AIPLA 2012 Mid-Winter eBulletin

BULLETINAmerican Intellectual Property Law Association

2012 Mid-Winter InstituteLas Vegas, NV

2 aipla bulletin 2012 mid-winter institute issue

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in this issue...

President’s Report ...........................................................................................................................................6Board of Directors Meeting Dates .....................................................................................................................5Copyright Office Affairs ....................................................................................................................................10Upcoming AIPLA Webinars .............................................................................................................................17Future Industry Events ....................................................................................................................................18Thank You 2012 Mid-Winter Institute Sponsors ............................................................................................19

AIPLA Strategic Plan .......................................................................................................................................28

Committee Reports:

Alternative Dispute Resolution .............................. 29Amicus ................................................................... 30Anti-Counterfeiting and Anti-Piracy ........................ 30Antitrust Law ......................................................... 30Biotechnology ....................................................... 30Chemical Practice ................................................. 32Copyright Law ....................................................... 33Corporate Practice ................................................. 33Diversity in IP Law ................................................. 34Education ............................................................... 34Electronic and Computer Law .............................. 34Emerging Technologies ......................................... 36Fellows ............................................................... 37Food and Drug ....................................................... 38Industrial Designs ................................................. 38International and Foreign Law ............................... 38International Education .......................................... 39International Trade Commission ............................ 40IP Law Associations ............................................... 40IP Practice in China .............................................. 41IP Practice in Europe ............................................. 41IP Practice in the Far East ..................................... 42IP Practice in Japan ............................................... 42IP Practice in Latin America .................................. 43Law Practice Management .................................... 44Law Students ......................................................... 44Licensing and Management of IP Assets .............. 44Membership ........................................................... 45Mentoring ............................................................... 45

Mergers and Acquisitions ..................................... 45New Lawyers ........................................................ 46Online Programs .................................................... 46Patent Agents ....................................................... 48Patent Cooperation Treaty Issues ........................ 48Patent Law ............................................................. 48Patent Litigation ..................................................... 50Patent-Relations with the USPTO ......................... 50Professional Programs ......................................... 51Professionalism and Ethics ................................... 51Public Appointments .............................................. 52Public Education .................................................... 52Special Committee on Genetic Resources, Traditional Knowledge and Folklore .................... 53Special Committee on IP Practice in Israel 53Special Committee on Legislation ......................... 54Special Committee on National IP Practitioner Associations Worldwide ....................................... 55Special Committee on Standards and Open Source ......................................................... 55Trade Secret Law ................................................. 56Trademark Internet ................................................ 57Trademark Law ...................................................... 57Trademark Litigation .............................................. 57Trademark Treaties and International Law ............ 58Trademark-Relations with the USPTO ................. 59USPTO Inter Partes Patent Proceedings .............. 59Women in IP Law .................................................. 59

Front Cover Photo Credit:Caesars Palace, Austin CVB Image Library

Published from the Association Office

AIPLA241 18th Street South, Suite 700Arlington, VA 22202(p) 703.415.0780(f) 703.415.0786Web: www.aipla.org

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New Members .................................................................................................................................................60


Bulletin

Brian B. Darville Brocadiant, PLLC211 North Union Street Suite 100Alexandria, VA 22314

Mercedes K. Meyer Drinker Biddle & Reath, LLP1500 K Street, NW, Suite 1100Washington, DC 20005-1209

Philip T. Petti USG Corporation550 West Adams StreetChicago, IL 60661

Michael W. Piper Conley Rose, PC5601 Granite Parkway Suite 750Plano, TX 75024

Board of Directors

President William G. Barber PirkeyBarber, LLP600 Congress Avenue, Suite 2120Austin, TX 78701

President-ElectJeffrey I.D. Lewis Patterson Belknap Webb & Tyler, LLP1133 Avenue of the AmericasNew York, NY 10036-6710

First Vice PresidentWayne P. Sobon Rambus, Inc.1050 Enterprise Way, Suite 700Sunnyvale, CA 94089

Second Vice PresidentSharon A. Israel Mayer Brown, LLP700 Louisiana Street, Suite 3400Houston, TX 77002

Immediate Past PresidentDavid W. Hill Finnegan, Henderson, Farabow, Garrett & Dunner, LLP901 New York Avenue, NWWashington, DC 20001-4413

SecretaryElizabeth Ann “Betty” MorganThe Morgan Law Firm260 Peachtree Street, Suite 1601Atlanta, GA 30303

TreasurerGeorgann S. Grunebach Fox Legal Group2121 Avenue of the StarsLos Angeles, CA 90067

Officers

term expires october 2012


Bulletin

Thursday, May 10, 2012Austin, TXSaturday, May 12, 2012Austin, TXWednesday, July 11, 2012Arlington, VA

Friday, September 14, 2012Austin, TXThursday, October 25, 2012Washington, DCSaturday, October 27, 2012Washington, DC

2012 Board of DirectorsMeeting Dates

Philip S. Johnson Johnson & JohnsonOne Johnson & Johnson PlazaNew Brunswick, NJ 08933

Samson Helfgott Katten Muchin Rosenman, LLP575 Madison AvenueNew York, NY 10022-2585

Carl Oppedahl Oppedahl Patent Law Firm, LLCP O Box 5940Dillon, CO 80435

Kimberly N. Van VoorhisMorrison & Foerster755 Page Mill RoadPalo Alto, CA 94304

term expires october 2014Barbara A. Fiacco Foley Hoag LLPSeaport West155 Seaport BoulevardBoston, MA 02210-2600

J. Michael Martinez de Andino Hunton and WilliamsRiverfront Plaza, East Tower951 Byrd StreetRichmond, VA 23219

Kevin Tottis Law Offices of Kevin TottisSuite 1200211 West Wacker DriveChicago, IL 60606

Chen Wang E.I. du Pont de Nemours and CompanyBarley Mill Plaza 25/12084417 Lancaster PikeWilmington, DE 19805

Executive Director Q. Todd DickinsonAIPLA241 18th St. SArlington, VA 22202

General CounselMark L. Whitaker Baker Botts, LLP1299 Pennsylvania Avenue, NWWashington, DC 20004

term expires october 2013


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/RulesDominating 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

President’s Reportby: William G. Barber, AIPLA President


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 GovernmentIn 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 ActivitySince 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).

ICANNOn 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 OutreachIn 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 NewsIn 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!


Register of Copyrights Announces Priorities and Special Projects

Register of Copyrights Maria A. Pallante announced her priorities and special projects for the next two years in a document titled Priorities and Special Projects of the United States Copyright Office that was released to the public on October 25, 2011.

Pallante summarized ambitious plans regarding copyright policy and administrative practice and announced ten new projects focused on improving the quality and efficiency of Office services. For the benefit of the public, the report also summarizes the history, responsibilities, and funding of the Office.

The priorities include initiatives in copyright policy as well as administrative practice. One policy priority is exploring issues relating to mass book digitization. The Office followed up with a discussion document on the subject on October 31, 2011. This document is available on the Copyright Office website at www.copyright.gov/docs/massdigitization. The analysis will serve as the basis for future research and policy discussions.

Another policy priority involves the development of a discussion document and preliminary recommendations on copyright exceptions for libraries and archives following the 2008 Section 108 Report sponsored by the Librarian of Congress and the Register of Copyrights.

This report concluded that section 108 of the Copyright Act fails to meet the needs of libraries and archives in dealing with born-digital works, digital preservation and conversion issues, and other types of use and lending.

With respect to administrative practice, the Register’s priorities include the development of options for websites and other forms of digital authorship, which present challenges to the current copyright-registration system. When a website contains contributions from many authors and changes frequently, what is the appropriate unit of registration? How can an accurate, informative record of copyright ownership be created? The Office intends to engage in consultations with stakeholders and seek public comment on possible solutions and decisions in 2012.

Pallante described ten special projects, inviting staff to participate and telling them that many of the projects came from her discussions with them and the copyright community.

One project will be a series of targeted meetings with business and information-technology experts in the copyright sector to discuss possible enhancements and improvements that can be made to the Office’s electronic registration and recordation services. In these discussions, the Office will explore the feasibility of connecting the Office’s database of registration and recordation records to private-sector data to facilitate licensing and use of copyrighted materials.

Other special projects include a study of the costs incurred by the Office in providing services to the public and the fees it charges for those services, and a revision to its Compendium, which serves as a general guide to practices and procedures and has not been updated in whole since 1984.

The Office also will collaborate with law schools and universities on research projects with the goal of publishing joint scholarly papers on copyright topics of national and international importance that are useful to the work and mission of the Office and the Congress and may explore fellowships or other scholar-in-residence programs to produce scholarly research on matters of copyright law and policy. The positions will be awarded using a standard government selection process beginning in 2012.

The Register’s document has received significant positive attention throughout the copyright community.

“Register Pallante has hit the ground running in her new role as head of the Copyright Office,” said Tracey Armstrong, president and chief executive officer of the Copyright Clearance Center.

