Navigate Up
Sign In

2011 Annual Meeting

Reports from AIPLA's President

2011-12 AIPLA President William G. Barber
January 9, 2012
It may sound cliché, but there has never been a more exciting time to be an IP lawyer – nor more opportunities to get involved in AIPLA. Activities are literally exploding around the globe in all aspects of IP. With my first President’s Report, I will briefly report on AIPLA’s involvement in these
many areas:
The America Invents Act – Victory at Last!
On September 16, 2011, President Barack Obama signed the America Invents Act (AIA), the most extensive reform of the patent laws in this country in nearly 60 years. AIPLA and a number of our members worked tirelessly on this
legislation for many years and through several Congresses. Our Executive Director, Todd Dickinson, represented the association at the historic signing ceremony and White House reception afterward, and had a chance to talk briefly with the President. I asked Todd whether he felt that President Obama knew who AIPLA was and what our pivotal role was in getting this bill passed. The answer was yes – when Todd introduced himself, the President responded, “You all have
been working on this for a very long time, haven’t you?” What a great day for AIPLA and America – congratulations to all involved.
Trademark Reforms?
I have asked our Special Committee on Legislation, in consultation with our Trademark Law and Trademark Litigation Committees, to consider several possible amendments to the Lanham Act, including:
Well-Known Marks. The US government and AIPLA have long supported protection for foreign marks that are well-known in the US but not yet used or registered here, consistent with our obligations under various treaties, bilateral agreements, and similar international instruments. Yet the Trademark Trial and Appeal Board (TTAB) and some courts continue to deny owners of such marks the ability to prevent pirates from using or registering the same (or similar) marks to confuse American consumers. We intend to work with the International Trademark Association (INTA) and other organizations to correct this problem in the near
Remedies. In my view, the monetary remedies section for trademark infringement actions under the Lanham Act (15 U.S.C. § 1117(a)) needs to be reformed. Although we have strong remedies for counterfeiting and cybersquatting, it is very difficult for trademark owners to obtain any monetary relief at all in ordinary trademark infringement cases. This stands in stark contrast to other IP laws—successful patent plaintiffs are entitled to a minimum of a reasonable royalty, and copyright plaintiffs are entitled to statutory damages (assuming they have timely registered their works). Trademark owners, on the other hand, are typically faced with the prospect of spending several hundreds of thousands of dollars litigating against an infringer, only to receive an injunction and no monetary remedy if successful. This is highly inequitable to trademark owners in many circumstances, and deters pursuit of legitimate trademark claims.
We will also be looking at whether the Supreme Court’s eBay decision is making it unduly difficult for successful trademark plaintiffs to obtain preliminary and/or permanent injunctions, and if so consider whether a legislative fix would be appropriate.
Trade Dress Legislation. We will be considering whether the time has come to ask Congress to legislatively overrule certain aspects of the Supreme Court’s decisions in Wal-Mart v. Samara Bros. and TrafFix Devices v. Marketing Displays, which made it much more difficult to obtain trade dress protection for product designs.
TDRA Registration Defense. Finally, we expect to work to correct a drafting error in the Trademark Dilution Revision Act, where ownership of a federal registration was intended to bar state dilution claims only, but instead appears to bar all dilution claims.
Annual Meeting.
Our Annual Meeting in Washington, DC October 19-22 was truly extraordinary. Attendance was at an all-time high (over 2,000 registrants), and there was a palpable “buzz” in the air throughout the week, no doubt inspired by the enactment of the AIA just one month before.
In addition to our usual outstanding CLE programs, highlights included a keynote speech by Senator Patrick Leahy, the lead sponsor of the AIA in the Senate, and presentations by Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office David J. Kappos, who spoke at the opening plenary session and at the luncheon to share his views about the AIA and its impact on the USPTO. As is our tradition, we also presented a number of awards to very distinguished and deserving
Donald R. Dunner, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, received the 2011 AIPLA Excellence Award, in recognition of his extraordinary leadership and service to the intellectual property community, which is representative of a distinguished career marked by intellect, integrity, and an unwavering commitment to the administration of justice.
John B. Pegram, Senior Principal, Fish & Richardson, received the AIPLA President’s Outstanding Service Award, in recognition of and with gratitude for his years of service to AIPLA, as a member and committee leader.
