe Zsipl of the IP Practice in Europe Committee moderated the meeting.

(1) Chemistry in the USAJames J. SalesBarnes and Thornburg LLPIndianapolis, [email protected]

Mr. Sales began the conversation of differences in analysis of chemical inventions for patentability in Europe and the US by elaborating on the law relating to chemical structural obvious post-KSR, and in particular Sun Pharmaceuticals Industries, LTD., v. Eli Lilly and Company (“Gemzar” case). Mr. Sales’ presentation engendered a lively discussion of the origin and persistence of the “lead compound” approach to assessing chemical obviousness at the Federal Circuit. The discussion was particularly timely and pertinent in light of Mylan’s filing of a petition for certiorari on December 8, 2010 that presents the question whether the Federal Circuit’s so-called “lead compound” test for determining obviousness of

a chemical compound conflicts with the Supreme Court’s decision in KSR. The Federal Circuit decided in September, 2010 that Mylan failed to invalidate Daiichi Sankyo’s compound claims on the basis of obviousness (Daiichi Sankyo Co., Ltd. v. Matrix Labs., Inc., CAFC No. 2009-1511, September 9, 2010).

(2) Chemistry in Europe Andrew G. Smith Lilly UK [email protected]

Mr. Smith gave a presentation titled “Drafting Claims and Patent Specifications for Chemical Inventions: A European Perspective” in which he covered permissible and impermissible added matter in the context of chemical applications, drafting fallback positions, EPO inventive step and structural non-obviousness, the submission of experimental data and the selection of comparator compounds for inventive step assessment, late filing of evidence in inventive step versus sufficiency situations, and double patenting in Europe. Mr. Smith used diagrams, hypothetical claims, and case citations to support his presentation.

(3) Biotechnology in EuropeDr. Leonard L. Werner-Jones, Hoffman – Eitle, Munich, [email protected]

Dr. Werner-Jones, educated in the U.S. and Europe, presently employed by one of Munich’s largest IP firms spoke on key topics in drafting biotechnology


The Chemical Practice Committee has no news to report.

Copyright LawChair: Kevin Tottis (left photo)Vice Chair: Amy Cahill (right photo)___________________________________________

patent applications for the EPO. Topics covered included the EPO strict new divisional application rules, exclusions from patentability under EPC Article 53, the Biotechnology Directive of the EC, and the ECJ decision confirming the exclusion of absolute protection for DNA sequences as such divorced of their function.

The Session concluded with announcements from the co-sponsoring committees.

The IP Practice in Europe Committee described its upcoming visit to Europe to meet with the major IP Law organizations of Europe from February 28, 2011 to March 4, 2011. IP Practice in Europe is also sponsoring a program of six eminent speakers from the UK covering various topics of UK and European patent law at the AIPLA Spring meeting in San Francisco.

The Biotechnology Committee announced its participation in two joint sessions at the Spring meeting. One session, to be held jointly with the Latin America, China, and Far East Committees, will focus on intellectual property issues for biotechnology in Argentina, Brazil, China, and India. A second joint session will be sponsored with the Patent Law Committee to consider the US requirement for written description in different technical fields: chemistry, biotechnology, and electronics. The committee also announced that it was preparing comments against a proposal in Australia to exclude many biological materials from eligibility for patenting.

The Chemical Practice Committee announced that it had organized a road show to be held in Chicago in June, 2011. Topics, speakers, and venue will be sent to members.

Corporate PracticeChair: Kenneth M. Seddon (not pictured)Vice Chair: James D. Carruth (photo)___________________________________________

The Corporate Practice Committee has no news to report.


Diversity in IP LawChair: W. Todd Baker (left photo)Vice Chair: Shayne O’Reilly (right photo)___________________________________________

At the Mid-Winter Institute, the Diversity in IP Law Committee conducted a general business meeting. The meeting was well attended and facilitated by W. Todd Baker, Chair of the Diversity in IP Law Committee, and Shayne O’Reilly, Vice-Chair of the Diversity in IP Law Committee.

The Diversity committee is working to plan some dynamic programs in 2011. Members of our committee are working to have a lunch time speaker at the 2011 Annual Meeting that would discuss the importance of diversity. In particular, the speaker would provide a business case for diversity in law firms. Members of our committee are also working to have a continuing legal education business meeting during the 2011 Annual Meeting. The business meeting would most likely focus on the steps law firms and corporations can take to become more diverse.

The Diversity committee is interested in working with other committees and co-sponsoring events. The committee is co-sponsoring the Women in IP breakfast meeting at the 2011 Spring Meeting with the Women

in IP Law Committee and the Corporate Practice Committee. The committee will continue to seek similar opportunities to work with other committees in the future.

The Diversity committee encouraged everyone to become a liaison to a substantive AIPLA committee. We also discussed formulating subcommittees to accomplish some our goals for this year. The subcommittees we discussed include a speaker development subcommittee, an outreach subcommittee, a subcommittee to update and populate our microsite, and a subcommittee to plan activities and events.

If you are interested in starting a subcommittee related to a particular focus under the umbrella of diversity, please consider spearheading this subcommittee.

The Diversity committee is in the process of planning activities for the Annual Meeting and we welcome any ideas and assistance.

EducationChair: Troy Grabow (left photo)Vice Chair: Hathaway Russell (right photo)___________________________________________

1. 2011 Mid-Winter MeetingThe Education Committee was very active at the 2011 Mid-Winter meeting in Orlando, sponsoring multiple joint Committee meetings.

The Education Committee held a joint meeting with the Biotechnology and Public Education Committees on Thursday February 3, entitled: Talking About Gene Patents With The Public. We had an interesting

moderated roundtable discussion that explored how we can effectively communicate with laypersons about gene patents. We discussed developing our ability to: (1) explain the legal and technical basis for patentability of isolated genes and related diagnostic methods; (2) articulate the policy behind patents as a means of promoting technological advance; and (3) acknowledge and understand the concerns of those who oppose gene patents. The discussion featured


several special guests who shared what they have learned from speaking to the media and public groups about patents and about the AMP v. USPTO (aka ACLU v. Myriad) case:

• Kevin Noonan, Ph.D., MBHB LLP, co-author of the Patent Docs blog, appeared on 60 Minutes in April 2010

• Jackie Wright Bonilla, Ph.D., Foley & Lardner LLP, co-author of amicus brief filed in AMP v. USPTO

• Evelyn McConathy, Montgomery McCracken, chair of AIPLA Public Education Committee, which hosts the site: creativityinbloom.org

In addition, the Education Committee also held a joint meeting with the Patent Law, USPTO Relations, Public Education, and Patent Agents Committees and a family-friendly reception on Friday, February 4. During the first hour of the meeting, Elizabeth Dougherty, Acting Deputy Director, Office of Patent Legal Administration, US Patent and Trademark Office, and Sal Anastasi, Vice Chair of AIPLA’s Public Education Committee, made presentations geared toward the school-aged children in the audience. Both presentations encouraged participation by the children in the audience. Ms. Dougherty’s presentation gave an overview of what a patent is and what the US Patent Office does. She also showed examples of patents. Ms. Dougherty also showed the audience some other resources on the PTO’s website and described the PTO’s work with other entities to encourage children’s interest in science and innovation. Mr. Anastasi then made a presentation in which he described the process for obtaining a patent from the PTO and showed examples of patent drawings for products easily recognizable to a young audience such as Michael Jackson’s grooved shoes, the SuperSoaker™ squirt gun, the Slinky™, and the Wii™ controller. Sample presentations as well as activity sheets are available on the Public Education Committee’s Creativity in Bloom website (http://www.creativityinbloom.org/). All AIPLA members are encouraged to use these resources to teach children in their home cities about patents, other intellectual property, and the importance of innovation. Following a question and answer session, the committees held a family-friendly reception for all attendees.

2. 2011 Spring MeetingThe Education Committee is assisting the Special Committee on the FDA in planning a two-hour CLE

program directed to intellectual property issues confronted by medical device companies. Please be sure to tell your friends and colleagues about this exciting program at the Spring Meeting in San Francisco. More details will follow.