The US Chamber of Commerce commended Pallante for her “forward-thinking vision for the Copyright Office” and said the plan “offers a clear and transparent approach to 21st century issues.”

The document is available at www.copyright.gov/docs/priorities.pdf.

Copyright Office Affairsby: Wendi A. Maloney & Judith Nierman


Office Recommends Federal Protection for Pre-1972 Sound Recordings

The Copyright Office advised Congress to bring pre-1972 sound recordings under federal copyright protection in a December 2011 report. The Office reached this conclusion after months of study and extensive consultation with stakeholders, including a two-day public roundtable.

Congress directed the Office to prepare the report in the Omnibus Appropriations Act of 2009.

Congress granted federal protection to sound recordings in 1972 in response to rampant record and tape piracy at the time. But protection was provided only beginning February 15, 1972, the effective date of the legislation. Works created earlier continued to be governed by state laws as they had been previously.

In 1976, when Congress created a single national copyright system for works within the subject matter of copyright, including works protected by state laws, sound recordings were left outside the federal scheme. “Congress did not articulate grounds” for this exclusion, the report states, and little information exists about the reason for it.

As a result, pre-1972 sound recordings remain covered by an assortment of state laws that will keep them, including those created before 1923, out of the public domain in most states until 2067. Under federal law, most pre-1923 works are already in the public domain.

Pre-1972 recordings “encompass every conceivable sound, . . . from the music of small ethnic enclaves, to million-selling pop hits,” the report states.

But noncommercial recordings, such as ethnographic field recordings, oral histories, and private home recordings, constitute the bulk of pre-1972 sound recordings. Many of these recordings reside in libraries and archives.

“These recordings are a rich aspect of this country’s cultural heritage,” the report states. “It is important to ensure that they will be preserved and accessible for researchers and scholars, as well as future generations.”

Librarians and archivists say that achieving this goal under current law has not been possible, because the law presents legal risks their institutions are unwilling to accept.

“The protections that state law provides for pre-1972 sound recordings are inconsistent and sometimes vague and difficult to discern. The laws lack clearly delineated exceptions, making it hard for users to predict with assurance the range of activities that are permissible and those that are likely to result in liability,” the report explains.

Many librarians and archivists have advocated for federal protection of pre-1972 sound recordings to help clarify measures they can take to preserve the recordings and

make them publicly available.

Right-holder groups, however, have asserted that federalization would disrupt long-standing business models based on current law, partly by creating uncertainty about copyright ownership of pre-1972 sound recordings, among other problems.

The report acknowledges “legitimate policy arguments on both sides of the question” but concludes that “on balance, the better course of action is to bring pre-1972 sound recordings under federal jurisdiction.”

“National uniformity of copyright law ensures that all users, consumers, intermediaries, and right holders are operating under a single, consistent set of laws. This has been the goal of copyright law since 1790, and federal protection for pre-1972 sound recordings would be the last step in making it a reality,” the report states.

Moreover, extending to pre-1972 recordings the provisions in federal law that permit libraries and archives to copy holdings would further the recordings’ preservation and public access to them. Achieving this goal would be “an important public benefit,” the report states, especially given the “fragile physical state of many such recordings and the inaccessibility of so much of the nation’s audio heritage.”

The report notes that “ownership challenges are real,” but suggests they can be addressed by “stating that for all pre-1972 sound recordings newly brought into the federal system, the ownership on the day of enactment will be the same as the ownership on the day prior to enactment.”

For sound recordings fixed before February 15, 1972, the report recommends a term of protection of 95 years from publication. For sound recordings that remained unpublished on the effective date of legislation federalizing protection, the report suggests a term of 120 years from fixation.

In no case, the report states, would protection continue past February 15, 2067. But copyright owners of works whose terms would expire before 2067 could secure extended protection by making their pre-1972 sound recordings publicly available at a reasonable price and notifying the Copyright Office of their intention to secure extended protection.

The full text of the report is available at www.copyright.gov/docs/sound/pre-72-report.pdf.

Michele Woods Named Associate Register

Register of Copyrights Maria A. Pallante named Michele Woods associate register for policy and international affairs on October 23, 2011.

Woods has substantial experience in domestic and international copyright policy, including through prior positions with the Copyright Office. She headed the Office of


Policy and International Affairs (PIA) on an acting basis from October 2010 to October 2011. Before that, she was senior counsel for policy and international affairs. She started at the Office in 2009.

The staff of PIA analyze copyright legislation and support the legislative process, conduct policy studies, and review foreign copyright laws. Copyright enforcement and antipiracy efforts are also an important focus for PIA. Its staff often serve on US delegations to international organizations and in negotiations with foreign governments.

Before joining the Copyright Office, Woods was in private practice in Washington, D.C., most recently from 2000 to 2009 as counsel in the Intellectual Property and Technology Group at Arnold and Porter.

Woods received JD and LLM (in international and comparative law) degrees from Duke University School of Law. She has a bachelor’s degree from Princeton University and a master’s from Oxford University.

Compendium of Copyright Practices to Be Updated

Maria A. Pallante, the Register of Copyrights, announced in September 2011 a project to revise the Compendium of Copyright Office Practices, stating that she expects to publish a revised volume in two years. She said the public will be invited to comment as the process unfolds.

The compendium is the official source of Copyright Office registration and recordation practices. Intended mainly as a reference for Office staff, the compendium was first made publicly available in 1967. Since then, the public and the courts have used it as a resource, including in instances when the Office’s practices have been the focus of litigation.

“To this end, the compendium must accurately reflect our actual practices, must reflect current legal developments, and must provide guidance in the registration of digital authorship,” Pallante stated.

The Office published a second edition of the compendium, known as Compendium II, in 1984. The volume has been updated since to reflect developments in Office practices; the most recent substantive revision took place in 1998.

To manage the current effort, the Office has contracted with Mary Rasenberger, an expert in copyright law and practice and a former Copyright Office and Library of Congress staff member. Experienced in highly technical writing, Rasenberger will work with Office managers and staff to centralize, audit, draft, and codify revisions to the compendium, to be known as Compendium III.

Office Analyzes Copyright Options in Mass Digitization Projects

The Copyright Office released a report on October 31, 2011, exploring the legal and policy implications of projects proposing to scan large quantities of copyrighted works. Titled Legal Issues in Mass Digitization: A Preliminary Analysis and Discussion Document, the report builds on prior work by the Copyright Office, Congress, and the stakeholder community on issues related to mass digitization.

The Copyright Office intends for the report to encourage further public discussion of these issues.

The report starts with an analysis of the March 2011 rejection by a federal court of the class-action settlement in Authors Guild v. Google Inc., related to the highly publicized Google book-scanning effort.

Although the judge declined to authorize the settlement, he acknowledged the benefits of large-scale digitization projects that make books widely accessible. “Libraries, schools, researchers, and disadvantaged populations will gain access to far more books,” he wrote. “Authors and publishers will benefit as well, as new audiences will be generated and new sources of income created. Older books … will be preserved and given new life.”

Legal Issues in Mass Digitization looks at ways to make digitization possible in accordance with long-standing principles of copyright law. “The public is eager to obtain digitized versions of books and other literary works,” the report states. “At the same time, right holders, including authors and publishers, want to make sure the mass digitization framework evolves in a way that allows the continued development of their works.”

The report examines several ongoing mass digitization projects and analyzes licensing models that have been proposed to clear rights in projects including copyrighted works. Forms of collective licensing are among the models proposed, including voluntary, extended, and statutory licensing.

Whether US copyright law needs to be changed to accommodate mass digitization depends on whether public policy objectives warrant legislative action, the report states, concluding, “The Office is pleased to provide this analysis for the benefit of the public and looks forward to facilitating the nation’s continuing discussion on mass digitization policy.”

To read the full text, go to www.copyright.gov/docs/massdigitization.

Office Launches Digitization Project Blog

The Copyright Office launched its first blog on December 1, 2011, to invite public discussion about the best way to build


a searchable database of the Office’s pre-1978 copyright records.

The Copyright Digitization and Public Access Project, the subject of the new blog, is focusing on the roughly 70 million records created from 1870 to 1978, many of which remain relevant today in determining the copyright status of works. Records created since 1978 are already searchable on the Office’s website.

Because no duplicates exist for many pre-1978 records, their preservation is another major goal of digitization.

“This is an ambitious project that I announced recently as one of several priorities and special projects the Copyright Office is undertaking,” Maria A. Pallante, Register of Copyrights, explained in an inaugural blog posting.

The first phase of the digitization project involves scanning records. Scanning began in February 2010 with the Catalog of Copyright Entries, a 660-volume index to copyright registrations and renewals published from 1891 through 1977.

Scanning of card catalog records started several months later in 2010.

Pallante told blog readers that a total of nearly 13 million records from the card catalog and more than half the Catalog of Copyright Entries volumes had been scanned as of December 1, 2011. “The images have been processed through quality assurance and moved to long-term managed storage,” she reported.

