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AIPLA President's Page, Spring 2011 Bulletin

I am very pleased to be able to report on the activities and progress of your Association during the past several months since the Spring Meeting in San Francisco.  It has continued to be a very busy and successful year for the association and for me in my role as your President.  I have thoroughly enjoyed the opportunity to serve in this role, and I will always be thankful to the Association for having the confidence to elect me to lead the association this year.  This is actually my last President’s Page report, as I will be passing the gavel to Bill Barber, our new incoming President for the 2011-2012 year, at the end of the Annual Meeting in October.

Member Services

Spring Meeting - Our Spring Meeting held in San Francisco from May 12-14, 2011 at the Palace Hotel, was one of the most successful spring meetings in Association history.   The outstanding program, organized by our Professional Programs Committee, attracted our largest ever Spring Meeting attendance.  Highlights of the program included the entertaining and educational luncheon speeches by Lord Justice Robin Jacob, and by Vetta Richardson, President of the Association of Corporate Counsel, as well as a varied array of presentations on current IP topics of interest.  Also included was a lively panel discussion on the pending Patent Reform effort, which included our Executive Director, Q. Todd Dickinson, AIPLA Board Member Phil Johnson, and ABA Legislative Liaison, Hayden Gregory.  In addition, our AIPLA Committee on Nominations reported on its recommended slate of Officers and Board members being proposed for election at the Annual Meeting in October.  This list includes newly proposed Second Vice-President Sharon A. Israel, and proposed Board members Barbara Fiacco, Kevin Tottis, J. Michael Martinez de Andino, and Chen Wang, among others.  

AIPLA Newsstand - In August, AIPLA launched its newest email tool called the AIPLA Newsstand.  The daily email is prepared in conjunction with Lexology, and allows recipients to tailor their email messages to focus on their own specific areas of interest and regions of the world.  Our initial feedback has been very positive, and we hope that you are enjoying this added benefit of membership. 
 
AIPLA Educational Programs - Below is a list of some of the various educational programs that have been offered by AIPLA or are scheduled to be held in the near future.  These programs are well-attended and have proven to be a valuable resource for members. 
1.  AIPLA Trademark Boot Camp, June 10, 2011
2.  AIPLA Legal Secretaries and Administrators Conference, June 16-17, 2011
3.  AIPLA Chemical Patent Practice Road Show: Prosecution and Litigation Strategies, June 23, 2011
4.  AIPLA Patent Cooperation Treaty (PCT) Seminar, July 25-26, 2011
5.  AIPLA Electronic & Computer Patent Law Summit, August 16, 2011
6.  AIPLA Practical Patent Prosecution Training for New Lawyers, August 25-26, 2011

In addition, numerous on-line programs have been offered in the past few months.  A few of those are also listed below.

1. ABC’s of Trademark Prosecution at the USPTO, May 4, 2011
2. Inequitable Conduct and the Federal Circuit: Where are We Now? June 1, 2011
3. Outside/In-House Counsel: A Dynamic Dialogue, June 22, 2011 (from the free Career & Practice Management Series).
4. Post-Trial Procedures in Patent Litigation: Impacting Liability and Monetary Judgments, July 20, 2011
5. Life in the Fast Lane – PCT – Patent Prosecution Highway Filings, August 3, 2011

If you missed any of these programs, access to the recordings are available through AIPLA’s Learning Center. 

Annual Meeting - Registration is now open for our Annual Meeting at the Marriott Wardman Park Hotel in Washington, DC, from October 20-22, 2011.  An exciting program has been planned by our Officer-in-Charge, Wayne Sobon and our Professional Programs Committee, headed by Steve Malin (Chair) and Manny Schecter (Vice-Chair).  Don’t miss this must-attend meeting in the IP field!

Advocacy

U.S. Patent Law Reform - As expected, patent reform efforts continued to be a major focus in the Congress during the last several months.  Following a vigorous debate and votes on a significant Manager’s Amendment and several more floor amendments, the House of Representatives passed H.R. 1249 on June 23rdby a vote of 304 to 117.   Your AIPLA staff and Board were actively involved in monitoring the bill as it progressed through the House, and numerous meetings were held with Representatives and their staffs to discuss the more controversial aspects of the bill.  In addition several letters were sent to Congressional leaders by AIPLA addressing the various sections of the bill.  AIPLA has continued to generally support the bill, despite several sections that are considered unnecessary or undesirable.   Now that the bill has passed the House, the focus shifts back to the Senate, which passed a somewhat different version of the bill (S. 23) back in March by a 95-5 margin.  As many of you know, the America Invents Act was signed into law on September 16, 2011. 
 