3. Law Professor SubcommitteeThe Education Committee is committed to expanding the law professor initiative, which was launched at the 2010 Spring Meeting. Our new IP Law Professor Subcommittee provides a platform for present and future full-time and adjunct IP law professors to discuss resources available to IP law professors, best practices, techniques for getting involved in teaching, and other issues of interest. We are in the process of planning future activities for this initiative for 2011. Please let us or Jack Hicks ([email protected]) know if you are interested in additional information about the subcommittee.

4. Annual Practical Patent Prosecution Training for New Lawyers Program (“Patent Boot Camp”)The Education Committee coordinates the AIPLA Patent Boot Camp in Alexandria, Virginia. This popular program has been offered annually for many years, and includes instructional sessions and hands-on claim drafting workshops taught by experienced private and corporate practitioners. In 2010, we changed the format to a 2-day Boot Camp instead of the traditional 3-day format in order to reduce the time and monetary commitment needed from attendees and to streamline the program. The results were excellent as we increased enrollment substantially from the prior year and received very positive feedback from the attendees. The 2011 Patent Boot Camp is currently scheduled for August 25-26, 2011, at a new location, the Hilton Alexandria Old Town.

We have also started a subcommittee for planning of the 2011 Boot Camp. One way for committee members to get involved would be to attend or serve as an instructor at the Boot Camp; please let us know if you would like to volunteer. Please be sure to look for our upcoming announcements and encourage your friends and colleagues to attend the 2011 program.

5. Annual Trademark Boot CampTo increase awareness of AIPLA as a preeminent organization and resource for U.S. trademark attorneys and to further the AIPLA strategic mission


of enhancing knowledge for a diverse IP community, the Education Committee assisted the Trademark Committee in organizing the second annual Trademark Boot Camp program held on June 10, 2010, at the Westin Alexandria. Generally following the format of the Patent Boot Camp, the Trademark Boot Camp covers basic trademark prosecution techniques and is primarily directed to young attorneys or attorneys new to the area of trademark prosecution. The 2010 Trademark Boot Camp was very well attended, actually hitting our maximum limit of attendees (although we found a way to let a few more attendees sign up on the day of the event). We received many positive comments from attendees. Plans for the 2011 Trademark Boot Camp are underway and we look forward to another successful program. The 2011 Trademark Boot Camp is currently scheduled for June 10, 2011 in Alexandria, Virginia. Please tell your friends and colleagues about this great program and encourage them to attend. Also, please contact one of us or Amie Peele Carter ([email protected]) or Keiran Doyle ([email protected]) of the Trademark Law Committee if you are interested in getting involved with the Trademark Boot Camp.

6. Online “Webinar” ProgramsThe Education Committee participated in several online webinars in recent years, including a joint program in 2010 with the Law Students and Young Lawyers Committees on how not to let the economic downturn slow your professional development. We are planning on having other online programs in 2011. Please let us know if you have any ideas for future programs.

7. The Coordination Role of the Education CommitteeThe Education Committee will continue to serve as a communication, networking and teaching resource. The committee plans to continue its liaison activities with the substantive committees and hold joint meetings with other committees on topics of interest to a cross-section of attorneys. We are also planning various activities with other committees such as the Young Lawyers and Law Students Committees. Finally, please let us know if you have any ideas for activities or new subcommittees for the Education Committee, or if you would like to volunteer.

The Electronic and Computer Law Committee (ECLC) held a committee member only meeting at the 2011 AIPLA Mid-Winter meeting on Friday, February 4, 2011 from 7:30 am to 8:30 am.

Jacques Etkowicz, ECLC chair, started the meeting at 7:30 am.

Sub-Committee reports:

PTO Relations (Lynn Anderson/Mike Dunnam)

Mike reported that they are planning spring directors call-in for May, but the date has not been set. Interview practice document arising out of Partnering in Patents program has been completed and posted. 2010 Partnering in Patents format will be used for 2011 program with morning brainstorming on a topic of interest and presentation to group in afternoon.

Webinar (Valentina Boyet/Blake Reese/Steve Lundberg)

Steve reported that there are webinars planned for week of February 7, March/April, and May/June.

Electronic and Computer Patent Prosecution Subcommittee (Tim Bianchi/Jeff Rank/Scott Stinebruner)

Jeff reported that software comments received by Commissioner of Patents, but no response yet.

New Zealand - likely to be change in government which may affect software protection - currently only embedded software on chip or in appliance - no computer readable medium claims.

Canada - business methods are patentable.

Electronic and Computer LawChair: Jacques L. Etkowicz (left photo)Vice Chair: James Hallenbeck (right photo)___________________________________________


Jacques reminded attendees that joint session with the Emerging Technologies Committee and the Special Committee on Mergers and Acquisitions will be in afternoon at 3:45.

Blake reported that the program for the Spring meeting joint committee session with the Special Committee on Standards & Open Source is under control.

Mike Dunnam reported that a road show (IP Summit) is being planned for August in Minneapolis.

Annual Meeting

Appeal brief track is proposed.

Joint committee meeting with diversity committee proposed for the annual meeting.

Manny - consider coordinating with YLD. Jacques will follow up with Frank Bruno, liaison to YLD.

Committee Meeting Ideas

Jeff Rank - companies have money to devote to diversity education - could have corporations come in and discuss how they handle diversity.

Jim Hallenbeck - have a legal substantive program and invite the diversity committee to help fill in the speakers.

Jacques requested topic suggestions for 2012 AIPLA Mid-Winter Meeting in Las Vegas. Jeff Ranck is on planning committee. Theme - Life, Law, and the pursuit of happiness

Jacques approached by BNA for AIPLA to sponsor book on IP in Cyberspace. Let Jacques know if any interest. Manuscript requested by June 2011.

Jim Hallenbeck - proposed copyright as potential topic. It was agreed that no meeting in recent memory.

Gaming issues and Apps hot (e.g., World of Warcraft and censorship/control of apps.)

Invite Copyright Office to participate.

4-way joint committee meeting proposed - ECLC/Copyright/Trademark/Diversity Invite diversity committee members to speak.

General discussion regarding AIPLA Spring meeting, summer Road show and Minneapolis IP Inn of Court.

Phillip T. Petti reminded ECLC that he was liaison to the AIPLA board and requested that members contact him if they had any comments or needed to communicate with the board.

Meeting came to a close at 8:30 am.

Emerging TechnologiesChair: Brian H. Batzli (left photo)Vice Chair: Kirk A. Damman (right photo)___________________________________________The Emerging Technoligies Committee had no news to report.


FellowsChair: John T. Wiedemann (left photo)Vice Chair: Sheldon H. Klein (right photo)___________________________________________

The Fellows Committee has no news to report.

Industrial DesignsChair: Damon A. Neagle (not pictured)Vice Chair: David R. Gerk (not pictured)___________________________________________

The Industrial Designs Committee had no news to report.

International and Foreign LawChair: Maria Eliseeva (left photo)Vice Chair: William S. Boshnick (right photo)___________________________________________

See PCT Issues Committee report, p. 67.

International EducationChair: Marc A. Hubbard (left photo)Vice Chair: James E. Ruland (right photo)___________________________________________Mission:The Committee has two main functions. First, in response to requests, it meets with visiting delegations and arranges for speakers for lectures, seminars, and other meetings outside the United States. Second, the committee develops and produces educational programming for international audiences, primarily through online programs on U.S. IP law and practice specifically targeted to practitioners,

government officials and others outside the U.S. who are interested in IP law, policy and practice. The committee coordinates its activities with those of the Online Programs, International and Foreign Law, the IP Practice in Europe, the IP Practice in Japan, the IP Practice in Latin America, the IP Practice in the Far East Committees, and the Special Committee of International Practitioner Associations.


SPECIFIC TASKS UPDATE AND GOING FORWARD:We have conducted our first online program on April 28. The presentation featured two German-speaking U.S. patent lawyers, who discussed obviousness after KSR. The program was advertised by email to German-speaking IP lawyers in Germany, Austria and Switzerland. Jim Ruland, Shannon Beech, Kevin Kunzendorf, and Thomas Becker (a German patent lawyer and member of the committee) coordinated the program. The program was promoted primarily through an email invitation sent to a recipient list that had to be independently compiled without the direct assistance of patent associations Germany because of legal restrictions.