Ehab M. Samuel, Associate, Dickstein Shapiro, LLP, received an AIPLA Project Award, in recognition of his outstanding service as the Chair of the Young Lawyers Committee in setting up monthly meetings around the country which have increased networking and membership.
Patrick J. Coyne, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, received an AIPLA Project Award, in recognition of his outstanding service as Chair of the Amicus Committee for three years and Co-Chair of the Special Committee on Legislation.
Michele K. Herman, recently named incoming Chief Counsel for Innovation Programs with Intellectual Ventures, received an AIPLA Project Award, in recognition of her imprint on standards and AIPLA’s role, and her expert recommendations to the Board as Co-Chair of the Special Committee on Standards and Open Source.
J. Michael Martinez de Andino, Partner, Hunton & Williams, received the AIPLA Mentor of the Year Award, in recognition of his outstanding commitment to the association’s goal of providing professional and career guidance to AIPLA members.
Sean Ricks, Vivint, Inc., received AIPLA’s inaugural Maurice Klitzman Award, which provides the opportunity for a junior corporate attorney or corporate patent agent to attend the Annual Meeting and be connected with an experienced AIPLA mentor.
James Freedman, Stanford Law School, received AIPLA’s 2011 Robert C. Watson Award, which recognizes the author of the best article on a subject relating to the protection of intellectual property.
Andrew Sellars, George Washington University National Law Center, received AIPLA’s 2011 Jan Jancin Award, which recognizes outstanding achievements in the study of intellectual property law.
Nancy Cheng, University of California, Santa Clara, received AIPLA’s 2011 Past Presidents’ Award, which recognizes outstanding academic achievements in the study of intellectual property law.
Congratulations to Wayne Sobon (Officer-in-Charge), our hard working Professional Programs Committee led by Steve Malin and Manny Schecter, and all of the coordinators, moderators, speakers, committee leaders, and staff for
making this such a successful meeting.
Mid-Winter Institute. On January 23-26, we will hold our Mid-Winter Institute at the one-and-only Caesars Palace in Las Vegas. Our President-Elect Jeff Lewis (Officer-in-Charge) and his planning committee are creating a unique and memorable program focusing on balancing a law practice with a quality life. I hope you will be able to join us for all the fun and excitement in Vegas.

Other Programs. In addition to our stated meetings, AIPLA continues to offer a wide range of educational conferences, boot camps, and webinars, including several series of online programs focused on changes in law and practice under
the AIA. Please visit our website ( for more information about these outstanding educational offerings.
USPTO. Our relationship with the USPTO has never been better. The USPTO has asked for our input and participation on a number of initiatives, and our members and staff have been hard at work responding.
Dominating these tasks is the Herculean effort underway to prepare responses to the rule-making initiatives and studies mandated by the AIA. Our Immediate Past President Dave Hill appointed Past President Alan Kasper to chair a task force to tackle these projects, assisted by sub-chairs Greg Allen (responsible for Patent Office Practice Issues), Herb Hart (Post-Grant Review Issues), and Mike Kirk (Other Administrative Issues). This team has already put in a tremendous amount of work, including submission of extensive initial comments to the USPTO on November 18.
In addition, Herb Hart and Ken Nigon are representing AIPLA on a Committee of Experts, along with representatives from the ABA IPL Section and IPO, which submitted detailed comments and proposed rules to the USPTO relating to
Post-Grant Review, Inter Partes Review, and the Transitional Program for Covered Business Patents Under the AIA. We also submitted comments regarding the USPTO’s studies on Prior User Rights and International Patent Protection for Small Businesses, and Alan Kasper testified on AIPLA’s behalf at hearings before the USPTO on these topics in October. The AIPLA task force will no doubt remain busy on AIA-related rules, studies, and projects for the foreseeable future.
USPTO Director Kappos has also assembled a task force to consider a Nationwide Patent Pro Bono Initiative, and requested participation from AIPLA, ABA, IPO, and other organizations. Our representatives on this task force are
Georgann Grunebach and Laura Zeman Mullen.