As scanning continues, work has started on the second major phase of the project: the effort to make digitized records publicly accessible online. It is on this part of the project that the Office especially seeks public feedback through the blog.

“How do we go about creating a searchable database comprised of 70 million digital objects?” Pallante asked blog readers. “For that matter, how do we create metadata for such a large volume of records? Assuming we would like to achieve full-level indexing, how do we do so on a rudimentary indexing budget? What technologies and creative approaches can we profitably employ to get this work done? We welcome your ideas and suggestions on these and many other questions related to this project.”

Since the blog’s launch, the Office has received numerous substantive comments.

The blog is accessible at http://blogs.loc.gov/copyrightdigitization.

Copyright Office to Study Remedies for Small Claims

At the request of Congress, the Copyright Office is undertaking a study to assess whether the current legal system hinders

or prevents copyright owners from pursuing copyright infringement claims that have a relatively small economic value, and if so, how. The study will assess the extent to which authors and other copyright owners are prevented from seeking judicial relief from infringement due to the judicial system and to provide specific recommendations for changes to improve the method by which small claims are adjudicated.

The law provides that copyright cases must be brought in federal court, but federal lawsuits can be time-consuming and expensive, and the cost of litigation often far exceeds the damages suffered by the copyright owner. The owner of a copyright in a single photograph with a small commercial value, for example, may not have the means to bring suit, essentially lessening the value of the copyright, because there is no effective mechanism of enforcement. According to the Office’s Federal Register notice (76 FR 66758), the median cost in 2011 for litigating a copyright infringement lawsuit with less than one million dollars at stake was $350,000, a cost far exceeding the resources of many individual copyright owners.

The Office previously addressed the issue of small claims in a March 2006 statement to the House Subcommittee on Courts, the Internet, and Intellectual Property that noted the difficulties faced by small claims and proposed to review alternatives through further study. In addition, the Office identified challenges represented by small claims in its 2006 Report on Orphan Works.

As stated in the Federal Register, “The Office is requesting comment on how copyright owners and defendants use the current legal system for small copyright claims, including information on the obstacles and benefits of using federal district courts.” In addition, the Office seeks comment on “potential alternatives for handling copyright claims that have a relatively small economic value.” Comments were due January 16, 2012.

The study is one of the Register’s priorities as described in her Priorities and Special Projects plan released in October 2011.

Register Testifies on Bill Aimed at Online Piracy

Register of Copyrights Maria A. Pallante testified on November 16, 2011, before the House Judiciary Committee on the Stop Online Piracy Act. The bill aims to improve the ability of the government to shut down websites created mainly to distribute intellectual property without authorization from copyright owners.

“The Internet harbors a category of bad-faith actors whose very business models consist of infringing copyright in American books, software, movies, and music with impunity,” Pallante stated in written testimony. “Frequently located


offshore, these operators of rogue websites target American consumers and facilitate transactions using the services of search engines, advertising networks, and credit card companies.”

Pallante stated that if Congress does not continue to provide serious responses to piracy, the “US copyright system will ultimately fail.”

“The premise of copyright law,” she wrote, “is that the author of a creative work owns and can license to others certain exclusive rights—a premise that has served the nation well since 1790. Congress has repeatedly acted to improve enforcement provisions in copyright law over the years, including in the online environment. [The Stop Online Piracy Act] is the next step in ensuring that our law keeps pace with infringers.”

The bill authorizes the US Justice Department to seek court orders requiring search engines to dismantle direct hyperlinks to foreign infringing sites and compelling service providers to block US subscribers’ access to the sites.

The bill also permits the Justice Department to request court orders to stop payment processors and advertisers from serving foreign infringing sites. Many illegal sites rely on mainstream credit card companies to process payments, and some fund illegal activities by hosting advertisements for well-known products.

Pallante called the bill comprehensive and measured. “It requires all key members of the online ecosystem, including service providers, search engines, payment processors, and advertising networks, to play a role in protecting copyright interests,” she said.

Pallante also discussed a separate portion of the bill that increases penalties for illegal public performance of copyrighted works by Internet streaming.

“Unfortunately, prosecutors are placed at a disadvantage and have a disincentive to pursue cases of willful, criminal streaming because (unlike instances of willful reproduction or distribution), the maximum possible penalty is a misdemeanor,” she explained.

The Senate Judiciary Committee passed a similar bill, the Protect Intellectual Property Act of 2011, but that bill did not include provisions on unlawful streaming. Both bills have generated heated public debate. Technology firms in particular have objected to them.

“I do not want to suggest that blocking websites is a small step,” Pallante told the committee. “It is not—and the public interest groups that oppose this part of the bill are right to be concerned about unintended consequences. However, it may ultimately come down to a question of philosophy for Congress. If the Attorney General is chasing 21st-century infringers, what kinds of tools does Congress want to

provide?”

Pallante’s testimony is available at www.copyright.gov/docs/regstat111611.html.

Her testimony includes comments about steps copyright owners could take under the bill to address infringement of their works by domestic or foreign websites, including filing of lawsuits.

Register Moderates Panel on Collective Licensing

Register of Copyrights Maria A. Pallante moderated an October 22, 2011, panel discussion about prospects for collective licensing of copyrighted works. The panel took place during the AIPLA Annual Meeting.

Michele Woods, associate register for policy and international affairs, was a panelist, as was Marybeth Peters, the retired Register, now senior counsel at the intellectual property law firm Oblon Spivak. Other panelists were Jan Constantine of the Authors Guild and Daniel Gervais of Vanderbilt University Law School.

Pallante noted that collective licensing has been offered as a solution to clear rights in mass digitization projects, or projects that scan large quantities of works to preserve them or make them available online.

Woods reported on a memorandum of understanding signed in the European Community in September 2011 that has been called an example of extended collective licensing.

Signed by authors, publishers, libraries, and collective management organizations, the agreement aims to facilitate the digitization and online availability of out-of-print books and journals in the collections of national libraries and other cultural institutions.

Under the agreement, once a collective management organization can show that it represents a substantial number of authors and publishers whose works will be affected, it can apply to a designated government agency to represent all relevant authors and publishers, except for those who decline to be represented.

Because the memorandum is not legally binding, legislation may be required in some European member states to create a legal basis for collective management organizations to represent right holders who do not belong to their organizations.

“Google brought to the fore the idea that mass digitization could occur quickly,” Woods said.

Google started scanning large quantities of books for commercial purposes in 2004 through agreements with major research libraries. Foreign books in the collections of the participating libraries were included in the project.


“There was a fear that a private US company would take over and profit from the cultural heritage of European nations,” Woods said.

“The Europeans are suggesting how mass digitization might help to achieve preservation of important cultural materials. We in the Copyright Office are interested in thinking further about that.”

Copyright Office Announces Proposals Received in DMCA Anticircumvention Rulemaking

The United States Copyright Office sought comments on proposals to exempt certain classes of works from the prohibition on circumvention of technological measures that control access to copyrighted works (76 FR 60398).

In September 2011, the Office initiated a rulemaking proceeding in accordance with provisions added by the Digital Millennium Copyright Act (“DMCA”) that provide that the Librarian of Congress, upon the recommendation of the Register of Copyrights, may exempt certain classes of works from the prohibition against circumvention. The purpose of this rulemaking is to determine whether there are particular classes of works as to which users are, or are likely to be, adversely affected in their ability to make noninfringing uses due to the prohibition on circumvention.

The Copyright Office published the classes of works received by the Office that were proposed by several parties in the comment period that ended on December 1, 2011. Comments addressing the proposed classes of works were due on February 10, 2012. Reply comments addressing points made in the initial comments were due on March 2, 2012.

All proposed classes of works are available on the Copyright Office website at www.copyright.gov/1201/2011/initial/.

Licensing Division Conducts Stakeholders Meetings

The Licensing Division conducted two stakeholder meetings on November 15, 2011. The morning session was geared to copyright owners, and the afternoon gathering brought together representatives of cable operators. Some stakeholders participated off-site via teleconference.

The division reported that business requirements have been identified, documented, and reviewed. Software has been selected and acquired, and a software team from Software AG USA Inc., an international leader in business process management, is working on the project. An end result will be the seamless integration of all licensing activities in real time.

The financial consultant, KPMG, a global audit, tax, and advisory services firm with a lengthy history of working with

federal agencies, is providing independent validation and verification (IV&V) for the division’s Fiscal Section. The IV&V process includes reviewing key financial and reporting processes; conducting risk assessment on each financial process; and reviewing internal controls and accounting and financial data. KPMG will integrate legacy finance functions, improve reporting and analysis, and develop standard processes that will result in a more efficient finance function and improved control over financial transactions and data.

When reengineering is completed, Licensing Division constituents can expect a functioning electronic filing system with statements of account appearing online within 30 days of filing. Also, the division is considering the possibility of later business hours to accommodate its West Coast stakeholders.

Updated Circular 92 Is Available on Copyright Office Website

The new online edition of Circular 92, which contains the text of the US copyright law, is available on the Copyright Office website at www.copyright.gov/title17/.