We replayed the program on November 17, 2010 to better utilize the local patent organizations for promoting the program and increasing attendance. We had assistance from the VPP and Patentanwaltskammer to publicize the program. As a result, we had 137 registered sites in attendance with an estimated audience of 200-300 practitioners. In particular, we had a great number of registered corporate sites due to the help of the VPP.

The committee also coordinated an online program on August 28, 2010 for the Association of Singapore Patent Agents. The association gathered between 30 and 50 of its members at a single site to listen to the presentation. Members of the Schwegman, Lundberg & Woessner firm gave the presentation.

We are in the process of developing at least four online programs for 2011. Members of the committee, possibly in conjunction with other substantive committees, will coordinate each of the online programs. Coordination involves identifying a topic, finding speakers and sponsors, and arranging for promotion within one or more targeted jurisdictions. Most programs will likely be broadcast live using Citrix, though other platforms will be used. The coordinators may work with other AIPLA committees or possibly local IP associations outside the U.S. in planning the program.

We have reached at and begun initial conversations with the Chartered Institute of Patent Attorneys (CIPA) in the UK about producing online programs on U.S. practice for its members. We also have plans to reach out the Japanese, German, and Chinese IP associations to explore the possibility of cooperating in producing online programs about U.S. practice for their members.

Moreover, we were working in conjunction with the Special Committee of International Practitioner Associations to conduct a program for the proposed rules for deferred examination once the proposed rules are published as well as conducting another German program in the second half of 2011. However, in light of the published rules only pertaining to a “single” track, we have delayed this program until additional rules publish, should there still be an interest at that time.

GOALS:1. Produce at least four online programs for

international audiences during the year.2. Recruit additional members to join the

committee.3. Explore approaches for expanding audiences

for programs. One approach is to establish relationships with IP associations outside the U.S. in order to obtain assistance in promoting and possibly also planning and sponsoring programs. Another, related approach is to begin a formal program of promoting our programming services for U.S. IP law to foreign IP associations, including soliciting requests for online programs and offering speakers for local programs.

4. Establish a list of speakers possessing a high degree of proficiency in foreign languages.

5. Coordinate with the AIPLA to look for ways committee can assist in implementing the AIPLA’s international strategies.

6. Work with AIPLA to find a way of making recordings of the online programs available on the Web site, in a location that is easily found by practitioners outside the US who are not AIPLA members outside the US, as well as marketing the existence of the programs to those individuals.

7. Establish more formal working relationships with other international committees for purposes of coordinating international education efforts and producing programming.


At the Mid-Winter Institute, the Committee focused on several issues:

1. The Committee discussed with the Board liaison and with Jim Crowne the previously-prepared comments requested by the Commission on public interest evidence. The Committee agreed to work to revise the comments and to arrive at a subset that reflected consensus of the Committee, and the Subcommittee responsible for those comments has since made revisions. The revised comments have been forwarded to the Board for review and approval.

2. The Committee discussed the agenda for the Spring Meeting educational session, including the speakers and topics.

3. The Committee discussed setting an agenda and beginning to identify speakers for the Annual Meeting, including representatives from Customs and Border Patrol as well as sitting ALJs.

4. The Committee briefly discussed the proposed CBP inter partes procedures, and is hopeful that at least a draft of those procedures will be available for discussion at the Annual Meeting.

5. At the next meeting, the Committee intends to discuss providing comments regarding the proposed CIT legislation, in conjunction with ITC Trial Lawyers Association.

International Trade Commission (ITC)Chair: L. Scott Oliver (left photo)Vice Chair: Kim Choate (right photo)___________________________________________

Inventor IssuesChair: Mark E. Ungerman (left photo)Vice Chair: Darren Franklin (right photo)___________________________________________

The Inventor Issues Committee has no news to report.

IP Law AssociationsChair: Laura J. Zeman-Mullen (not pictured)Vice Chair: Anthony M. Zupcic (photo)___________________________________________

The IP Law Associations Committee has no news to report.


See Chemical Practice Committee report, p. 48.

IP Practice in Europe Co-Chair: John H. Hornickel (not pictured)Co-Chair: Joerg-Uwe Szipl (not pictured)___________________________________________

IP Practice in the Far EastChair: Kenneth K. Cho (not pictured)Vice Chair: Hung Bui (not pictured)___________________________________________

The IP Practice in Japan Committee has no news to report.

IP Practice in Japan Co-Chair: George W. Lewis (photo)Co-Chair: Paik Saber (not pictured)___________________________________________

IP Practice in Latin AmericaChair: Roberto Capriotti (left photo)Vice Chair: James E. Larson (right photo)___________________________________________

At the Mid-Winter Institute in Orlando, Florida, the IP Practice in Latin America Committee (“LAC”) conducted a successful one-hour meeting. The meeting was chaired by Mr. Roberto Capriotti, Chair of the LAC. Mr. James Larson, Vice-Chair of the LAC, was unable to attend and his presence was missed. The meeting included a discussion encouraging the LAC members to provide comments and ideas for future meeting topics of interest to be presented at AIPLA Stated Meeting educational sessions. Also, the meeting included a discussion regarding visiting a Latin American country including the

Patent, Trademark and Copyright Offices and main Intellectual Property Courts in 2011, 2012 and 2013. Such discussions included the possibility of sending an AIPLA delegation to the ASIPI XVI Workshops and Administration Council, which will take place in Santa Cruz, Bolivia, October 16 to 19, 2011. Also discussed was a possible trip to Mexico City, Mexico, in April 2012 and a trip to Rio de Janeiro, Brazil, in August 2013 just prior to the National ABPI Congress. These travel proposals were well received and generated enthusiasm.

The IP Practice in the Far East Committee has no news to report.


The main goal of the Law Practice Management Committee this year continues to be the timely production of the Report of the Economic Survey 2011. The Committee is confident that it is on track to meet this priority goal. Survey responses have been received and we would like to thank all who participated.

In addition to discussing the survey status at the Mid-Winter meeting, we discussed ideas for programs for future AIPLA meetings.

For the Spring Meeting in San Francisco, we have agreed to hold a joint program with the Membership Committee on the topic of forming a law firm.

At the 2011 Annual Meeting, we are planning a program focused on client development.

We have also agreed to collaborate with the Women in IP Law Committee on a program relating to recruiting and retaining female IP lawyers in firms and companies. That program is intended to be held at a breakfast meeting at the Mid-Winter Meeting 2012.

Law Practice ManagementChair: Steven M. Auvil (left photo)Vice Chair: David A. Divine (right photo)___________________________________________

Another topic of discussion was the implementation of a subcommittee that would be responsible for managing the LAC micro-website portion of the AIPLA website. A two-stage process was proposed where initially the current LAC micro-website would be revised and updated and then would be maintained in accordance with a defined plan put forth by the LAC committee chair and vice-chair. The subcommittee would be responsible for implementing the plan. One suggestion for the second phase of the micro-website project was the addition of a WIPO “like” search feature. The micro-website management subcommittee would include a chair and vice-chair and the positions will rotate every two years with the vice-chair taking the position of chair for continuity. Invitations to the new chair and vice-chair of the micro-website management will be sent out in due course.

The discussion then turned to the rotation of the chair and vice-chair positions for the current South American and Mexico/Central American subcommittees. A new chair and vice-chair will be appointed for each subcommittee every two years with the plan that the vice-chair will rotate into the chair position in order to provide four years of continuous service to the sub-committee leveraging on the acquired knowledge base. The role of each subcommittee is to work on designated projects as determined by the LAC chair and vice-chair. The current project is to report on major IP events as well as practical filing tips in the various Latin American countries over the course of the year.

In alignment with our post-meeting social activities, several of the attendees met for drinks at a local hotel pub after the business meeting.


Licensing and Management of IP AssetsChair: Kevin A. Wolff (not pictured)Vice Chair: Robert O. Lindefjeld (not pictured)___________________________________________

The Licensing and Management of IP Assets Committee has no news to report.