On the trademark side of the office, at the invitation of Chief Administrative Trademark Judge Gerard F. Rogers, Linda McLeod and Steve Meleen represented AIPLA at a November 1 roundtable discussion focusing on processing
times and pendency measures in inter partes cases at the TTAB. On November 29, at the invitation of Commissioner for Trademarks Deborah S. Cohn, Meghan Donohoe and Allison Strickland represented AIPLA at a meeting with the USPTO to discuss ways to develop and deliver educational programs aimed at small business owners regarding proper protection of trademark rights against infringement, including
best practices for C&D letters. Finally, Commissioner Cohn invited AIPLA to participate in a User Group Session of the Tenth Annual Trademark Trilateral Cooperation Meeting on December 6, where Jody Drake spoke on our behalf. Vince
Garlock, Dave Hill and I attended as observers, and we hosted a reception and dinner for the Trademark Trilateral delegates that night.
Global Outreach

One of the key objectives in our strategic plan is global outreach. We are frequently invited to attend and participate in meetings with our sister organizations and with governments around the world. Below is a summary of
recent activities in this area:
Todd Dickinson attended the ABPI Annual Meeting in Rio de Janeiro August 28-30, a Conference on Accelerating IP and Innovation in South Africa September 18-20, the WIPO General Assemblies in Geneva September 26 – October 5, the CAFC/Tokyo High Court Joint Judges Conference in Tokyo October 25-27, and the European/US Patent Reform Congress in London November 18.
Dave Hill and Todd Dickinson attended the ABA Annual Meeting in Toronto August 4-9, the AIPPI Forum and ExCo meeting in India October 13-15, and the Industry Trilateral meeting in Paris November 8-9.
Dave Hill attended the Chartered Institute of Patent Agents (CIPA) Annual Meeting and President’s Dinner in London October 6-7.
Wayne Sobon attended the Licensing Executives Society (LES) US and Canada Annual Meeting in San Diego October 16-19.
Jonathan Madsen attended the WIPO Standing Committee on Trademarks Meeting in Geneva October 24-28.
Chen Wang, Vince Garlock, and Jim Crowne hosted a delegation from the Zhejiang IP Office at AIPLA headquarters October 27.
I attended the ASIPI XVI Work Sessions and Administrative Council in Bolivia October 30 – November 2, the FICPI ExCo Meeting in Rome November 6-8, and the INTA Annual Meeting in Miami November 10-12.
I, along with Alan Kasper, Mark Guetlich, and Tony Venturino, attended the third meeting of the Global Network of National IP Practitioner Associations in Rome on November 9. The meeting was well attended, with leaders from national IP organizations from Australia, Austria, Brazil, Canada, China, France, Germany, Italy, Japan, Korea, New Zealand, Singapore, Spain, and the U.K., as well as the ABA/IPL Section, AIPPI, ASIPI, and FICPI as observer organizations, and provided a wonderful venue for exchanging information and collaborating about IP protection worldwide.
On November 22, we hosted an EPO-US Bar Patent Quality meeting at AIPLA headquarters. Representatives from our IP Practice in China Committee met with the IP Committee of the All China Lawyer’s Association in China in November.
Vince Garlock, Dave Hill and I attended the IPO Education Foundation PTO Day and Awards Dinner in Washington, DC on December 5. Jeff Lewis and Todd Dickinson also attended the dinner.
Alan Kasper and Mark Guetlich attended the WIPO Standing Committee on Patents Meeting in Geneva December 5-9.
Public Education
Another one of our major strategic objectives is educating the public at large about the value of intellectual property to our economy and society, and the importance of strong and balanced IP laws. A key initiative that my predecessor
Dave Hill and I launched recently to assist in this process is a Rapid Response Task Force, chaired by Joe Cianfrani and Griff Price. The purpose of this team is to identify erroneous or unfair negative news reports or other publicity about IP, and where warranted, prepare responses that we will seek to have published in the same and/or equally prominent publications. This task force has been quite busy, and we already have efforts underway to get these responses
published to counteract this type of negative publicity. Many thanks to this energetic team of talented writers, and to Jim Crowne for coordinating this effort and skillfully working to get the responses published.
In addition, our Public Education Committee continues to actively develop its website ( and materials to assist in educating the public of all ages and walks of life about the importance of intellectual property. AIPLA also participated in the USPTO’s Trademark Expo, which had over 15,000 attendees over the course of two days.

Amicus Activity
. Ed Reines, Jerry Selinger, and Jim Crowne continue to do a masterful job leading AIPLA’s amicus efforts. We have filed amicus briefs in the following cases since the last President’s Report:
Golan v. Holder. AIPLA argued to the Supreme Court that Section 514 of the Uruguay Round Agreements Act, which accords copyright protection to various foreign works that were previously in the public domain in the United States so long as the term of protection would not have otherwise already expired, is a proper exercise of Congress’s power under the Copyright Clause of the US Constitution and does not violate the First Amendment.