AIPLA is committed to making major efforts to help educate our members with regard to all the changes that will be implemented both in the law and the subsequent regulations.   Plans are now underway to provide live and on-line programs to accomplish this result.  The enormity of this change in the patent laws cannot be understated, and AIPLA will focus significant effort at helping its members and the public understand and implement the changes that are contained in this law.
 
Amicus Activity - AIPLA continues to have a very busy year in the area of amicus brief filings.  Many thanks go to Ed Reines and Jerry Selinger, the Chair and Vice-Chair of the Amicus Committee, to all the members of the Committee, to the many authors of our briefs (and their law firms) who have volunteered their time and expertise, to Jim Crowne of our staff who has performed yeoman service in shepherding the briefs through the complex processes required for preparation and filing, and to the entire AIPLA Board for their thoughtful and thorough consideration of the various cases and draft briefs that have come before it.  
 
Positions AIPLA has taken in some of the more significant cases are discussed below:
 
• Microsoft Corp. v. i4i Limited Partnership.  AIPLA argued to the Supreme Court that the clear and convincing standard for proof of patent invalidity is the correct evidentiary standard, whether or not a validity challenge turns on prior art that was not before the examiner.  The Supreme Court agreed.  Notably, our brief was singled out by Justice Breyer during oral argument.
 
• Global-Tech Appliances Inc. v. SEB S.A.  AIPLA argued to the Supreme Court that liability for inducing patent infringement under 35 USC 271(b) does not require proof that the inducer had knowledge that the acts induced will violate patent rights, but only that inducer actively and deliberately encouraged the particular acts found to be directly infringing.  With a 4-4 vote, the Supreme Court could not decide this case.  Once again, our brief was cited by Justice Breyer during oral argument.
 
• Stanford University v. Roche Molecular Systems, Inc.  AIPLA argued to the Supreme Court that the Bayh-Dole Act did not change the well established rule that patent rights in an invention vest initially and personally with the inventor, and that such rights generally must be conveyed expressly, despite Government funding arrangements made for the inventor's research.  The Supreme Court agreed.
 
• Association for Molecular Pathology v. USPTO.  AIPLA argued to a Federal Circuit panel 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 that the product claims are directed to products of nature and that the method claims are directed to abstract ideas.  The Federal Circuit agreed.
 
• Therasense, Inc. v. Becton, Dickinson and Co.  AIPLA argued to the en banc Federal Circuit that the basis for a finding of inequitable conduct should be fraud on the USPTO, provable only with specific intent to deceive, that materiality should be found only where at least one claim would not have issued “but for” the alleged misconduct, and that limits on inequitable conduct are justified by the severe penalty of unenforceability.  The Federal Circuit agreed.
 
AIPLA also has filed or expects to file amicus briefs in the following currently pending cases:
 
• Akamai Technologies, Inc. v. Limelight Networks, Inc.  AIPLA argued to the en banc Federal Circuit that a method claim whose steps are dispersed among several parties can be directly infringed even though no single party can be identified as performing the claim steps.
 
• McKesson Technologies, Inc. v. Epic Systems Corporation.  AIPLA argued to the en banc Federal Circuit that inducement or contributory infringement liability for separate entities performing separate steps of a method patent claim requires only that all claim steps are performed to establish direct infringement, and that the statutory terms of Section 271(b) or (c), Title 35 are proven.
 
• Mayo Collaborative Svcs. v. Prometheus Labs., Inc.  AIPLA expects to reiterate to the Supreme Court its argument to the Federal Circuit that claims to a method of treating Crohn's disease are patent eligible under 35 U.S.C. 101.  The Federal Circuit agreed with us that the claimed methods satisfy the transformation test mentioned in both the appellate court and Supreme Court opinions in the Bilski case.
 
• Kappos v. Hyatt.  AIPLA expects to reiterate to the Supreme Court its argument to the en banc Federal Circuit that a plaintiff in a district court action against the USPTO under 35 U.S.C. 145 is not barred by the Administrative Procedure Act from presenting new evidence beyond that contained in the agency record.  In the Federal Circuit we argued that §145 proceedings are de novo with respect to new evidence presented by either party in connection with issues raised with the PTO.  The Federal Circuit agreed.
 
Comments to Government and Administrative Authorities - Advocacy before U.S. and other government agencies and administrative authorities continues to be one of AIPLA’s most important services to its members.  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.
 