In lieu of holding a formal meeting, the Membership Committee held a teleconference to discuss attainment of its goals during the 2010-2011 year. The Committee is working to increase the membership of AIPLA and encourage members to become active in the organization. Specifically, the Committee is working with the Board to encourage more law students to join the organization. To this end, we are drafting a brochure

that will inform law students about the organization and why it is in their interests to join. We are also identifying law school faculty who would be likely to distribute the brochure their students. The Committee is also continuing to coordinate the TSC Liaison program as a mechanism to increase member involvement in AIPLA.

MembershipChair: Bryan W. Bockhop (left photo)Vice Chair: Cheryl H. Agris (right photo)___________________________________________

Law StudentsCo-Chair: Joshua Miller (not pictured)Co-Chair: Deb Sengupta (right photo)___________________________________________

See Mentoring committee report, p. 63.


MentoringChair: Elizabeth Burke (left photo)Vice Chair: Daphne C. Lainson (right photo)___________________________________________

The Mentoring Committee held a joint meeting with the Young Lawyers and Law Students Committees at the Mid-Winter Institute.

Our Committees provided an introduction to Skype, Linked In, Tweet and Facebook. An overview of Skype was given by Deb Sengupta (Sughrue Mion), together with an on-site demonstration. Deb also explained the ins and outs of Linked In.

Kevin Kuzendorf (Sughrue Mion) provided an explanation of Twitter and how it can be used professionally. The Facebook presentation was given

by Jack Abid, who is also the Mentoring Committee’s new chair of the Technology Subcommittee.

Presentations will be available on the Mentoring Committee’s microsite.

For the Spring meeting, the Mentoring Committee plans on having a working committee meeting. For those who cannot attend, a conference call number will be provided.

Online ProgramsChair: Shannon Beech (left photo)Vice Chair: Brad Chin (right photo)___________________________________________

MISSION:Our 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 other groups within the organization to identify, develop, and provide, efficiently and effectively, online program content to the AIPLA as a whole and to their constituents and to facilitate others in the AIPLA to utilize online media for program delivery.

EXECUTIVE SUMMARY:The focus in the past calendar year was the preparation and presentation of live online CLE programs based on two primary platforms, KRM and Citrix GoToWebinar. In 2010, Online Programs successfully organized and hosted 19 KRM programs (an increase of 6 program)

with an additional quick turnaround program on Patent Reform, and 12 Citrix GoToWebinar programs. In 2011, we are on track to provide 17 revenue-generating programs, and 1-2 quick turnaround program, as appropriate. Moreover, the Committee is developing expertise in the delivery of live online programs through other low cost vehicles in cooperation with other AIPLA Committees. The Committee also continues to provide live webinars at the AIPLA Stated Meetings. As the number of programs has grown, Online Programs has increased the number and the practice diversity of our coordinators through the TSC Liaison program and help from the Young Lawyers Committee. To train these liaisons, we have initiated a mentorship program to facilitate the sharing of institutional knowledge between all coordinators. In an effort to keep aware of the many activities of the various AIPLA committees, we have initiated an internal liaison program to reach out to the AIPLA committees on a regular ongoing


basis. Additionally, Online Programs continues to work to build and maintain an active and growing catalog of enhanced recorded content from the Stated Meetings, previous online programs and other AIPLA educational events, including providing support for the new live streaming of the Stated Meetings.

SPECIFIC TASKS UPDATE AND GOING FORWARD:The Online Programs Committee has taken on the following specific tasks to advance the overall goal of the Committee to put on high quality, diverse and financially responsible live, interactive programs. In 2011, Online Programs will provide 20-22 programs in the calendar year. We have assigned and tasked committee liaisons to substantive committees to facilitate the development of online content.

We have focused on developing expertise on the GoToWebinar platform and accompanying procedures through our subcommittee by identifying and training coordinators to host, train, and facilitate webinars for the substantive committees in AIPLA. For example, this subcommittee regularly assists the Patent Litigation, International Education and Electronic and Computer Law Committees in performing online programs with Citrix GoToWebinar. The goal is to have subcommittee members available to assist other AIPLA committees to use the Citrix platform and reduce the workload on AIPLA headquarters staff.

In 2011, the Committee will continue to support AIPLA’s sponsorship of the Career and Practice Management series of webinars that is complimentary to all AIPLA members. The co-chairs for this sub-committee are Hetal Kushwaha and Sheetal Patel. This series has been performed on the GoToWebinar program with one program offered every 1-3 months. The work on reinvigorating the microsite is ongoing with a subcommittee ensuring that procedures, quality data and attendance parameters for completed programs are updated on an ongoing basis.

OVERALL APPROACH:The Committee continues to pursue three major avenues of approach to providing online programs.

Recorded Live Presentations. AIPLA continues to explore various platforms for recording live meeting content, including recording from live streaming video of the stated meetings. The Online Programs

Committee with be working AIPLA staff to assist in this endeavor.

Live Moderated Online Programs. The Committee continues to work with KRM to produce and deliver high-end, live, interactive online CLE programs. We continue to provide online programs at a rate of three programs every two months with the flexibility to do 1-3 additional rapid response programs. We anticipate maintaining this frequency of programs this year.

Internally Administered Web-based Programs. We are using Citrix GoToWebinar as our platform for low cost programs. We have appointed Committee members under the guidance of the Chair and Vice-Chair to help with coordinating this class of online programs, and as committee numbers increase, it is likely that several members will rotate through this role for respective programs. Our goal is to assist the Corporate Practice Committee to conduct their committee programs to achieve their goals using the Citrix GoToWebinar platform. At this time, the Corporate Practice Committee, Electronic and Computer Law, International Education, and Patent Litigation Committees have conducted programs using this platform. We are also using this platform to present the Career and Practice Management series of webinars sponsored by AIPLA as a value-added service to all AIPLA members. We are currently examining the possibility of using the Citrix platform to perform non-CLE, attendee-paid programs.

PROGRESS REPORT ON LIVE, INTERACTIVE ONLINE PROGRAMS:

Financials:We have revised the current pricing structure with a goal of obtaining a break-even point at about 100 sites. We are continuously monitoring our financial returns to ascertain the economic success of the programs.

Quality (Absolute):The reviews from the attendees through the evaluations have been very good, with a high percentage filling out the online evaluation (compared with the percentage who evaluate the stated meetings). The quality has been about the same or better than the stated meetings.

The Programs:A history of the live interactive seminars that Online Programs has completed since December 2004 is available on the committee microsite.


Future:The following is our schedule of upcoming programs for 2011:

ONLINE PROGRAMS SCHEDULEDate Program Substance Program CoordinatorsMar 2/11 KSR and the Ripple Effect: Examining the Broad and Increasing

Impact of KSR on Patent Litigation and Practice – Part I (Speakers: Jeff Lewis & Warren Woessner)

Brad Chin

Mar 16/11 What You Really Need to Know about Patent Interference Practice (Speakers: Todd Baker & Herb Hart)

Shannon Beech

Apr 20/11 KSR and the Ripple Effect: Examining the Broad and Increasing Impact of KSR on Patent Litigation and Practice – Part II (Speakers: Stephen Kunin & Harold Milton)

Tracey HarrachCheryl Agris

May 4/11 Trademark Topic (TBD) (Speakers: TBD) Michael BallardTashia Bunch Henderson

Jun 1/11 Inequitable Conduct and the Federal Circuit: Where are We Now? (Speakers: Felicia Boyd & Jonathan Sobel)

Arlene NealJudy NaamatMatthew Zehrer

We continue to have dialog with various committees about content they would like to see and/or help develop.

We have been assisting the Electronic and Computer Law, International Education, Patent Litigation, and Special Committee on IP in China Committees in performing online programs using GoToWebinar on topics of significant interest for these committee members. The cost of these programs is offset by seeking sponsors to pay a sponsorship fee to cover overhead costs.

We are examining the potential to use the GoToWebinar platform to perform pay-per-use non-CLE programs, including the potential to do a series of programs adapting the secretaries and paralegal AIPLA conference to the online format.

To increase coordinators and to better the content of programs to the varied AIPLA membership, Online Programs has initiated the TSC Liaison Program with the collective trademark committees to expand the online offerings to members in the trademark practice groups. We have also received a large number of volunteers from the Young Lawyers Committee, all of whom have been matched up with experienced coordinators for training and mentoring purposes.