The online PDF version of title 17 incorporates the amendments in 2009 and 2010 that extended the section 119 satellite statutory license (Pub. L. No. 111-118, Pub. L. No. 111-144, and Pub. Law No. 111-157). It also includes the Satellite Television Extension and Localism Act of 2010 (Pub. L. No. 111-175), enacted May 27, 2010, and the Copyright Cleanup, Clarification, and Corrections Act of 2010, (Pub. L. No. 111-295), enacted December 9, 2010.

The October 2011 edition of Circular 92 is dedicated to Marybeth Peters, the eleventh Register of Copyrights (1994–2010).

• LegalSecretaries&AdministratorsConferenceJune7–8

• 4thAnnualTrademarkBootCamp June22

• 16thAnnualPatentCooperationTreatySeminar July23–24

• PatentProsecutionPracticalPatentProsecutionTrainingforNewLaywersBootCamp August23–24

AIPLAUpcoming2012Seminars:SaveTheseDates!

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Upcoming WebinarsAre You the Weakest Link? Making Certain that In-House and Outside Counsel Protect Their Client’s Trade Secrets Wednesday, April 18, 2012 12:30 - 2:00 pm EDT With each passing day, there is a new headline about yet another cyber-attack or hacking incident directed at a security, financial or technology firm that was using or storing highly confidential information. Now, lawyers are increasingly becoming the favored target of those efforts to steal trade secrets and other confiden-tial information. In this seminar, Janet and Mark will provide the perspective of both in-house and outside counsel on how law de-partments and law firms can protect themselves and their clients from these threats. This seminar will examine the particular types of attacks targeting lawyers, such as “spear phishing” and attacks directed toward mobile devices, and the best practices that can be used so that you, your firm or department do not become the next headline.

Presented By: Mark Halligan, Nixon Peabody Janet Craycroft, Intel Corporation

Patent Prosecution under the AIA Strategies For Before, During and After the Transition to First to File Wednesday, May 2, 2012 12:30 – 1:30 pm EDT

Ms. Courtenay Brinckerhoff, a partner with Foley & Lardner, LLP, will discuss how to prepare for the transition to the “first to file” system in the American Invents Act (AIA). She will provide strategies that patent practitioners and their clients can adopt now, before the act goes into effect. Joe Matal, Senate Judiciary Committee Counsel to Senator Jon Kyl, will discuss changes in 35 U.S.C. § 102 under the AIA, and what constitutes prior art. He will also provide insight on the legislative process that created the AIA, and legislative history that produced the Act.

Presented By:Joseph D. Matal, Judiciary Committee Counsel to Senator Jon KylCourtney Brinckerhoff, Foley & Lardner LLP

Webinars America Invents Act Webinar Series

For CLE information, visit the “Live Web Based Programs” page in the Learning Center on AIPLA’s website.


April 1-4 LES International Annual Congress Auckland, NZ (www.lesi.org)

April 2AIPLA Electronic & Computer Patent Law Summit San Diego, CA

April 10Design Day, co-sponsored by AIPLA, ABA-IPL and IPO, at the USPTO Alexandria, VA

April 15-21FICPI World Congress and ExCo Melbourne, AU (www.ficpi.org)

April 26World IP Day

May 5–9INTA Annual MeetingWashington, DC (www.inta.org) May 10-12AIPLA Spring Meeting, Hilton Austin, Austin, TX (703-415-0780)

May 15-17LES US-Canada Spring Meeting Boston, MA (www.lesusacanada.org)

June 3-4AIPPI-US IP Forum and Special Meeting

June 7-9AIPLA Legal Secretaries & Administrator’s ConferenceAlexandria, VA (703-415-0780)

June 10-12Copyright Society Annual Meeting Crystal Springs Resort Grand Cascades Lodge, Hamburg, New Jersey (www.csusa.org)

June 20-23ECTA Annual Meeting, Palermo, Italy (www.ecta.org) June 20-23FCBA Annual Bench & Bar Conference San Diego, CA (www.fcba.org)

June 22AIPLA 4th Annual Trademark Bootcamp Alexandria, VA (703-415-0780) June 25-27ACPC Summer Meeting, Beaver Creek, CO (www.acpcnet.org)

July 23-24AIPLA Patent Cooperation Treaty Seminar(703-415-0780)

August 2-5ABA Annual Meeting, Chicago, IL (www.americanbar.org)

August 23-24AIPLA Patent Prosecution Boot Camp – Practical Patent Prosecution Training for New LawyersAlexandria, VA(703-415-0780)

August 26-28ABPI Annual Annual Meeting Sao Paolo, Brazil (www.abpi.org.br)

September 9–11IPO Annual MeetingSan Antonio, TX(www.ipo.org)

September 20-21AIPLA/FICPI Joint Colloquium on Application QualityWarsaw, Poland (703-415-0780)

October 10–12IPIC Annual MeetingVancouver, British Columbia (www.ipic.ca)

October 10-12CIPA Annual Meeting London, United Kingdom (www.cipa.org.uk)

October 14-17LES US-Canada Annual Meeting, Toronto, Ontario, Canada (www.lesusacanada.org)

October 20–24AIPPI World Intellectual Property Congress Seoul, Rep. of Korea (www.aippi.org)

October 25–27AIPLA Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

December 2–5ASIPI International Congress, Punta de Este Uruguay (www.asipi.org) December 10IPO PTO Day and Foundation Dinner Washington, DC (www.ipo.org)

January 30–February 2AIPLA Mid-Winter Institute, Tampa Marriott Waterside Hotel & Marina, Tampa, FL

May 4–8INTA Annual MeetingDallas, TXwww.inta.org

May 15–17AIPLA Spring Meeting, The Westin SeattleSeattle, WA

October 24–26AIPLA Annual Meeting, Marriott Wardman Park, Washington, DC (703-415-0780)

January 29–February 1AIPLA Mid-Winter Institute, Sheraton Wild Horse Pass Resort & Spa, Phoenix, AZ

May 15-17AIPLA Spring Meeting, Philadelphia, PA

October 23–25AIPLA Annual Meeting, Marriott Wardman ParkWashington, DC (703-415-0780)

Future Industry Events

2014

2012

2013


Thank You to Our AIPLA 2012 Mid-Winter Institute Sponsors

PlatinumInternational Game TechnologyCo-Sponsor: Opening Night Reception

Foley Hoag LLPSponsor: Tuesday Theme & Dinner Entertainment

Borden Ladner Gervais, LLPCo-Sponsor: IP Practice in Japan Pre-Meeting

Carter DeLuca Farrell & Schmidt, LLPCo-Sponsor: IP Practice in Japan Pre-Meeting

Cooper Legal GroupCo-Sponsor: Opening Night Reception

Pirkey Barber, LLPCo-Sponsor: Opening Night Reception

McAndrews Held & Malloy, LTDSponsor: Tournament Golf Balls

Fish & Richardson, PC

Greenblum & Bernstein, PLLC

Jacobson Holman, PLLC

Morrison Foerster

Nutter McClennen & Fish, LLP

Orrick Herrington & Sutcliffe, LLP

Pearne & Gordon, LLP

Powell & Gilbert

Reimann Osterrieth Kohler & Haft

Smart & Biggar/Fetherstonhaugh

Sughrue Mion, PLLC

Pearl

BronzeFitzpatrick Cella Harper & ScintoSponsor: Tuesday Lunch Reception

Finnegan Henderson, Farabow Garrett & DunnerSponsor: Tuesday AM BreakCo-Sponsor: IP Practice in Japan Pre-Meeting

Mayer Brown, LLPCo-Sponsor: Opening Night Reception

Park IP TranslationsCo-Sponsor: Opening Night Reception

Patterson Belknap Webb & Tyler, LLPSponsor: Corporate Practice In-House Breakfast

Schwegman Lundberg & WoessnerSponsor: Monday New Member/First-Time Attendee Reception

CrystalHerbert L. Jamison &Co., LLCSponsor: Meeting Signage

SilverDrinker Biddle & Reath, LLPSponsor: Women in IP Law Breakfast

Winston & Strawn, LLPCo-Sponsor: Opening Night Reception

IP in Japan Pre-Meeting Sponsors:


Presents:

2012RobeRt C. Watson Competition

To be eligible for consideration, the article must have

been written solely by a student or students either in

full-time attendance at a law school (day or evening) or

prepared in connection with a law school course. The

article must be submitted to the American Intellectual

Property Law Association on or before June 30, 2012.

Papers should be approximately the equivalent of 10

law review pages, including footnotes (30–40 pages

typed copy). Submission must be made in PDF or text

format. Submission must include the submitter’s

name, current address, current telephone number,

and employment information, if applicable.

Judges will consider the merit of the article as a

contribution to the knowledge respecting intellectual

property and the extent to which it displays original

and creative thought or information not previously

written or published by the author prior to July 1, 2011.