• Letter to U.S. House Judiciary Committee Regarding Section 22 of Manager's Amendment to H.R. 1249, June 22, 2011
• Letter to the House on PTO Revolving Fund in HR 1249, June 9, 2011.
• Comments to ITC on Proposed Revisions to Rules of Practice and Procedure and Proposed Hand-book on Filing Procedures, August 5, 2011.
• Recommendations to USPTO on New Metrics for Judging Timeliness of Interference Decisions.
• Comments to USPTO on "Streamlined Patent Reexamination Proceedings," July 15, 2011.
• Comments to USPTO on "Trademark Trial and Appeal Board Participation in Settlement Discussions," June 21, 2011.
• Comments to USPTO on "Improving Regulation and Regulatory Review," April 21, 2011.
• Comments to USPTO on “Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications,” April 11, 2011.
• Recommendation to USPTO on Solicitor’s Amicus Participation in Court Review of USPTO Board Decisions in Interferences, March 23, 2011.
• Comments to USPTO on Implementing Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures, March 7, 2011.
• Comments to USPTO on Examination Guidelines Update: Developments in the Obviousness Inquiry after KSR v. Teleflex, 11 February, 2011.
• Comments to USPTO on Proposed Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, January 14, 2011.
• Comments to USPTO on the Bose Roundtable Suggestions to Improve Identifications of Goods and Services in Trademark Applications and Registrations, January 12, 2011.
• Comments to USPTO on Trademark Litigation Tactics, January 7, 2011
All of these briefs and documents are posted on AIPLA’s website in the IP Policy and Advocacy section.
 

Global Outreach

AIPLA Special Committee on IP Practice in China - Just prior to the Spring Meeting, I travelled with a delegation from the AIPLA IP Practice in China Committee to Wenzhou and Hangzhou, China for a pair of presentations.  The delegation was hosted by the Zheijang Provincial IP Administration, and the Wenzhou Science & Technology Bureau.  Thanks go to our Committee Co-Chair Ying Tuo for his help in arranging these presentations, which took place on April 28 and 29, 2011.  In addition, I was able to meet with Mr. Guoqiang Lu, former Judge and current Director General of the Shanghai Intellectual Property Administration, on April 27, 2011 to discuss how AIPLA might be able to assist in the IP education efforts of his office.   
 
INTA Meeting - Following the AIPLA Spring Meeting in San Francisco, your President and Executive Director were invited to attend the Annual Meeting of the International Trademark Association, which also took place in San Francisco.   This meeting attracted a very large gathering of IP practitioners from around the world. 
 

Industry Trilateral and Trilateral Patent Office Meetings - AIPLA is a member of the Industry Trilateral group along with Intellectual Property Owners (IPO), the Japan Intellectual Property Association (JIPA), and Business Europe.  Business Europe hosted a full-day meeting of this group at the EPO in Munich, Germany on May 17, which was attended on behalf of AIPLA by your President, Immediate Past President, Alan Kasper, and Mark Guetlich.  The meeting included discussions on a number of important projects of the group in preparation for the Trilateral Patent Office meeting, which took place at the EPO on May 18.  At that meeting, the views of the Industry Trilateral were shared with the appropriate staff members of the Trilateral Patent Offices, and updates were provided to the group on the status of the various initiatives being pursued in the Trilateral work program.  

International Judges Conference: I was invited by the IPO Education Foundation to attend a conference of international judges in Brussels, Belgium from May 23-25, 2011.  This conference attracted over 80 judges from a large number of countries around the world, and was specifically focused on intellectual property litigation issues.    

LES International Annual Meeting - At the invitation of LES International, I attended their annual meeting in London from June 4-7, 2011.  The program was extremely interesting, with a definite emphasis on the business aspects of IP licensing. 
 
IP Practice in Japan Committee Trip - A delegation of the AIPLA IP Practice in Japan Committee visited Japan during the week of September 5-9, 2011.  The committee planned a full week of meetings and seminars, including visits to the Japanese Patent Office, the Japan Patent Attorneys Association, AIPPI Japan and the Japan Federation of Bar Associations, the Japan IP High Court, LES Japan, the American Chamber of Commerce in Japan, the American Embassy, and the Japan Trademark Association.
 
Global Network of National IP Practitioner Associations - Plans have been finalized 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. The Network is in the process of drafting a set of guidelines for its operation, and further progress toward its goals for facilitating the exchange of information, education and best practices among national IP practitioner associations is expected.  AIPLA currently has a Special Committee for this effort, headed by chair, Mark Guetlich, and vice-chair, Mark Abate.