We have instituted an internal liaison program within our committee in which we have matched our coordinators with AIPLA’s substantive committee. Our coordinators will be reaching out to the chairs and vice-chairs of AIPLA’s substantive committee on a regular and ongoing basis to ensure that we are able to provide program that are current, of interest and are on the hottest topics in intellectual property law.

Patent AgentsChair: Esther M. Kepplinger (left photo)Vice Chair: Jonathan M. Madsen (right photo)___________________________________________

See Patent-Relations with the USPTO Committee report, p 67.


Patent Law Chair: Barbara A. Fiacco (left photo)Vice Chair: Kennth N. Nigon (right photo)___________________________________________

The Patent Law Committee has no news to report.

Patent Litigation Chair: Robert W. Payne (left photo)Vice Chair: Dianne B. Elderkin (right photo)___________________________________________

At the Patent Litigation Committee’s meeting at the Mid-Winter meeting, Bill Rooklidge of Jones Day made a presentation, and led a discussion, on issues surrounding patent infringement pleading post-Iqbal. Bill explained his position that some courts are not requiring plaintiffs to plead infringement with the type of specificity required by Iqbal because patent infringement pleadings are believed to be sufficient if they comply with Form 18 to the Federal Rules of Civil Procedure. Bill noted that Form 18 was developed decades ago and that it does not address many issues and concerns that arise in modern-day patent litigation, such as method claims, contributory infringement, multi-defendant cases, and cases in which large numbers of claims are asserted.

In 2010, the Committee passed a resolution for consideration by the Board, proposing that Form 18 either be updated or deleted. The Board did not approve the resolution, and the Committee meeting

attendees had a lively discussion of the reservations certain Board members had expressed about the resolution. There was discussion about whether the resolution should be renewed and how the concerns that had been expressed could be addressed, as well as discussion about whether action was needed at all.

The Patent Litigation Committee will have a joint meeting with the Trademark Committee at the Spring Meeting. The joint meeting will immediately follow a mock PI motion hearing on the general program, and the intent is to continue the discussion about the mock hearing, with participants from the mock hearing, at the joint meeting.

The Committee is planning a meeting for the October Annual Meeting centering on the work of its model jury instruction subcommittee.


PCT IssuesChair: Jay Erstling (photo)Vice Chair: Rick Neifeld (not pictured)___________________________________________

Robert Stoll, Commissioner for Patents, spoke at our joint Patent-Relations with the USPTO/Patent Agents Committee Meeting. Mr. Stoll commented on a number of USPTO topics, as well as took questions and comments from the audience. Topics covered include: a pilot workforce program for a future (soon) Detroit USPTO office, Patent Examiner Technical Training Program (PETTP), Peer-to-Peer Project, MPEP Collaboration Tool, Enhanced Examination Timing Control, Reengineering Patent Processes, Patents ‘End-To-End’ IT Development Initiative, Pendency Reduction Initiative, Quality Improvement and metrics, and Pendency Reduction Initiative.

There was also a brief discussion of the Patent-Relations with the USPTO Committee’s microsite that has been recently updated to not only include reports and slides from meetings, but also various direct links to certain USPTO web page that members may find useful.

Attendees were reminded of the Patent-Relations with the USPTO Committee’s efforts to review and solicit comments to Federal Register Notices on patent matters for possible submission by AIPLA to the USPTO. The comments submitted committee members is greatly appreciated.

Patent-Relations with the USPTOChair: Gregory D. Allen (left photo)Vice Chair: Nicholas P. Godici (right photo)___________________________________________

AIPLA has three stated meetings per year, winter, spring, and fall. This is the report from our winter stated meeting. We jointly met with the Foreign and International Law Committee for a CLE session. There were about 60 attendees.

The ongoing big news is PCT-PPH. Statistics (provided by Carl Oppedahl and Mike Neas) seem to be bearing out that PCT-PPH is in fact effective in reducing overall cost to both the PTO(s) and the applicants by reducing the number of office actions to close of prosecution, and reducing pendency. Matt Bryan from WIPO noted that Australia has put forward a proposal (at a meeting in the far east a few days ago) for the many varying bilateral PCT-PPH agreements to be standardized, that is, replaced by, a multilateral agreement, so that all requirements for PCT-PPH are uniform across jurisdictions.

The USPTO has promulgated a form for PCT-PPH treatment for an application that claims priority or is the national stage of a PCT in which the USPTO is the ISA. The requirements for highway treatment in this case are that the claims are deemed in the PCT report to be novel, inventive, and industrially applicable. It should be noted that filing a PCT application is therefore a viable alternative to a U.S. 111(a) application, even when an applicant has ruled out filing anywhere other than the US.

Other significant news: Rosspat is still not online as an International Search Authority for US applicants, and Mike Neas could not specify when it would be online.

WIPO continues to supplement its online resources available to applicants, increasing its prior art


database and multi lingual search interface, with ongoing efforts for online file inspection/filing system. However, WIPO continues supporting PCT-Safe (client side filing software), instead of placing its IT resources behind implementing an EFS-like system.

For your information:The May and Fall meetings of the PCT Issues Committee will also be CLE sessions, with follow up on PCT-PPH strategies, statistics, and practice points. The Spring Meeting will include speakers

from WIPO and the USPTO. The Annual Meeting will include private practitioners from around the world.

If you are interested in obtaining details and meeting and discussing the panel members, please consider attending the future meetings in person.

If you are interested in joining the PCT subcommittee on resolutions, contact Rick Neifeld.

Professional ProgramsChair: Steve Malin (left photo)Vice Chair: Manny Schecter (right photo)___________________________________________

The Professional Programs Committee conducted its Meeting on February 3, 2011. Over fifty Committee members attended the Meeting in person or by telephone. Committee Chair Steve Malin thanked the Committee for its hard work in planning the 2011

Spring Meeting and for its work to date planning the 2011 Annual Meeting in Washington DC. The Committee discussed status of the Spring Meeting and topic content for the Annual Meeting.

Professionalism and EthicsChair: Guy Donatiello (left photo)Vice Chair: Raymond Van Dyke (right photo)___________________________________________

The Professionalism and Ethics Committee has no news to report.


Public EducationChair: Evelyn H. McConathy (left photo)Vice Chair: Salvatore Anastasi (right photo)___________________________________________

The Public Education held two joint meetings with other committees at the Orlando Mid-Winter Institute. The first of the two meetings was a joint meeting with the Bio-Tech Committee. A panel and roundtable discussion was offered on how to communicate with laypersons about gene patents. Panelists listed below shared their experiences with speaking to the media and public groups about patents and about the AMP v. USPTO (aka ACLU v. Myriad) case.

Kevin Noonan, Ph.D., MBHB LLP, co-author of the Patent Docs blog, appeared on 60 Minutes in April 2010 (who graciously participated by Skype after his flight from Chicago was canceled)

Jackie Wright Bonilla, Ph.D., Foley & Lardner LLP, co-author of amicus brief filed in AMP v. USPTO

Evelyn McConathy, Montgomery McCracken, chair of AIPLA Public Education Committee, which hosts the site: creativityinbloom.org

In addition to identifying key talking points (to be presented in next month’s issue of the Buzz), we learned about tools and materials available for all of us to use when talking to groups, such as school children and other non-patent audiences. Sal Anastasi presented materials available to all of us via the site www.creativityinbloom.org, developed by the Sal and Scott Daniels of the AIPLA Public Education Committee. See the “Youth Education” tab on their site (http://www.creativityinbloom.org/youtheducation.html) to download PowerPoint presentations for use in youth education or career day programs. Biotechnology Committee ViceChair, Jim Kelley, informed us of another resource, via

Street Law: http://www.educateip.org/index.php/curriculum/51-toolkit, which can help with teaching about IP law.”