Reasonable expenses will be reimbursed to the

author of the winning paper to travel to Washington,

DC to receive the Watson Award on October 26, 2012.

Submit articles to:

American Intellectual Property Law Association

Watson Award Competition

[email protected]

Award: $2,000Submission Deadline: June 30, 2012

The award will be presented Friday, October 26, 2012 during the AIPLA Annual Meeting Luncheon in Washington, DC.

Author of best article on a subject relating to the protection of intellectual property written or published between July 1, 2011 and June 30, 2012.

For More Information, Visit www.aipla.org


2012 Mid-Winter Institute

Leadership

AIPLA

Q. Todd Dickinson – Executive Director

Barbara Fiacco – Program Chair

Jeffrey Lewis – President-Elect & Officer in Charge

William Barber – President

Patrick Coyne – Program Vice-Chair

Lisa Jorgenson – Program Vice-Chair


James Gilliland

Teresa Stanek Rea,Deputy Under Secretary & Deputy Director, USPTO

Hon. James Smith,USPTO Chief Judge of the BPAI

Esther KepplingerPeggy Focarino,USPTO Commissioner for Patents

Kenneth Adamo Hon. Michael Davis

Boris Hallerback, IGT Greg Economos, Sony Pictures Entertainment

Kevin Rhodes

Distinguished Industry Speakers


Hon. Randall Rader, Chief Judge, US Court of Appeals for the Federal Circuit

Kevin Rhodes

Hon. Jay Scott Bybee, Judge, US Court of Appeals for the 9th Circuit

Hon. Michael Tierney,Lead Administrative Judge of the BPAI

Bernard Knight,USPTO General Counsel

Hon. Pauline Newman, Judge, US Court of Appeals for the Federal Circuit

Hon. Alex Kozinski, Judge, US Court of Appeals for the 9th Circuit

Distinguished Industry Speakers


Opening Night Reception – “Casino Night”

AIPLA would like to thank the sponsors of the Opening Night Reception:


Tuesday Night Dinner & Entertainment“Vintage Vegas”

AIPLA would like to thank the sponsor of the Tuesday Night Dinner & Entertainment:


Women in IP Law Breakfast

AIPLA would like to thank the sponsor of the Women in IP Law Breakfast:


Golf & Tennis

AIPLA would like to thank the sponsor of the Tournament Golf Balls:


VISIONAIPLA will expand its role as an innovator, powerful advocate, and visible global leader in intellectual property through our commitment to education, outreach, member service, and advocacy.

MISSIONWe serve our members, fostering their professional and leadership development, helping nurture and mentor them as they advance within our profession, keeping them informed in an ever-evolving legal environment, and enriching the diversity of the profession in which we practice, while responding to their personal and professional needs;

We serve public policy leaders, whose mission is to develop, implement and maintain our intellectual property system, assisting them with objective and unbiased analysis, and helping establish and maintain fair and effective global laws and policies that stimulate and reward innovation and creative works in keeping with the public interest;

We serve the public, providing education as to the daily value and benefits of a strong intellectual property system that fosters incentives for creativity & innovation, while balancing the public’s interest in healthy competition, reasonable costs and basic fairness; and

We serve our association and its employees, providing sound management, financial stability, stable succession, and a vibrant, respectful and collaborative workplace environment, delivering opportunities and support for all to lead, create and thrive.

STRATEGIC GOALSAdvocacy: AIPLA will provide crucial leadership and unbiased analysis leading the way for world-class policy and decision-making, while attracting membership, ideas, and resources as a highly sought after and respected thought leader.

Public Education: AIPLA will educate the public about the daily value of intellectual property so that its importance is understood and appreciated.

Member Service: AIPLA will support the professional and intellectual growth of its members through a flexible organizational framework and innovative channels of communication, delivering outstanding services, cost-effective programs and mentoring opportunities, thereby ensuring that AIPLA remains the premier intellectual property association, and attracts IP professionals from around the world.

Global Outreach: AIPLA will expand its influence to the global community and provide leadership and guidance for the development of sound global intellectual property standards, laws and policies.

AIPLA 2010-2013 Strategic Plan


Alternative Dispute ResolutionChair: Harrie SamarasVice Chair: Stephen C. Durant

Vision, Mission and ValuesEach practicing member of AIPLA is encouraged to be knowledgeable about alternative dispute resolution (ADR) processes and, where appropriate, is encouraged to advise their clients about the availability, values and characteristics of these alternatives to litigation. The ADR Committee provides education and resources to enable AIPLA members to be more knowledgeable about ADR, and to more effectively advise their clients, prepare for and conduct ADR in intellectual property cases whether involving United States-based or international disputes. In this regard, the Committee considers the varied practice areas of its IP-practitioner members (e.g., litigation, client counseling, transactions, prosecution) to ensure that its activities reach their needs. The ADR Committee also monitors developments in the legislature and courts to report to its members, and contributes positions as appropriate, and monitors changes in rules relating to ADR practice in the United States and abroad and educates its members about them.

Committee MeetingThe Committee held a phone meeting on February 8, 2012 (after the Mid-Winter meeting) and plans were discussed for teleconferences throughout this year to cover topics of interest to its Committee members. Participating in that call were: Harrie Samaras, Stephen Durant, Greg Whitehair, Rodney Caldwell, Jason Stone, Molly Richard, Charles Miller, Susan Beaubien, Jim Cole, Tim Pitula, Brian Hickey, Judge Jack Bissell (Ret.), John Delehanty, and Nancy Tinsley.

AdvocacyThe Committee monitors developments in the US Patent and Trademark Office that may have an impact upon the effective use of ADR and provides comments where relevant. There

have not been any such recent developments on which to report.

Public Education On February 21, 2012, the Committee held a teleconference on the International Mediation Institute (IMI) with Irena Vanenkova, Executive Director and Michael Leathes who is a current member of IMI’s Board of Directors and a former Executive Director. Michael is a former in-house lawyer with various international corporations including serving as the head of intellectual property at British American Tobacco. Ms. Vanenkova and Mr. Leathes participated from Moscow and the United Kingdom, respectively. Committee members participated on the call from around the United States as well as from outside the United States. Included in the issues discussed were:

What is IMI and its mission? How does someone become IMI certified? What are the benefits of IMI certification? How is the IMI website helpful to counsel looking for IMI mediator candidates? What other resources does the IMI website provide? What is IMI’s Mediation Advocacy Initiative?

Greg Whitehair is also planning a forum on the use of court annexed mediation and early neutral evaluation in different parts of the United States in intellectual property cases. Harrie Samaras is planning a forum on the mediation program at the International Trade Commission and another one on the use of summary jury trials and mini-trials in intellectual property cases.

Member ServiceThe Committee’s microsite contains useful links and resources including: (1) model rules and standards for neutrals; (2) ethics resources; (3) organizations providing ADR training and certification; (4) a list of ADR organizations having rules that can be used in international intellectual property cases with links to those organizations; and (5) case summaries of US court decisions related to ADR in IP cases.

Global OutreachAll of the activities of the Committee include a global focus because ADR in IP cases necessarily involves international parties, international forums, and international ADR organizations/rules. One recent example of this is the teleconference on the International Mediation Institute that the Committee held on February 21, 2012. See the description under Public Education above.

Committee Reports Mid-Winter InstituteJanuary 23-26, 2012

The Committees were asked to align their reports with the goals in the AIPLA Strategic Plan. (See page 35 for the Strategic Plan.)


AmicusChair: Edward Robert ReinesVice Chair: Jerry R. Selinger

This Committee shall consist of members appointed by the President-Elect for a three-year term to ensure expertise in all fields of intellectual property law. This Committee shall: a) Scrutinize judicial decisions which involve significant issues of law or practice which affect intellectual property. (b) Recommend to the Board of Directors that amicus curiae briefs be filed in appropriate cases.

No business to report.

Anti-Counterfeiting and Anti-PiracyChair: Jonathan HudisVice Chair: Crystal Gothard (not pictured)

This Committee held a joint meeting with the Trademark Internet, Trademark Law, Trademark Litigation, and Trademark-Relations with the USPTO Committees.

Antitrust LawChair: Richard S. TaffetVice Chair: George G. Gordon (not pictured)

The Committee focuses on competition issues involving intellectual property in the United States and worldwide. In recent years, the Committee has especially focused on issues pertaining to standardization of technology, generic pharmaceuticals, and actions by the Federal Trade Commission and the Antitrust Division of the Justice Department. The Committee has participated in amicus briefs on competition issues, and publishes a newsletter for each AIPLA meeting with articles contributed by its members.

The Antitrust Committee is a co-sponsoring a program at the Spring Meeting with the Standards/Open Source Special Committee.

BiotechnologyChair: James J. KelleyVice Chair: Carol Nielsen

Vision, Mission and ValuesTo realize the promise of biotechnology in health, energy, environment, and food requires a reliable, global IP system that rewards innovation without inhibiting it and protects investments in new products and new jobs. Biotechnology IP practitioners and companies, however, face very significant challenges in helping the world realize this promise. The overall mission of the Biotechnology Committee is to serve as resource, educator, and advocate for its members, AIPLA, government institutions, and people everywhere so that the promise of biotechnology may be more fully realized globally.