Public Education

AIPLA Economic Survey - The AIPLA 2011 Report of the Economic Survey has recently been released. This very important survey of the profession, which is conducted every two years, carefully examines the business and management sides of intellectual property law so you can benchmark fees, billings, and salaries. The report, a copy of which is provided free to all AIPLA members, is filled with actionable business intelligence you can use to make strategic decisions to advance your practice. Analysis of responses from more than 2,500 IP professionals are accompanied by color graphs linked to detailed data profiles, giving you the most reliable assessment of income, professional, and demographic characteristics of the IP legal community.  We sincerely appreciate the efforts of the Law Practice Management Committee and our AIPLA staff in helping to prepare this very useful resource for the public and the IP profession.  To view the Report online, click here. As access to this report is for members-only, you will need to log-in to access the information. 

Other Activitites

Jefferson Medal Award Dinner: Your President and Executive Director both attended the annual Jefferson Medal Dinner, sponsored by the New Jersey Intellectual Property Law Association, on June 3, 2011 in Short Hills, New Jersey.  The highlight of the dinner was the presentation of the Jefferson Medal to our friend and colleague, Herb Wamsley, the Executive Director of the Intellectual Property Owners (IPO).  Herb’s entertaining acceptance speech included several references to words of advice from both Thomas Edison and Yogi Berra. 

Copyright Society Annual Meeting - President-Elect Bill Barber attended the annual meeting of the Copyright Society of the U.S.A. on behalf of AIPLA from June 5-7, 2011.  Our Copyright Committee chair, Kevin Tottis, also attended the meeting.  Following this meeting, discussions have taken place on how AIPLA and the Copyright Society can cooperate more effectively in the future.
 
Association of Corporate Patent Counsel - At the invitation of the Association of Corporate Patent Counsel (ACPC), I attended their summer meeting in Seattle, Washington from June 26-29, 2011.  The meeting included a presentation by Theresa Stanek Rea, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent & Trademark Office, and a panel discussion on the effect of the budget cuts on PTO operations.  Other topics included the recent Therasense decision, inventor remuneration, and false marking.
 
American Bar Association Annual Meeting - Your President and Executive Director both were invited to attend the American Bar Association Intellectual Property Law Section (ABA IPL) meeting in Toronto, Canada from August 4-7, 2011.  As one of our sister organizations in the intellectual property field, the ABA IPL Section and AIPLA cooperate very closely.  The Chair of the ABA IPL Section is invited to AIPLA Board meetings, and the President of AIPLA is invited to the ABA IPL Section Council meetings.  This relationship helps to foster mutual understanding and joint efforts in support of the members of both organizations.  
 
Networking and Outreach Activities – Your Young Lawyers Committee has been especially active in hosting local happy hours throughout the US.  They are active on facebook and in LinkedIn.  I encourage you to go online and see what they’ve been doing.  They most recently hosted an IP Young Lawyers Retreat in Boston on August 19 -22.  The retreat drew committee members from California, Georgia, North Carolina, DC, New Hampshire, New York, and of course, Massachusetts.  Fellow members had fun as a group while getting to know one another better and discussing the YLC's goals over the course of the weekend.  We were so pleased to have Barbara Fiacco attend our joint AIPLA/Boston Patent Law Association networking happy hour on Friday night, and to have Todd Dickinson join us on Saturday to spend time with our group and discuss upcoming AIPLA events and agenda items.
 
Membership - In my last two President’s Page reports, I have asked for your help to reach out to your colleagues and friends, your foreign associates, and your clients to tell them about AIPLA.  I thank you for your efforts, which have helped us to add many new members.  However, we still need your continued help to keep our Association growing.  Please continue to encourage your colleagues, foreign associates, clients, and friends to take advantage of membership in this great organization!  

Get Involved - Clearly, your association is the world’s leading intellectual property organization, as evidenced by the impressive agenda described above.  Our members are the driving force behind the Association, and we need your help with the many initiatives that are on our agenda.  Come to our meetings, get involved in our committees, and volunteer to help those in leadership positions.  Your active participation is needed, and I know you will enjoy the chance to meet our great members, to take on leadership roles, and to further the goals of the association.  I look forward to seeing you in Washington in October.

Thank You - In closing this, my final President’s Page report, I want again to express my sincere thanks to the Association and its members for making this past year so enjoyable for me.  In my opinion, there is not any greater opportunity in the IP field than the chance to serve as President of AIPLA.  Although I will complete my term as President in October, I will remain actively involved in AIPLA for many years to come, and I look forward to continuing to see you and work with you in support of this great organization!