The second meeting was a joint meeting with the Patent Law Committee, PTO Relations, Education, and Patent Agents committees. During the first hour of this meeting, Elizabeth Dougherty, Acting Deputy Director, Office of Patent Legal Administration, U.S. Patent and Trademark Office and Sal Anastasi, Vice Chair of AIPLA’s Public Education Committee, made presentations geared toward the school-aged children in the audience. Both presentations encouraged participation by the children in the audience. Ms. Dougherty’s presentation gave an overview of what a patent is and what the U.S. Patent Office does. She also showed examples of patents. Ms. Dougherty also showed the audience some other resources on the PTO’s website and described the PTO’s work with other entities to encourage children’s interest in science and innovation. Mr. Anastasi then made a presentation in which he described the process for obtaining a patent from the PTO and showed examples of patent drawings for products easily recognizable to a young audience such as Michael Jackson’s grooved shoes, the SuperSoaker™ squirt gun, the Slinky™, and the Wii™ controller. Sample presentations as well as activity sheets are available on the Public Education Committee’s Creativity in Bloom website (http://www.creativityinbloom.org/). All AIPLA members are encouraged to use these resources to teach children in their home cities about patents, other intellectual property, and the importance of innovation. Following a question and answer session, the committees held a family-friendly reception for all attendees.

Public AppointmentsChair: Michael K. Kirk (not pictured)Vice Chair: William C. Rooklidge (not pictured)___________________________________________

The Public Appointments committee has no news to report.


2011 Committee Plans - Brief SummaryThe following tasks support the Public Education Committee’s strategic goals and vision to educate the public and its representatives on the benefits and value of intellectual property through greater understanding of its meaning, and to promote cooperation on this effort with the rest of the IP community, while pursuing similar goals and objectives with other AIPLA Committees.

Hill Day: We hope to again join with the USPTO and WIPO to celebrate World IP Day with a Joint Program and reception for invited members of Congress. Our goal remains, once again, to increase awareness and educate the decision makers on the Hill about intellectual property. Chair Evelyn McConathy will be coordinating this effort.

Website and Blog Monitoring: The Creativity in Bloom (CIB) website was launched in September 2009, and we continue to focus on populating that site with articles and reports relating to information that is expressly positive or negative regarding intellectual property rights, as well as reports from the Committee. Michael Stewart will be coordinating this effort with, Vice Chair Sal Anastasi, and Staff members, Randy Sagara and Zehra Fazal.

Youth Education: The Youth Education Subcommittee under the direction of Scott Daniels and Vice Chair Sal Anastasi will continue to develop content for posting on CIB and for use by our membership. Next steps include development of a survey to be completed by members who use the

presentations and continuous improvement of the presentation “packages” based on user feedback and a desire to make them easy to use.

Patent and Trademark Depository Library Program Presentation: The USPTO partners with over 80 libraries in 45 states, plus the District of Columbia and Puerto Rico, to provide access to and training on U.S. patent and trademark information via the Patent and Trademark Depository Library Program (PTDLP). Each Spring, there is a mandatory meeting of the librarians staffing the PTDLs, and because of the Public Education Committee’s role in public outreach on matters involving intellectual property, they have invited Chair Evelyn McConathy as a guest speaker at the training seminar on April 14, 2010 at the USPTO.

Cooperation/Contact with the IP and Innovation Community: The Committee is working with AIPLA Headquarters and its Board liaisons to coordinate contacting other organizations, such as the National Inventors Hall of Fame, the Federal and District Courts, the PTO and Copyright Offices, IPO, ABA-IL, INTA, and the Copyright Society to reach out for shared insight and to establish a foundation for potential cooperation. Once contacts are established, the Committee will identify a liaison for each group it has or builds a relationship with (possibly one with a pre-existing relationship which can be leveraged) to have a single point of contact to reduce potential confusion and avoid overloading or interfering with mutual efforts.

Special Committee on the FDAChair: Freddie K. Park (left photo)Vice Chair: Denise M. Kettelberger (right photo)___________________________________________

The Special Committee on the FDA has no news to report.


Special Committee on GeneticResources, Traditional Knowledge,and FolkloreChair: Thomas T. Moga (left photo)Vice Chair: DeAnn F. Smith (not pictured)___________________________________________The Special Committee on Genetic Resources, Traditional Knowledge & Folklore joined with the Copyright Law Committee at the Mid-Winter Institute to discuss folklore as intellectual property and its treatment in Mexico, Colombia and Panama. Speakers included Jaime Delgado of Goodrich, Riquelme & Asc. (Mexico), Fernando Triana of Triana, Uribe & Michelsen (Colombia), and Jose Vega of J. Vega & Asociados (Panama). Attendees learned that the recognition of certain forms of folklore as a property right is becoming well established

in these countries. A highly informative and sometimes surprising discussion followed the presentations.

At the Spring Meeting the Special Committee will meet to plan the upcoming 2011 Annual Meeting. It is tentatively planned to have a two-hour joint meeting to address the global treatment of genetic resources in both law and practice with speakers from China, India, and Brazil.

Special Committee on IP Practice in ChinaCo-Chair: William D. Fisher (left photo)Co-Chair: Ying Tuo (right photo)___________________________________________

After its establishment by the AIPLA President, David Hill, in the October of 2010, due to the rising level of IP activity and development in China, and the growing importance of China IP issues to U.S. IP professionals and U.S. IP issues to Chinese IP professionals, the Special Committee on IP Practice in China (“China Committee”) had its first committee meeting on February 4, 2011 in the Mid-Winter Institute. Twenty five members attended the meeting on site and more than ten members joined the meeting by telephone.

Several agendas were discussed in the committee meeting, including: (1) finding volunteers for committee microsite-master; (2) updating on USPTO-AIPLA roundtable on Chinese utility model & design patents in the March of 2011; (3) updating on webinar on US patent issues for Chinese patent practitioners in the April of 2011; (4) planning the Spring committee meeting in May of 2011; (5) planning annual committee meeting in the October of 2011; (6) discussing possible delegation to China in 2011-2012; (7) updating the status of relationships with Chinese IP organizations;

and (8) the process for obtaining and disseminating information of interest to committee members.

Since its establishment, the China Committee has started two projects. The first project is to have a webinar with the All China Patent Agent Association (“ACPAA”) to Chinese patent practitioners about US patent prosecution practice in the April of 2011. The second project is to assist AIPLA in having a roundtable on Chinese utility model & design patents with the USPTO in the March of 2011.

According to the understanding between AIPLA and the China Intellectual Property Society (“CIPS”), the two organizations will visit each other in each alternative year. After CIPS’ recent confirmation that it will visit AIPLA in the AIPLA Annual Meeting in the October of 2011, the China Committee will start the preparation to receive CIPS’ delegation in the AIPLA Annual Meeting. The mission of the newly-established China Committee is to (1) provide its members with updates on IP laws and issues in China; (2) provide Chinese


Special Committee on LegislationCo-Chair: Sharon A. Israel (left photo)Co-Chair: Patrick Coyne (right photo)___________________________________________

The Special Committee on Legislation has no news to report.

Special Committee on Mergersand AcquisitionsChair: Neil Henderson (left photo)Vice Chair: Peter E. Mims (right photo)___________________________________________The Special Committee on Mergers and Acquisitions has no news to report.

IP professionals with updates on IP laws and issues in the U.S.; (3) promote exchanges and enhance the relationship between the U.S. IP community and the Chinese IP community; and (4) cultivate exchanges and cooperation between AIPLA and like organizations in China.

The China Committee’s overall goal in 2011 is to have the special committee become a regular committee. To achieve this goal, we have identified the following areas and activities to continuously work on in 2011.

1. As a new committee, we will work on establishing membership and active participation in the committee. To that end, we will promote the committee to AIPLA members, collaborate with other committees on issues of mutual interest, and provide high-quality programs to committee members.

2. We have established a close relationship with the China IP Society, the All China Patent Agents Association, and other IP organizations in China. For 2011, we plan to maintain communications

and relations with these organizations, possibly receive a delegation from China, begin planning a delegation to China for 2012, and increase our educational exchanges. We will also explore establishing new relationships with other IP organizations in China, such as the China Enterprise Confederation.

3. The China Committee will focus on providing substantive content to its members. We have a wealth of knowledge and resources and want to establish a process for regularly distributing relevant information. We also plan on conducting substantive programs at the stated meetings, sponsoring a roadshow, and/or conducting a webinar. Finally, we will explore how to make AIPLA educational courses available to Chinese IP practitioners, and how they might receive CLE credits for such courses.

