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AIPLA President's Page, Mid-Winter 2011 Bulletin


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.  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.

USPTO 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.  Click here 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.   Click here for more information. 


US 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 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, March 1, 2011.

  2. AIPLA Response to USPTO “Request for Comments on Trademark Litigation Tactics”, January 7, 2011AIPLA Comments to UPSTO on TrademarkLitigationTactics-01.7.11.pdf

  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, 2011AIPLA Comments to USPTO on BoseRoundtableSuggestions-1.12.11.pdf

  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, 2011AIPLA Comments to USPTO on ProposedRulemaking-BPAI-1-14-2011.pdf

  5. AIPLA Response to USPTO on Request for Comments regarding  “Examination Guidelines Update: Developments in the Obviousness Inquiry after KSR v. Teleflex”, 11 February, 2011KSR Comments-02-10-11-clean-signed.pdf

  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, 2011AIPLA Comments to NIST-SOS-RFI-2.18.2011.pdf

  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 AIPLA Comments to USPTO on Track 1 Proposal-3.07.2011.pdf

  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 2011AIPLA Letter to AU Senate LC Committee-3.15.2011.pdf

  9. AIPLA Comments to WIPO Circular C. PCT 1288 Concerning the Development of a PCT Third Party Observation System, March 29, 2011​AIPLA Comments to WIPO on PCT Third Party Observation-3.29.2011.pdf

  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​ AIPLA Comments to USPTO on Section 112 Guidelines-4.11.2011.pdf

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. Click here to go to the IP Practice in Eurpoe 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.  I hope to see you in San Francisco!