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2012 Mid-Winter Meeting Bulletin

January 10, 2012

In my first President’s Report I noted that activities seemed to be exploding around the globe in all aspects of IP – if anything that was an understatement.  Below is a summary of the many efforts that your Association and its dedicated volunteers and staff have undertaken to respond to these ever increasing demands.

Meetings       

Mid-Winter Institute – We had a terrific Mid-Winter Institute at Caesars Palace in Las Vegas January 23-26.  The meeting was well attended and provided registrants a unique opportunity to explore the challenges and benefits of balancing work demands with quality of life issues.  The Institute also featured late-breaking news, programs, and speakers relating to the USPTO’s proposed rules to implement the America Invents Act (AIA).  Many thanks to Officer-in-Charge Jeff Lewis, and his Planning Committee chaired by Barbara Fiacco and co-chaired by Pat Coyne and Lisa Jorgenson, for their vision and creativity in developing such an innovative and interesting program.

Spring Meeting – In May I will have the unique privilege of hosting an AIPLA major meeting in my hometown.  Believe it or not, I had no role in selecting Austin as the venue for this year’s Spring Meeting (those decisions are made years in advance)…although I did request that the meeting be held downtown so attendees will get a true experience of Austin at its finest (and “weirdest”).  The agenda is shaping up to be a great event, including a keynote luncheon address by US Rep. Lamar Smith (Chair of the House Judiciary Committee and a lead sponsor of the AIA).  Our Friday night dinner entertainment will feature the legendary Ray Benson and the band Asleep at the Wheel, whose unique style of “Western Swing” has earned them nine Grammy Awards.  I hope you will be able to join us for what will surely be a fun and memorable occasion deep in the heart of Texas.

Advocacy

We should all be very proud of our organization’s excellent reputation and effective role as an advocate on IP rights and issues around the globe.  We continue to be extremely active in advocating the Association’s views in a number of different venues, as summarized below:

1.    AIA Implementation/Rules

Dominating the IP landscape at the moment are the USPTO’s efforts to implement the AIA.  AIPLA has been, and will continue to be, integrally involved in this process.  We owe a huge debt of gratitude to all of the members of our Special Task Force on AIA Rulemaking, chaired by Alan Kasper and his three group chairs, Greg Allen, Herb Hart, and Mike Kirk, for their hard work, dedication, and talent in studying all of these voluminous proposals and preparing comments in a very compressed time frame.  Many thanks also to our Executive Director Todd Dickinson, Deputy Executive Directors Vince Garlock and Al Tramposch, and Director of Legal Affairs Jim Crowne, for so skillfully guiding our Board of Directors through this journey, and to a number of substantive Committees who have helped craft our comments and testimony.  The USPTO has a monumental task to craft rules and conduct studies mandated by the AIA, and it is our job to ensure to the best of our ability that the USPTO’s rules and fees are fair, balanced, and workable so that the benefits and improvements to our patent system contemplated by the AIA are fully realized.  We will continue to work tirelessly to achieve that goal.

Here is a brief summary of our efforts in this regard since my last President’s Report.