4. The AIPLA now allows foreign IP professionals to become members of AIPLA. We will work to get Chinese IP professionals to join the AIPLA.


Special Committee on National IPPractitioner Associations WorldwideChair: Mark A. Guetlich (left photo)Vice Chair: Mark J. Abate (right photo)___________________________________________

The Special Committee on National IP Practitioner Associations Worldwide has no news to report.

Special Committee on Standardsand Open SourceCo-Chair: Michele Herman (left photo)Co-Chair: Douglas Luftman (right photo)___________________________________________

At the Mid-Winter Institute, the Committee conducted a meeting that explored the increase of government involvement in technical standard settings, such as smart grid, cloud computing, healthcare and information technology. The program entitled, “Government Involvement in Technical Standard Setting: Implications for Standards IP” was moderated by Steve Merrill, The National Academies. Committee co-chair Michele Herman, Davis Wright Tremaine LLP, discussed standard setting in cloud computing. Jorge Contreras, Washington University School of Law, discussed standard setting issues related to smart grid technology. David Walsh, Microsoft, discussed standard setting issues related to Health Care IT. The panel engaged in a lively discussion that provided everyone beneficial insight into government involvement in standard setting.

The Committee continues to focus on several dynamic issues. In February 2011, the Committee conducted a call with representatives from the National Institute of Standards and Technology. NIST has expressed interested in meeting with the AIPLA Partnering in Standards delegation. The Committee currently is evaluating next steps. The Committee is also interested in engaging in dialogue with various Federal agencies, such as the Office of the United States Trade Representative, and other US government policy makers.

The Committee presented a response to the National

Science and Technology Council’s Subcommittee on Standards RFI to the AIPLA Board. The AIPLA Board approved the response and the response was submitted to NIST.

The Committee has formed several subcommittees, which will enable the Committee to explore many different issues at once while at the same time engaging greater numbers of Committee members. These subcommittees include a Policy/Project Subcommittee, a Government Outreach Subcommittee, a Programming Subcommittee, and a Management Subcommittee. This new structure promises to provide the Committee an even greater efficiency in engaging the industry and policy makers on issues relating to standards and open source as well as providing greater services to the Committee’s membership.

The Committee is also working with a number of other associations to develop an informational paper for US government officials on standards issues in China.

Another important activity of the Committee is to report on relevant lawsuits, enforcement actions, government policies, regulations, and legislation that may be of interest to AIPLA members in the areas of standards and open source. Recent examples include discussion of a messaging document on standards issues in China, the Government of India’s Draft Rules for e-Governance Standards, and open source software litigation.


The Trade Secrets Committee has conducted the following activities, and has the following plans for 2011.

1. Litigation and Best Practices Subcommittees Janet Craycroft has commenced serving as Chair of the Best Practices Subcommittee. John Marsh has commenced serving as Chair of the Litigation Subcommittee.

2. CLE Sessions at Stated Meetings At the Mid-Winter Institute, the Committee co-sponsored (with the Corporate Practice Committee) a Joint CLE session on Friday, February 4 at 3:45 p.m., “Addressing International Trade Secret Litigation: Should the Federal Economic Espionage Act Be Amended to Include a Civil Cause of Action?” In addition, the Chair of the Committee, Dan Westman, spoke on Saturday, February 5 at 10:30 a.m. on the panel “Effectively Using Trade Secrets and Copyright in Addition to or in Lieu of Patents and Trademarks.”

At the Spring Meeting, the Committee intends to co-sponsor (with the Corporate Practice Committee) a two hour Joint CLE session titled “Protecting Corporate Secrets in the Era of Wikileaks,” scheduled for Friday, May 13 from 3:30-5:30 p.m.

At the Annual Meeting, the Committee intends to co-sponsor (with the Corporate Practice

Committee) a two hour Joint CLE session, and/or to participate in the International topic.

3. Preparation of Resolutions for Board Consideration Based on the session at the Mid-Winter Institute “Addressing International Trade Secret Litigation: Should the Federal Economic Espionage Act Be Amended to Include a Civil Cause of Action?” the Litigation Subcommittee intends to attempt to develop a resolution for consideration by the AIPLA Board of Directors on that issue.

After the session “Protecting Corporate Secrets in the Era of Wikileaks,” the Litigation Subcommittee intends to develop a resolution for consideration by the AIPLA Board of Directors on the issue of whether the anonymous publication of trade secrets on websites such as Wikileaks should or should not conclusively establish whether the trade secrets have lost their protected status, due to uncertainty as to whether the published trade secrets were lawfully obtained.

4. Membership Outreach Throughout 2011, the Committee intends to encourage its members to reach out to potential new members of the AIPLA.

Trade Secret LawChair: Daniel P. Westman (photo)Vice Chair: Janet Craycroft (not pictured)___________________________________________

Trademark InternetChair: Mark Partridge (left photo)Vice Chair: Kristin Jordan Harkins (right photo)___________________________________________

The Trademark Internet Committee has no news to report.


At the 2011 MWI, the Trademark Committee leadership participated in a strategic planning retreat to clarify our focus for the year. The Committee wants to enhance its contribution to AIPLA and ensure that its strategic fits well with AIPLA’s own strategic plan.

The Committee’s underlying mission remains reinforcing AIPLA as a preeminent organization and resource for U.S. trademark attorneys.

We outlined our focus for 2011 and beyond, as follows:• Increasing membership in the Committee from

existing and new AIPLA members.• Improving external communication, as follows:

- publicizing and leveraging content at both the local events and future stated AIPLA meetings,

- specifically leveraging content just after a stated meeting,

- continued involvement at third party meetings and conferences where an AIPLA presence would be beneficial,

- leveraging technology to our advantage, possibly to include:

* Listserv * Facebook page * Twitter account * Blog * LinkedIn * enewsletters

• Improved internal communication with: - the Board (improved reporting), - committee membership via the mircosite,

and - possibly a newsletter and other best

practices used by the Women in IP Law committee regarding internal and external communications.

• Continued collaboration with other trademark

committees, the Copyright Committee, the Anti-Counterfeiting Committee, the Young Lawyers and the Education and Public Education Committees, with a goal of increasing the number of committee sessions at stated meetings in which one of the trademark committees pairs with a non-trademark committee to host a session.

• Updating the Committee’s microsite to provide administrative information about the Trademark Committees as well as substantive content, consistent with the organization’s plans for the AIPLA website.

• Providing cutting edge continuing legal education programming by devoting resources to both the professional programs and on-line programs committees (including another Trademark Bootcamp in June 2011).

• Considering potential legislative issues and remaining actively involved in the amicus committee.

• Another presentation by the Sports and Entertainment subcommittee.

• Continued work with the Mentoring Committee to facilitate greater committee involvement by mentors and mentees.

• Formation of False Advertising initiative within the Trademark Committee (led by Robert (“Bob”) W. Lehrburger.

Trademark Committee MeetingsThe various trademark committees also participated in two joint committee meetings. At the Anti-Counterfeiting and Anti-Piracy/Trademark Internet/Trademark Law/Trademark Litigation/Trademark-Relations with the USPTO/Trademark Treaties and International Law joint committee meeting on Thursday, February 3, 2011 from 3:45 – 6:00 pm., the various trademark related committees delivered reports. Notably, the Trademark Law and Trademark Litigation Committees recently organized the preparation of a detailed position paper on Trademark Litigation Tactics in response to the request for comments issued by the USPTO. The paper was submitted on Friday, January

Trademark LawChair: Amie Peele Carter (left photo)Vice Chair: Kieran G. Doyle (right photo3)___________________________________________


Trademark LitigationChair: Jennifer L. Kovalcik (left photo)Vice Chair: Christina Ryan (right photo)___________________________________________

The Trademark Litigation Committee has no news to report.

7, 2011. The Trademark Law Committee thanks especially Jennifer Kovalcik, Matt Nelles, Sheldon Klein, Betty Morgan and Al Tramposch for their input and comments on the position paper. The Trademark and Trademark Litigation Committees will continue to follow developments on this topic throughout the year.