AdvocacyAIPLA Testimony at the USPTO Regarding its Genetic Diagnostic Testing Study. Committee members teamed with members of the Food and Drug Committee, Mercedes Meyer and staff to draft AIPLA’s testimony, which Mercedes gave on February 16, 2012. The Committee is working on AIPLA’s written submission, due March 26, 2012.

FDA Biosimilars Guidance. The Committee is working with members of AIPLA’s Food and Drug Committee to review and prepare comments on FDA’s biosimilar guidances, due in early April, 2012.

Public EducationAIPLA Rapid Response Task Force – Biotech Public Education. Karen Canady, chair of our Biotech Patent Education Subcommittee, drafted a response to a “Fresh Air” piece that aired on various National Public Radio stations in October, 2011. Karen prepared a letter that AIPLA President Bill Barber sent to Fresh Air’s producers in November, 2011. Karen is now converting the letter to be used as an op-ed piece.

Our spring, 2012 meeting in Austin will have a public education theme.

Programs2012 Spring Meeting– Biotech Patent Education Are patents to blame for lack of access to adequate diagnostic testing? Or, is it more complicated than that? Former Committee Chair Karen Canady, Kevin Noonan (McDonnell Boehnen, PatDocs), Mercedes Meyer (AIPLA Board), and others will share views about the USPTO’s study of the impact of patenting on genetic diagnostic testing, particularly the impact on access to confirmatory second opinions. The Committee will discuss AIPLA’s position on these issues and the prospects for future legislation in this area. Karen will also discuss AIPLA’s “rapid response task force,” which provides counter-balance when misinformation about IP is presented in the media.

2012 Annual Meeting– Two Programs Antibody Patenting Issues – US and EP

We will partner with the IP Practice in Europe Committee for 2 hours of presentations and discussion about issues on both sides of the Atlantic relating to patenting therapeutic and diagnostic antibodies.

IP Issues in Novel Venture Financing of Biopharmaceutical Development

We will partner with the Chemical Practice Committee and/or the Licensing Committee on a 2-hour program about issues that arise in novel venture capital arrangements that are being used to fund clinical development of biopharmaceuticals.

WebinarsBayh-Dole and Tech Transfer from Universities, February 21, 2012. One-hour discussion with over 120 participants.

Obtaining and Enforcing Patents on Bioinformatic and Diagnostic Inventions. December 6, 2011.

A reprise of presentations given at the AIPLA Annual Meeting by Jim Kelley of Eli Lilly and Company, Judy Roesler of Roesler Law Offices, and Ling Zhong of RatnerPrestia on recent developments in the law under Sections 101 and 112 and their impact on patenting strategies in bioinformatics and diagnostics.

Biotech BuzzThe Committee’s monthly newsletter, Biotech Buzz, is provided as a .pdf attached to an email message to all members, and as an entry in the microsite’s Biotech Buzz Blog.

Case Law ReportsStreck, Inc. v. Research & Diagnostic Systems, Inc., Retractable Technologies, Inc. v. Becton, Dickinson and Co., Human Genome Sciences Inc. v. Eli Lilly and Co., The Court of Justice of the European Union (CJEU) Decisions in Medeva and Georgetown, Teva Pharm. Indus. Ltd., v. AstraZeneca Pharms. LP, Celsis in Vitro, Inc. v. CellzDirect, Inc., and Falana v. Kent State Univ.

USPTO RelationsMembers attended the Biotechnology/Chemical/Pharmaceutical Customer Partnership Meeting, Thursday, December 1, 2011, and provided slides for our microsite.

MicrositeBiotech Buzz Blog. The monthly Biotech Buzz is being provided now as a .pdf document by email and as entries in our Biotech Buzz Blog.

Subcommittee Subsite Test. The Diagnostics and Gene Patenting Subcommittee is experimenting with a subsite to determine how this feature of the website software might help them achieve their objectives this year.

International BioWiki Available as a Wiki at Microsite. The Committee’s 2009 “White Paper on Issues of Patentability and Enforceability” for biotechnology inventions in 16 jurisdictions outside the United States has been converted into a wiki available from the microsite. We are now in the process of expanding the wiki in terms of countries and issues.

Global OutreachMonthly Biotech Buzz Reports. Each issue of the monthly Biotech Buzz Committee newsletter provides reports from our International Issues Subcommittee. Since November, members have contributed the following reports: EPO


“Broccoli” Hearing; Stem Cell Patenting in Europe; Korea Takes First Step Toward Patent-Regulatory Linkage; UK Patent Reform Clarify Experimental Use Exceptions to Infringement; The Court of Justice of the European Union (CJEU) Decisions in Medeva and Georgetown; International BioWiki Available as a Wiki at Microsite; Human Genome Sciences Inc. v. Eli Lilly and Co.; Chile Proposes Patent Linkage Law; and Accessing Competitor Information in Canadian Government Files.

International BioWiki Available as a Wiki at Microsite. The Committee’s 2009 “White Paper on Issues of Patentability and Enforceability” for biotechnology inventions in 16 jurisdictions outside the United States has been converted into a wiki available from the microsite. Members of our International Issues Subcommittee are expanding the wiki in terms of countries and issues.

Comparative Intellectual Property Law Symposium, Utility Requirements: Converging and Diverging Approaches. Committee members are working with various IP Law associations in Canada to plan this symposium, which will be held in Ottawa, Ontario, Canada on April 4, 2012.

The Committee’s Mid-Winter meeting in Las Vegas was devoted to Global Outreach, with speakers from Europe, Canada, and Japan.

Subcommittees

Program DevelopmentTim Meigs, Chair, Meeting ProgrammingLynn Tyler, Chair, Webinar Programming

Biotech BuzzDan Lev, EditorNoel Courage, International Editor

Case Law UpdatesMelanie Szweras, ChairNicholas Landau, Vice Chair

USPTO RelationsSuzannah Sundby, Co-ChairJulie Meigs, Co-Chair

MicrositeWilliam Childs, Chair

Global AdvocacyJim Kelley, ChairCarol Nielsen, Vice-Chair

International IssuesAnne Marie Verschuur, ChairQin Shi, Vice-chair, Far East, China, Japan, IndiaRafael Pastor, Vice Chair, Latin AmericaRene Raggers, Vice-Chair, EuropeNoel Courage, Vice Chair, Canada & Australia

Biotech Patent EducationKaren Canady, Chair

Diagnostic and Gene PatentingLing Zhong, Co-ChairJudy Roesler, Co-Chair

Biological Product Development and CompetitionAndrea Hutchison, Co-ChairKristen Connarn, Co-ChairVicki Norton, Co-Chair

Biotech Tech Transfer & LicensingEric Mirabel, Co-ChairNoel Courage, Co-Chair

Chemical PracticeChair: William B. KezerVice Chair: Jeffrey N. Townes

The Chemical Practice Committee continues to provide information on current developments in IP law, recent litigation, and latest technologies. Programs in 2012 have examined areas unique to chemical patent practice, and explored technical and legal issues from a chemical practitioner’s perspective. Similar programs are designed for later this year.

Vision, Mission and ValuesWe are committed to providing a meaningful vision, focused mission, and strong values to the Chemical Patent Practice Committee. We will continue to present programs of interest to attract a broad range of practitioners. These provide educational opportunities, give individuals an opportunity to present topical content, attract new members, and provide a more collegial and intimate environment in which individuals can network.

We continue to explore new growth areas within chemical practice, and strive to address the needs of practitioners in those areas. Further, to reach Committee members who cannot come to the meetings, we will continue to place any Judicial and Administrative Decisions Reports, other Subcommittee reports, and select presentations given at the meetings on the Committee’s webpage.

We strive to correspond on a periodic basis with all Committee members available via e-mail to distribute materials of interest, provide information about upcoming activities, and


promote more active involvement.

Advocacy We will continue to respond to members’ concerns regarding legislative, USPTO and judicial issues, through our Rapid Response Task Force and Legislative Subcommittee. Lawrence Kass (Millbank Tweed) serves as liaison to the Amicus Committee. His responsibilities will include ongoing review of judicial decisions of concern to chemical practitioners and coordination with the Amicus Committee for possible participation.

Public EducationThis is a key area where AIPLA has traditionally provided great services. Following a successful Chemical Patent Practice Committee Road Show in 2011, we are in the planning stages for another Road Show in the summer of 2013. Mary Jo Boldingh is guiding that effort.

For 2012, we turn our focus to issues arising with the America Invents Act, as well as due diligence considerations—the topic for our Mid-Winter Institute meeting in Las Vegas, addressed by Dr. Mark Sandbaken, Executive Director of IP for Seattle Genetics and Samuel Kais, Assistant General Counsel—Patents with Johnson & Johnson.