  • We submitted a response to the USPTO’s request for comments on additional USPTO satellite offices for the national workforce program in January.
  • The USPTO submitted an extensive patent fee proposal to the Patent Public Advisory Committee (PPAC) on February 7, pursuant to its new fee-setting authority under AIA Section 10.  The proposal would sharply increase the fees currently charged by the USPTO for certain tasks, and would set very substantial fees for some of the new proceedings under the AIA, such as supplemental examination, post grant review, and inter partes review.  Todd Dickinson testified about this fee proposal at a PPAC hearing on February 15, and we submitted written comments on February 29.  Although our comments supported the general proposition that the USPTO’s fees should, in the aggregate, recover 100% of the Office’s costs, we expressed concern that the Office is being overly conservative in its cost analysis thereby overestimating likely costs, and that the procedures proposed for some of the new proceedings under the AIA (such as PGR and IPR) utilize too much time of Board judges and personnel or are otherwise inefficient.  We also supported the continued use of “back-end” (e.g. maintenance and renewal) fees to subsidize “front-end” (e.g. filing, search, and examination) fees, but expressed concern about inflating fees above cost to deter applicants from using procedures authorized by the AIA (e.g. supplemental examination).  We acknowledged that pendency reduction is an important goal, but expressed concern that the Office’s proposed timeline to achieve those targets might be too aggressive in view of the fee increases proposed, and suggested that improving patent quality should be the primary goal in view of the AIA.  We also supported, in principle, the USPTO’s desire to create a reserve fund for capital improvements and revenue shortfalls, but once again expressed concern about the aggressive timeline proposed and about ensuring that the reserve fund cannot be diverted by Congress.  Finally, we questioned the basis and assumptions for some of the proposed fee increases, such as RCEs and appeals.  The USPTO’s final proposed fee schedule is expected in June, and we anticipate filing additional comments at that time.
  • On February 16, Board Member Mercedes Meyer testified on AIPLA’s behalf at a USPTO hearing on the study mandated by AIA Section 27 regarding independent second opinion diagnostic testing where patents and exclusive licenses cover primary genetic diagnostic tests.  We also submitted written comments on March 26.  Although our comments acknowledged the need for patients to have access to the finest medical care and diagnostic tests available, we emphasized the vital role that patents play in incenting companies to invent and develop new genetic diagnostic tests.  We questioned the assumption that patients lack access to confirmatory genetic diagnostic testing as a result of patents, and expressed concern about any legislation that would diminish the value of patents in this technology sector, thereby impeding scientific progress and development of personalized medicine products.  We concluded that any change in the patent statute to address these issues should be made only on the basis of credible and substantial evidence, should include reasonable compensation to the patentee, and should be narrowly tailored.  Many thanks to Jim Kelley (Chair of the Biotechnology Committee), Denise Kettelberger (Chair of the Food and Drug Committee), and other members of their Committees for their assistance in drafting the comments and testimony.
  • In March, we submitted responses to a number of proposed rules packages from the USPTO, including statute of limitations for Office disciplinary proceedings; revisions to the inventor’s oath or declaration; submissions of prior art by third parties; citation of patent owners’ written statements regarding claim scope and estoppel on ex parte reexamination requests by third parties; and supplemental examination and revised reexamination fees. Among other things, we argued that the new one-year statute of limitations for alleged misconduct before the Office should begin, at the latest, when a complaint is received by the OED.  Practitioners’ requests for extensions of time to respond to requests for information from the Office could be granted conditioned on the practitioner agreeing to toll the limitations period during the delay.  We also criticized the proposed rules regarding inventor’s oath or declaration as being too close to the current rigid system and thereby failing to take advantage of the AIA’s “assignee filing” provisions, and situations where the applicant may encounter difficulties in locating all inventors and obtaining their signatures prior to filing or examination.
  • In April, we anticipate submitting responses to the USPTO’s proposed rules of practice and practice guide for trials before the PTAB and judicial review of PTAB decisions, as well as proposed rule packages relating to IPR proceedings; PGR proceedings; the transitional PGR program for covered business method patents, and a proposed definition of “technological invention;” and derivation proceedings.

2.    Other Comments and Activities with US Government

In addition to the AIA-related comments and testimony discussed above, we have also participated in the following:

  • On January 16, we submitted a response to the US Copyright Office Notice of Inquiry regarding Remedies for Small Copyright Claims, where we (among other comments) opposed a proposal to have state courts hear small copyright claims.  Many thanks to Copyright Law Committee Chair Nancy Mertzel and her team for drafting these comments.
  • On January 23, we submitted a response to the USPTO’s Request for Comments on Eliciting More Complete Patent Assignment Information.  For a number of reasons expressed in our response, we opposed the USPTO’s proposal to make assignment recording and updating during the pendency of a patent application mandatory, as such changes would impose substantial additional work on applicants without solving any real problems with respect to recorded assignment information.  Many thanks to Sam Helfgott and Carl Oppedahl [confirm] for drafting this response.
  • At the invitation of Debbie Cohn, USPTO Commissioner for Trademarks,  Yasmin Tavakoli represented AIPLA at a February 24 roundtable discussion on “Future Plans for USPTO ID-Class Practice.”  Topics of discussion included the USPTO’s plan to redesign the Acceptable Identification of Goods and Services Manual, and possibly relaxing the specific requirements in identifying goods and services.
  • Commissioner Cohn also invited us to participate in a working group to develop an action plan for implementing education and outreach strategies stemming from the Office’s Trademark Litigation Study.  Linda McLeod and Meghan Donohoe attended the working group’s first meeting on March 1, and Jody Drake will represent us on the working group moving forward.

3.    Amicus Activity

Since my last President’s Page, the US Supreme Court has handed down rulings in two cases in which AIPLA filed amicus briefs.  To our disappointment, the Court ruled contrary to our arguments in Mayo Collaborative Services v. Prometheus Laboratories, Inc., which held that a patent claiming a medical treatment process effectively claimed a law of nature and was thus ineligible for patent protection.  In addition, the Court vacated and remanded to the Federal Circuit the case of Association for Molecular Pathology v. Myriad Genetics for reconsideration in light of the Prometheus decision.  These decisions pose substantial challenges in the area of patent eligibility not only for our Amicus Committee, but also for the patent community at large.