Kappos v. Hyatt. AIPLA argued to the Supreme Court that a patent applicant who files a civil action under 35 U.S.C. § 145 to challenge the USPTO’s rejection of a patent application may introduce new evidence, and the district court should decide de novo the factual questions to which such new evidence pertains.
Mayo Collaborative Services v. Prometheus Laboratories, Inc. AIPLA argued to the Supreme Court that claims directed to personalized medicine, therapeutic treatment of humans, and diagnostic methods that utilize the natural metabolic
process of the human body constitute patent-eligible subject matter under 35 U.S.C. § 101.
Although we frequently file amicus briefs in the Supreme Court and Federal Circuit, I have asked our Amicus Committee, Trademark Litigation Committee, and Copyright Law Committee to be on the lookout for appropriate cases to participate in at the regional circuit courts of appeals.
Comments to Government and Administrative Authorities
On September 19, we submitted comments to the USPTO regarding a proposed revision of the materiality to patentability standard for the duty to disclose information in patent applications. My appreciation to Ken Nigon of
the Patent Law Committee and Greg Allen of the Patent-Relations with the USPTO Committee for their work on these comments.
On September 22, we submitted comments to the USPTO regarding proposed changes in requirements for specimens and for affidavits or declarations of continued use or excusable nonuse in trademark cases. Many thanks to Jody Drake for drafting these comments.
On October 14, we submitted comments to the State Council Legislative Affairs Office regarding the 2011 Revision Draft to the Trademark Law of the People’s Republic of China. Many thanks to the Trademark Treaties and International
Law Committee and the IP Practice in China Committee for preparing our comments and translating them to Chinese.
On October 25, the new Register of Copyrights Maria A. Pallante issued a report entitled, “Priorities and Special Projects of the United States Copyright Office.” Our Copyright Law Committee is busy studying this extensive
report and will make recommendations about commenting on various priorities and projects.
On October 31, we submitted comments to the USPTO on practices and procedures we would like to see other IP offices harmonize and improve as part of our user group participation in the Trademark Trilateral Cooperation meeting
in December.
On November 3, Naomi Voegtli presented a statement to NAS on our behalf regarding IP management in standardsetting processes worldwide.
On November 10, we joined a letter to the US Department of Commerce expressing concern about ICANN’s decision to approve the new gTLD Applicant Guidebook and move forward with plans to open the new gTLD application window in January. In a similar vein, we joined a letter to ICANN in September expressing concern about its proposed revisions to its conflicts of interest policy.
Committee/Personnel News
Several of our special committees “graduated” to full standing committees in October. These include the Food and Drug Committee (formerly the Special Committee on the FDA), the IP Practice in China Committee, and the
Mergers and Acquisition Committee. I also created a new Special Committee on IP Practice in Israel, and we are participating in a newly formed SIPO/US Bar Liaison Council. Congratulations to these committees for their development and outstanding contributions to AIPLA.
The Young Lawyers Committee has introduced a terrific newsletter entitled Business Casual.
Congratulations to Mark Whitaker of Baker Botts LLP, who was recently appointed to serve as our General Counsel.
Congratulations to Linda McLeod (current Chair of our Trademark-Relations with the USPTO Committee) for her recent appointment to the TPAC. Our association is now well-represented on the USPTO’s public advisory committees, with Linda joining Jody Drake (outgoing Chair of the Trademark-Relations with the USPTO Committee) on the TPAC, and our First Vice President Wayne Sobon serving on the PPAC.
At our Annual Meeting, several employees were honored for reaching significant milestones in their tenure with AIPLA, including Bill Durante (31 years), Cathleen Clime (25 years), and Iris Howell (15 years). These are very special people, and I want to personally thank and congratulate them for their many years of service and loyalty to our association.
Last but not least, please help me welcome several new hires to the AIPLA family: Lorri Ragan (Director of Marketing and Communications), Erin Sheehan (Policy Assistant), Paige Barfield (Marketing, Communications and Web Assistant), and Megan Impala (Online CLE and IT Assistant). We are very blessed to have such talented and energetic employees joining our staff.
See you in Vegas!!