We continue to put together webinar programs, with William Childs leading that effort. In addition to earlier programs on patent issues associated with solid-state forms of chemistry, a new program will focus on the complications of current USPTO restriction practice. Additional topics are likely to address specific portions of the America Invents Act. We are hopeful to find willing participants during this year’s Committee meeting for putting together a webinar on the new patent laws, particularly as they relate to chemical patent attorneys.

Member Services

In an effort to assist the staff in achieving AIPLA’s goals, the Chemical Practice Committee continues its efforts to rehabilitate its webpage. Postings and the delivery of relevant content has declined and our objective is to restore the vitality and usefulness of the webpage.

Global OutreachIt is important that we continue to grow, not only attracting new members from existing strongholds, but tapping into new groups that may have otherwise been reluctant to participate in AIPLA meetings. We believe that having a diverse membership and diverse speakers provides a better program for all parties. One of our goals is to attract new members, particularly from the corporate and government sectors – though continuing to reach out to both outside counsel and foreign counsel. We are open to creative ideas to bring in new members, especially from those serving as in-house corporate counsel, a group that we would like to

see represented in larger numbers at future AIPLA events.

Copyright LawChair: Nancy J. Mertzel (Left)Co-Vice Chairs: Toni Y. Hickey (Center) and Stefan Mentzer (Right)

The Committee is responsible for considering laws, regulations and practices providing or affecting rights relating to copyrights. The Committee also works to inform the membership about recent important judicial decisions in the copyright field and all phases of activity of the Copyright Office of concern to the profession or the public. Most recently, it has worked with the AIPLA staff and the Electronic Business, Automation & Harmonization of Standards Committee to educate people about the Copyright Office’s new online copyright registration process.

No business to report at this time.

Corporate PracticeChair: Kenneth M. Seddon (not pictured)Vice Chair: James D. Carruth

The Committee held a joint meeting with the Trade Secret Law Committee. See report under Trade Secret Law Committee.


Diversity in IP LawChair: W. Todd BakerVice Chair: Shayne E. O’Reilly

The Committee held a joint meeting with the Education, Food and Drug, Patent Cooperation Treaty (PCT) Issues, Special Committee on Genetic Resources, Traditional Knowledge and Folklore, Trademark Law, Trademark Litigation, Trademark Treaties and International Law and Young Lawyers Committees. See the PCT Committee report for details.

EducationChair: Myra H. McCormackVice Chair: Ehab M. Samuel

The Committee held a joint meeting with the Diversity in IP Law, Food and Drug, Patent Cooperation Treaty (PCT) Issues, Special Committee on Genetic Resources, Traditional Knowledge and Folklore, Trademark Law, Trademark Litigation, Trademark Treaties and International Law, and Young Lawyers. See the PCT Committee report for details.

Electronic and Computer LawChair: Jacques L. EtkowiczVice Chair: James D. Hallenbeck (not pictured)

Vision, Mission and ValuesThe Committee’s mission is to consider electronic, computer, and software technology and the laws, administrative practices, and judicial decisions, both foreign and domestic, with respect to securing, promoting, and enforcing the various intellectual property rights in such technology and to work with the AIPLA Board of Directors to provide recommendations as requested in such matters. As detailed below, the Committee has fulfilled this mission quite substantially through collaboration with the USPTO on various projects, open communication, and including practitioners in the leadership of our Committee from several diverse countries.

The Committee also strives to meet the AIPLA vision of expanding its role as an innovator, powerful advocate, and visible global leader in intellectual property through our Committee’s commitment to education, outreach, member service, and advocacy. In particular, our Annual Electronic and Computer Patent Law Summit and our webinar series have gone a long way in this regard. Further, our webinars are typically offered free of charge and the registration fees for the Electronic and Computer Patent Law Summit remain low thanks to our efforts to obtain financial support from law firms and community-focused patent law associations throughout the country.

As also detailed below, the Committee has partnered with the New Lawyers, Women in IP Law, Diversity, and Corporate Committees to continue to build relationships, cohesiveness in the AIPLA community, and to encourage participation by all AIPLA members in the activities and leadership of our Committee.

Thus, for at least these examples, it is respectfully submitted that the Committee actively and successfully seeks to fulfill the missions of both AIPLA and the Committee while meeting the vision and adhering to the values of AIPLA.

AdvocacyThe Committee continues to monitor major case law and legislation and will advise and request AIPLA participation as


relevant issues arise, particular as to the scope of patentable subject matter. Recently, the Committee was surveyed twice on AIPLA positions relating to the scope of patentable subject matter (for both the Bilski case and the referral to the EPO enlarged board of appeals) and reported results to the Amicus Committee. Our surveys helped the Committee draft, edit and organize amicus briefs. The Committee also created a helpful compilation of decisions subsequent to the CAFC’s Bilski decision.

Most recently, the Committee contributed comments to AIPLA leadership on whether AIPLA should send comments to the USPTO on its Patent Pendency Model Simulation Tool, on the USPTO Federal Register Notice for input on patent quality, and on a new USPTO project referred to as “Trademarks Next Generation.”

Public EducationThe Committee organized the 2011 Electronic and Computer Patent Law Summit held in St. Paul, MN on August 16, 2011. The Summit included nationally recognized speakers including Q. Todd Dickinson, Alan Kasper, Steve Kunin, John Whealan, Carl Moy, among several others. There were over 80 participants in attendance. The Committee is in the final stages of yet another IP Summit scheduled for April 2, 2012 in San Diego, CA. Topics will include Intellectual Property Exchange (IPXI), Trends in Distributed Infringement, Patent Practice and Innovation in Standards/Open Source, with speakers from Microsoft, SAP, Qualcomm, and Oracle.

The Committee has also been very active in hosting webinars on topics of interest to the ECLC and will continue to do so. The most recent webinar was entitled “Using the USPTO’s Bilski/Section 101 Guidelines to Gain Allowance of Software and Business Method Inventions.” The Webinar Subcommittee is currently planning additional webinars for presentation later this year.

The Committee will continue the annual Partnering in Patents program hosted jointly with the USPTO. Planning for the 19th Annual program will begin this spring.

The Committee will continue to maintain its long standing dialog with group directors in technology centers corresponding to electronics and computer related inventions. New initiatives were planned by the USPTO in which the Committee will actively participate. We also have our annual teleconference scheduled for this spring.

The Committee will continue to work cooperatively with the New Lawyers, Women in IP Law, Diversity, and Corporate Committees. For example, we have worked with the New Lawyers Committee in support of Committee-organized track and Committee education sessions, and pairing mentors and mentees within the AIPLA mentoring program. The collaboration has been very positive.

Member ServiceThe Committee will continue to procure track and Committee sessions at upcoming stated meetings. At the Mid-Winter Institute, the Committee partnered with the Patent-Relations with the USPTO Committee to present a first look at certain aspects of the America Invents Act. Speakers past and present from the USPTO including APJ Michael Tierney, Steve Kunin, Nick Godici, and APJ William Smith (ret.) spoke on the AIA rules packages and their practical effects on the patent bar.

The Committee is actively continuing to work with the USPTO to obtain identified statistics and provide feedback and suggestions for improving the quality of patent prosecution and examination. We presented highlights of the data received thus far from the USPTO during a track session at the 2009 Annual Meeting, for which two past Committee chairs received the President’s Award from AIPLA. The response was positive – we have received requests to update our data or generate additional data and present same at future meetings.

The Committee has numerous Subcommittees that focus on different aspects of IP practice. We continue to encourage the Subcommittees to remain active and to encourage participation by the general membership.

The minutes of our joint Committee meeting with the Patent-Relations with the USPTO Committee held at the 2012 AIPLA Mid-Winter meeting are posted on our microsite, as well as the minutes from our Committee leadership meeting.

Global OutreachAt recent AIPLA meetings, the Committee has partnered with the IP Practice in Japan, Europe, and Far East Committees in presenting joint sessions. These sessions have included speakers not only from the US, but also from the relevant jurisdictions of the other Committees. The Committee has also recently conducted a Committee session that included a presentation on the state of patent eligibility of computer implemented inventions in Canada and Europe. Within the past year, a member of the Committee has also participated in a webinar organized by the International Education Committee for attorneys in Singapore. Additionally, Subcommittees include leaders from outside the US and in-house attorneys from non-US entities.

We are currently working with the European Practice Committee in planning a joint Committee session for the upcoming Spring Meeting in Austin. The planned topic is multi-jurisdictional litigation.