We also filed an amicus brief in Kirtsaeng v. John Wiley and Sons, Inc., urging the US Supreme Court to grant certiorari to resolve unnder what circumstances, if any, copyright law’s first sale doctrine applies to copies of works manufactured abroad and imported into the U.S.  This question, which has split the circuits, was left unresolved in the Court’s recent 4-4 decision in Costco Wholesale Corp. v. Omega, S.A., 131 S. Ct. 565 (2010).

ICANN

On February 27, we responded to the request for comments from the Internet Corporation for Assigned Names and Numbers (ICANN) about the perceived need for trademark owners to file “defensive” applications for new gTLDs to ensure adequate protection for their marks.  Our response expressed concerns that ICANN’s new procedures for protecting IP rights in connection with its new gTLD program are flawed and untested, and that the suggestion of filing “defensive” applications is not a realistic solution given the high filing fee and associated business and legal expenses of preparing a detailed application and administering a gTLD registry.  As we have expressed in many similar comments to ICANN since the new gTLD program was first introduced, we urged ICANN not to proceed with a wide-open, unlimited gTLD program until potential solutions and mechanisms for protecting IP rights are better developed and tested, and recommended that ICANN begin the launch with a small pilot program limited to gTLDs serving linguistic, geographical, and cultural communities.  Many thanks to Mark Partridge for drafting AIPLA’s comments.

Global Outreach

  • In furtherance of our strategic goal for increasing global outreach, we continue to actively attend meetings with sister organizations, meet with governmental agencies, and participate in IP-related activities domestically and around the world.  Below is a summary of recent activities in this regard:Todd Dickinson, First Vice President Wayne Sobon, and I attended the Association of Corporate Patent Counsel Winter Meeting in San Diego January 15 – 18.
  • Jonathan Madsen represented us at the WIPO Singapore Treaty Working Group and Standing Committee on Trademarks Meetings in Geneva January 31 – February 3.
  • Todd Dickinson and I attended the ABA Midyear Meeting in New Orleans February 3-5, including the IPL Section’s Council Meeting.  I also attended the National Conference of Bar Presidents meeting held in conjunction with that event.
  • Kevin Tottis represented us at the Copyright Society of the U.S.A. Mid-Winter Meeting in Los Angeles February 2-4.
  • Several members of our IP Practice in Europe Committee made presentations on recent developments in US intellectual property law at the AIPPI-Italy Annual Congress in Milan February 10.  Included among the AIPLA speakers were Joerg-Uwe Szipl, Alan Kasper, Tony Venturino, Charles Barquist, and Joe Calvaruso.
  • DeAnn Smith represented us at the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore Meeting February 14 – 22.
  • Our IP Practice in Europe Committee made its annual visit to Europe the week of March 4.  The delegation included myself, Todd Dickinson, Committee Co-Chairs Joerg-Uwe Szipl and Andrew Smith, and several other members of the Committee.  We met with CIPA, IPLA, and ITMA in London, CNCPI and APRAM in Paris, the Bundegerichshop (Federal Court of Justice) in Karlsruhe, and GRUR, Patentanwaltskammer, EPI, and the EPO in Munich.
  • On March 17 – 19, a delegation from our IP Practice in Latin America and ITC Committees attended an ASIPI seminar on “Unfair Competition and Intellectual Property:  Contemporary Problems that Affect the Industry” in Antigua, Guatemala.  Bill Larson and Joseph Morales made presentations at that seminar.  Many thanks to Committee Chair Jim Larson and Board liaison Mike Martinez for organizing and leading our delegation at this event.
  • Todd Dickinson and I represented the association at the NYIPLA Annual Dinner in Honor of the Federal Judiciary in New York March 23.  Jeff Lewis and Sharon Israel from our Executive Committee also attended.
  • Our Immediate Past President Dave Hill and Todd Dickinson attended the ABA/IPL Section Annual Intellectual Property Law Conference and Council Meeting in Arlington, Virginia March 28-30.

Personnel News

In January, we were thrilled to welcome Al Tramposch back to the AIPLA family.  Al has resumed his post as AIPLA’s Deputy Executive Director for International and Regulatory Affairs, following a stint in public service as the Administrator for Policy and External Affairs at the USPTO.  Welcome back Al!

Also, please help me congratulate Todd Dickinson for his recent election into the IP Hall of Fame.  The IP Hall of Fame was created in 2006 by IAM Magazine to honor individuals who have made outstanding contributions to the development of IP law and practice and helped establish IP as one of the key business assets in the global economy.  Todd and the other distinguished inductees in the Class of 2012 will be honored at the IP Business Congress in Lisbon, Portugal in June.

Thanks everyone, and we will see you soon in the greatest city in America – Austin!