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2013 Mid-Winter

Report from AIPLA's President

2012-13 AIPLA President Jeffrey I.D. Lewis
May 2013

One of the many interesting things about being President of AIPLA is the opportunity I have to meet with delegations from around the world, often in their countries.  Since I assumed office in October, I have met with government officials, judges, bar association leaders, and attorneys from more than 20 countries. (A number of these meetings are described in the “President’s Blog” I have been writing this year).  I am occasionally asked, however, “Why should AIPLA have these meetings?”  There are a number of answers to that question, and I want to focus on a few of them for this column.

AIPLA is, of course, the AMERICAN Intellectual Property Law Association – although we have many members in other countries.  Accordingly, members often are first and foremost interested in American issues, but it also is true that a large number of American issues overlap with international concerns.  Every US patent holder must at some point consider whether they want to file for protection in other countries.  For instance, many of our members work for or represent multi-national entities, or at least ones that have business relationships in other countries, and so the international protection of intellectual property is a very important American interest too.  The cost of obtaining patent protection in a large number of countries worldwide is often prohibitive, and AIPLA is working diligently with Offices and other industry groups to streamline that process in order to reduce the costs, and the time it takes.  Once they obtain patent protection abroad, US IP owners must deal with the complexity of enforcing their rights in multiple countries around the world.  Whether dealing with counterfeiting, addressing internet-related infringement, or trying to streamline prosecution (and thereby cut costs), our members and their clients benefit from these international discussions.

Many discussions this year have centered on harmonization and globalization for prosecution.  For instance, AIPLA is an active participant in the Industry IP5 meetings (the IP5 is comprised of the Chinese, European, Japanese, Korean, and US patent offices), and IP5 is working on a project called “Global Dossier.”  This will be a one-stop portal allowing patent applicants to enter information only once (such as references and certified priority documents), which then can be shared by all patent offices using machine translations, if needed, rather than individual translations.  Additionally, the examiners at each patent office can communicate with each other through a secure network.  (More information including the timetable for launching the service can be found on the USPTO’s website.)  Needless to say, if patent offices adopt the Global Dossier it will save significant prosecution costs.  While all of the major Offices have been highly receptive to this idea, they still need the encouragement and guidance of users and their representatives to make the system practical and efficient.  AIPLA delegations have met with them to encourage this project on behalf of our members.  By doing so, we have already been able to work through a significant number of the difficulties, and hopefully members will reap those benefits.  

Another important issue is the international erosion of attorney-client privilege – one that I am keenly sensitive to as a litigator.  The confidentiality of client communications is being limited particularly for patent agents (we call them “patent agents” in the US, but often they are called “patent attorneys” in other countries); even the outline for a European Unitary Patent Court severely limits the protection of confidential communications.  For that reason my international meetings have sought support for an international colloquium of government officials that AIPLA is co-hosting this summer on the issue.  In many countries this is viewed as simply an “American” issue, but in reality it is an international concern and patent owners throughout the world are worried about their confidential communications.  That is why AIPLA is co-sponsoring this colloquium for representatives from many countries including the US government.  Hopefully, this will help generate an international standard for protecting confidences.  

AIPLA provides the US face for its members and the US IP Community in the international community of users and rights holders.  We attend sister organization meetings around the world, and host visits of leaders and government delegations at our Stated Meetings, and bilaterally at AIPLA HQ.  AIPLA leaders attend international negotiations at WIPO and other organizations, including the current Diplomatic Conference on the adoption of a treaty to deal with access to copyrighted works for the visually impaired.  While the US position is amply defended by USPTO and USTR, among other agencies, the voice of the IP user community is invaluable in these negotiations, which often result in treaties that modify US law, and AIPLA provides that US voice.”

AIPLA also is concerned with professional growth and education.  The association is a leading provider of legal education, and AIPLA conducts legal education seminars around the world in cooperation with local bar associations.  Recent international education programs included such varied topics as the America Invents Act, European Unitary Court, multi-party infringement, “FRAND” licenses, non-traditional trademarks, software copyrights, and comparative trade secret issues.

I’d like to make one other point about these trips.  AIPLA is committed to diversity and making the IP profession a better place for everyone to work.  It consistently has put resources behind this goal.  For instance, AIPLA helped create the American Intellectual Property Law Education Foundation, an organization that provides law school scholarships for minority candidates who express interest in intellectual property, and AIPLA has sponsored US-based events supporting women practicing intellectual property law for many years   Last year AIPLA started a Japanese Women in IP program, which continues again this year during the IP Practice in Japan Committee trip.  The Women in IP Japan program brings together women judges and IP professionals to share their personal stories of overcoming gender-based discrimination and to help each other meet those challenges.  I cannot be prouder of AIPLA for its work on this project, and its many efforts to support diversity throughout the world.  

As for my personal meetings during these trips and get-togethers, the list of subjects addressed is truly endless.  In addition to the ones mentioned above, it has varied from Cuban IP privatization to proposed Chinese legislation requiring that all inventors receive a portion of patent licenses/sales and from international design protection to ITC boarder enforcement.  Fundamentally, however, AIPLA’s members benefit from the intentional discussions and the relationships that are built from personal contacts with government officials and IP professionals in other countries.  I will continue to write more about these trips in my President’s Blog, hosted by Managing IP Magazine, so I hope you will continue reading.