Following those presentations, USPTO representative, Toni Hickey, USPTO Deputy Chief of Staff, spoke on

the results of the trademark litigation tactics study and gave highlights of the USPTO report that is scheduled to be released in March. This meeting was the first time the USPTO had spoken publicly on the results of the study, and we are grateful for Ms. Hickey’s presentation.

Trademark Treaties and International LawChair: Janet M. Fuhrer (left photo)Vice Chair: Michael M. Ballard (right photo)___________________________________________

The Trademark Treaties and International Law Committee embarked on another busy year. As in previous years, we continue to represent the AIPLA at the World Intellectual Property Organization (WIPO), Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) meetings in Geneva. The 23rd Session of the SCT was held June 30-July 2, 2010 and was preceded on June 28-29, 2010 by the First Session of the Working Group on the Review of Rule 3(4) to (6) of the Regulations under the Singapore Treaty on the Law of Trademarks, both of which were attended by the Committee’s Chair, Janet Fuhrer. These meetings were followed immediately by the Eighth Session of the Working Group on the Legal Development of the Madrid System for the International Registration of Marks from July 5-9, 2010 which was attended by the Committee’s Vice-chair, Michael Ballard.

The culmination of the Singapore Working Group

meeting was agreed upon text for revised Rule 3(4) to (10), as reproduced in the Annex to the Summary by the Chair (STLT/WG/1/3), to be recommended to the Singapore Treaty Assembly for adoption. The relevant provisions essentially involve non-traditional trade-marks, such as three-dimensional, hologram, motion, color, position, sound and other non-visible sign marks and the recommended revisions include greater flexibility regarding acceptable representations of such marks by national offices. The Assembly held a Second (1st Extraordinary) Session September 20 to 29, 2010 at which meeting it adopted the proposed amendments to Rule 3(4) to (6), as set forth in the Annex to document STLT/A/2/1 and set November 1, 2011 as the date for the entry into force of the proposed amendments.

The SCT has been analyzing information from the national trademark offices of member states on the following topics, among others, for the purposes of


promoting convergence or harmonized practices: (1) Industrial Design Law; (2) Grounds for Refusal of Marks; (3) Technical and Procedural Aspects of Certification and Collective Marks; and (4) Article 6ter of the Paris Convention. The report on industrial design law is to be further revised. Reports on the second and third topics are to be finalized and published as reference documents. Subject to further drafting suggestions, the questionnaire on the protection of names of states was adopted and was to be circulated to member states with a view to compiling responses and presenting the compilation at the 24th Session of the SCT held November 1-4, 2010. AIPLA was represented at this meeting by Jonathan Richards of Workman Nydegger. The SCT may turn next to the topic of trademarks and the internet. The Secretariat was tasked with preparing a background document for consideration at the next meeting. The 25th Session of the SCT is scheduled for March 28 – April 1, 2011.

The Madrid Working Group examined the possible implications of eliminating the requirement of a basic mark (the “Norway” proposal), including a mechanism for central attack, balanced against the need for a system that is simple, efficient, reliable, flexible, user friendly and time- and cost-effective. More data is required to analyze these substantial issues, including consultations with stakeholders in national offices. Simplification of internal procedures at the International Bureau and the possibility of dividing international registrations (the “Swiss” proposal) also will be considered at the next session of the Working Group.

At the request of WIPO, our Committee prepared and circulated to members of all of AIPLA’s trademark committees a survey regarding the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration. The Committee’s report on the survey results was presented to the Board at the Mid-Winter Institute in January 2010.

In anticipation of the Madrid Working Group meeting, we also prepared and circulated to the same members a survey regarding the Madrid system and the Norway proposal. A written report of the survey results was prepared for the Board.

As in the previous years, we will continue to provide assistance to the Professional Programs Committee with the organization of panels and speakers for the Stated Meetings on trademark topics, including those with an international aspect. For example, we organized a panel on comparison of opposition procedures in Canada, Mexico and Europe presented during the joint meeting of trademark committees at the last Annual Meeting in October 2010 and we assisted with the panel on IP Practice in Latin America (Anti-counterfeiting) held at the same meeting.

One new goal is to initiate a working group to consider and prepare a possible legal framework for implementation of the Norway Proposal.

Trademark-Relations with the USPTOChair: Jody H. Drake (left photo)Vice Chair, Prosecution: Yasmin Tavakoli (center photo)Vice Chair, Inter Partes: Linda K. McLeod (right photo)___________________________________________

The Trademark-Relations with the USPTO Committee has no news to report.


USPTO Inter Partes Patent ProceedingsChair: Herbert D. Hart (photo)Vice Chair: Salima A. Merani (not pictured)___________________________________________The USPTO Inter Partes Patent Proceedings Committee met during the MidWinter Institute in Orlando, Florida.

The sub-committee chairs gave the following reports concerning the activities of their respective sub-committees, and those in attendance discussed those reports and made suggestions for further activities. Chico Gholz, chair of the Resolutions Subcommittee, reported that the Board of Directors had approved with a minor modification the Committee’s proposed resolution asking that the Standing Order of the Trial Division be amended to provide that each party to court review under either 35 USC 141 or 35 USC 146 of a decision by the board in a patent interference must serve on the Solicitor copies of all substantive papers that it files in the court on the same date that it files those papers. The resolution explains that the AIPLA favors participation of the Solicitor’s Office as an amicus curiae in that court review whenever the decision of the court is likely to affect the institutional interests of the PTO. Brad Pedersen, chair of the Patent Reform Subcommittee, reported on the current status of the Patent Reform bill and noted a particularly ambiguous passage in the bill that relates directly to the activities of the members of the Committee. It was decided that he would draft a resolution

seeking amendment of that passage and forward it to the Resolutions Subcommittee. Lissi Mojica, chair of the Reexamination Subcommittee, supplemented Brad’s report on the current status of the Patent Reform bill as it relates particularly to reexaminations. Danny Huntington, chair of the Interference Subcommittee, similarly supplemented Brad’s report on the current status of the Patent Reform Bill as it relates particularly to interferences. There followed a general discussion of a proposed resolution asking the PTO to change the metric used to measure the timeliness of dispositions of interference. The current metric is that judgment should be entered within two years of the declaration of an interference. As explained in the resolution, that metric leads to lengthy delays from the hearing on the motions to decision on the motions (which usually concludes the interference). The proposed new metric is that credit be given the BPAI for minimizing the period between the hearings on motions and the decisions on motions.

Women in IP LawChair: Carey C. Jordan (left photo)Vice Chair: Alyson G. Barker (right photo)___________________________________________I. Mid-Winter Meeting Breakfast Despite many cancellations due to travel delays, the Committee had a full house for its breakfast meeting. Amie Peele Carter from Baker & Daniels LLP gave an outstanding talk on her experience caring for her ill mother and the lessons she learned from that.

Amie’s honest discussion of the challenges she faced and overcame while being her mother’s primary caregiver was inspiring to all of those who attended and we received several requests to work with Amie to expand her talk into a plenary session for a future meeting.


Following Amie’s presentation, audience members had an opportunity to ask Amie questions and to share their own experiences in caregiving. The success of Amie’s presentation highlighted the need for similar programs at future breakfast meetings. Thank you to Amie and all of our attendees for making our Committee meeting a success. In addition, thank you to Howrey LLP for its generous sponsorship of the breakfast.

II. Spring MeetingAs we look ahead to the Spring meeting in San Francisco, we are thrilled to announce that Chen Wang, Corporate Counsel and IP Leader at E.I. du Pont de Nemours and Company has agreed to speak on diversity in the IP Profession and the diversity programs that she has implemented at DuPont. We

look forward to having Ms. Wang join us for what guarantees to be an interesting and informative program.

III. Women in IP Law Networking ReceptionsSpecial thanks to Hathaway Russell and our networking reception’s regional Chairs for their success in obtaining so many sponsors for our fourth annual “Women in IP Law Networking Receptions.”

For information and details go to the Women in IP Law website.

http://www.aipla.org/committees/committee_pages/Women_in_IP_Law/Pages/default.aspx

Young LawyersChair: Ehab M. Samuel (left photo)Vice Chair: Charles Pannell (right photo)___________________________________________

See Mentoring Committee Report, p. 63



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