Subcommittees TSC Subcommittee


Liaison to New LawyersChair: Frank Bruno

Liaison to Women in IP Law and Diversity Committees Chair: Bea Koempel-Thomas

Liaison to Corporate CommitteeChair: Jeff Ranck

Copyright SubcommitteeChair: David Einhorn

International Affairs SubcommitteeChairs: Erwin J. Basinski, John Collins, Robert Wilkes

Patents and Legislative Affairs Subcommittee Chair: Lance Reich, Joel Miller

Licensing SubcommitteeChairs: John Salazar, Steve Lundberg

PTO Relations SubcommitteeChairs: Lynn Anderson, Mike Dunnam

Professional Programs Subcommittee Chair: John Salazar, Michael Drapkin

Webinars SubcommitteeChair: Valentina Boyet, Steve Lundberg

Road Show/IP Summit SubcommitteeChair: Michael Drapkin

Technology and Business Development SubcommitteeChair: Thomas Hassing, Tim Bechen

ECLC Website SubcommitteeChair: Nathaniel Ari Gilder

Electronic and Computer Patent Prosecution SubcommitteeChairs: Tim Bianchi, Jeff Ranck, Scott Stinebruner

Emerging TechnologiesChair: Kirk A. DammanVice Chair: Robert Capriotti (not pictured)

Vision, Mission, and Values The mission of the Emerging Technologies Committee (ETC) is to foster communication and education in areas of emerging technologies and IP Law. Committee goals include

developing and producing educational programs relating to emerging technologies for Committee members and for the three national AIPLA meetings.

In addition, the Committee will cover and report on green technology – including climate change – as well as other green tech issues (accelerating green patents, etc.).

Other specific current emerging technologies identified by the Committee include:

Alternative Fuels, Pharmacogenomics, Open Source, Web 2.0/3.0, BiomedicalSecond Life, Nanotechnology, Customized Stem Cells and Connectomics, and Climate Change Technology.

Public EducationThe Committee held a joint meeting at the 2012 Mid-Winter Institute with the Law Students, Licensing and Management of IP Assets, and Mergers and Acquisitions Committees. The meeting was moderated by Kirk Damman and was well attended.

The meeting focused on two primary topics, the first related to the impact of the AIA on IP transactional practices and the second related to IP assets in cross-border M&A transactions. Specifically, Robert Krebs addressed the AIA and its impact on due diligence in transactions and Keith Grzelak addressed the financing of emerging technologies with special attention to the impact of the AIA on venture capital funding. In the second part of the program, speakers Valerie Calloway and Daniel Glazer addressed issues related to IP assets in cross-border transactions, addressing the treatment of IP assets in mergers and acquisitions as well as specifically focusing on IP assignments.

Speakers included: Robert E. Krebs, Nixon Peabody LLP; Keith D. Grzelak, Wells St. John Professional Service; Valerie L. Calloway,Polymer Group, Inc.; and Daniel C. Glazer, Patterson Belknap Webb & Tyler LLP.

In addition, the Committee is planning a video-streamed town-hall style meeting on the topic of whether patents are a good idea. We are still in the early planning phase of the project, however we envision panelists who are extremely pro-patent and those who are extremely anti-patent, and some with more moderate and balanced views of the patent system. We envision the meeting being held at a respected technical university such as MIT, Cal-Tech, Stanford, etc.

Member ServiceThe 2012 Mid-Winter Institute joint meeting was well attended. We continue to field inquiries from potential members to join the Committee and received several offers from existing members to participate in the Committee. At this time we have volunteers to manage communications including the Lyris email list. We are recruiting volunteers to help manage the microsite. We are also in the process


of recruiting volunteers to assist the Rapid Response Task Force generate some AIPLA content.

FellowsChair: Sheldon H. KleinVice Chair: William L. LaFuze

The chair reported on several projects in which Fellows have stepped in to assist, as follows:

• The Board has prioritized revamping the “Learning Center” section of the Association’s website. Jeff Samuels and Brad Forrest have agreed to work on this project.

• Roger Parkhurst, assisted by Bill LaFuze and Alan Kasper, is heading a task force dedicated to Board and Committee leadership training and development.

• Denise Kettleberger will serve as a second AIPLA representative to the newly formed US Bar/SIPO (China) Liaison Council.

While not discussed at the meeting, at the AIPLA Board’s January 26, 2012 meeting, the Fellows were asked to participate with current Board members on a task force being led by Sharon Israel on revisions to the AIPLA Model Patent Jury Instructions. Thank you to Denise DeFranco, Mike Kaminski, Joe Re, Bill Rooklidge, and Jack Skenyon, who have agreed to help with this project.

Also subsequent to our meeting, I received a request for assistance from the Mentoring Committee. At the upcoming Spring Meeting in Austin, there will an on-site mentoring project, whereby each mentor will be paired with a mentee and will help the mentee navigate AIPLA, and the Spring Meeting in particular. This is a pilot program which, if successful, may be broadened to the Annual Meeting, with the mentor-mentee pairings changing at each meeting. They would welcome participation by the Fellows. Please contact me, at [email protected], if you are planning to attend the Spring Meeting and are interested in serving as an on-site mentor. If you have any questions,

please contact Jenae Gureff, at [email protected], who is organizing this project.

Brad Forrest is our liaison to the Professional Programs Committee. He gave a brief report on the status of the program for the October 2012 Annual Meeting, which is being finalized.

Phil Hampton discussed an idea for involvement by the Fellows with AIPLEF scholarship winners. They have a mentor-mentee program and would love to have more Fellows participate. Please email Phil, at [email protected], if you are interested.

There was a discussion of potential future projects for the Fellows. Several Fellows felt we could possibly focus on programming and/or other connections with foreign IP bar groups, in particular, those in South America (e.g., Brazil) and Africa (e.g., Nigeria). One idea is to organize a panel of foreign judges for the 2013 Annual Meeting. Some Fellows commented that we should be more focused when soliciting projects from the Board, and that the Board should look to the Fellows more with regard to substantive issues of the day. It was also remarked that Fellows could be useful in meetings on Capitol Hill.

We will have a Fellows dinner at the Spring Meeting. Lou Pirkey has graciously offered to host us at his home on Wednesday evening, May 9. Please plan accordingly. Details to follow.

AIPLA has made a policy decision to stop providing live telephone hook-ups at meetings. Dave Hill made a valiant effort to hook up some members who could not attend via Skype. The results of this effort were mixed. If you were on the line during our Las Vegas meeting, please let me know if you feel if it is worthwhile to try that again at our next meeting.


Food and DrugChair: Denise M. KettelbergerVice Chair: Stephen B. Parker

The Committee held a joint meeting with the Diversity in IP Law, Education, Patent Cooperation Treaty (PCT) Issues, Special Committee on Genetic Resources, Traditional Knowledge and Folklore, Trademark Law, Trademark Litigation, Trademark Treaties and International Law and Young Lawyers Committees. See the PCT Committee report.

Industrial DesignsChair: Damon A. Neagle (not pictured)Vice Chair: Garfield Goodrum

The Committee considers design patent, trade dress, and copyright laws, rules, regulations and judicial decisions applicable to the protection of industrial designs. Recent activities have included preparation of amicus briefs on behalf of AIPLA in conjunction with the Amicus Committee and resolutions pertaining to legislation and international treaties for adoption by AIPLA. The Committee also remains active in educational opportunities, including the annual Design Day at the PTO and CLE sessions at AIPLA meetings.


International and Foreign LawChair: William S. BoshnickVice Chair: Matt Adams

Vision, Mission and ValuesThe International and Foreign Law Committee (IFLC) considers the treaties of the United States and foreign countries and the statutes, rules, regulations, and judicial decisions of foreign countries relating to patents, trademarks, copyrights or intellectual property generally. The IFLC also considers the statutes, rules, regulations, and judicial decisions of the United States as they may impact intellectual property as a part of trade and commerce between the United States and foreign country nationals. A further role of the IFLC is to coordinate with other AIPLA Committees on matters which are relevant to the jurisdiction of those committees.

AdvocacyThe IFLC coordinates with AIPLA leadership to research and advocate issues potentially affecting foreign rights of such IP stakeholders, by, e.g., submitting position papers on behalf of AIPLA to foreign governmental organizations. Where necessary, the IFLC also coordinates with other international Committees where the foreign rights are potentially affected.

Public EducationThe IFLC occasionally coordinates with the International Education Committee to present programs educating members and the public regarding issues concerning intellectual property. The IFLC intends to organize themed seminars comparing subject matter (computer software/medical devices) and claim structures.

Member ServiceThe IFLC serves its members by keeping them informed in an ever-evolving international legal environment.

Global OutreachThe IFLC has been instrumental in establishing Subcommittees pertaining to international practice, with the goal of such Subcommittees ultimately becoming full -fledged active Committees, the most recent of which are the Indian Practice Subcommittee and the Special Committee on IP Practice in Israel.


International EducationChair: James E. Ruland (not pictured)Vice Chair: Shannon L. Beech

MissionThe Committee’s current focus is on developing and producing educational programming for international audiences, primarily through online programs on US IP law and practice specifically targeted to practitioners, government officials and others outside the US who are interested in IP law, policy and practice. Additionally, in response to requests, the Committee meets with visiting delegations and arranges for speakers for lectures, seminars, and other meetings outside the United States. The Committee coordinates its activities with the following Committees: Online Programs, International and Foreign Law, the IP Practice in Europe, the IP Practice in Japan, IP Practice in Latin America Committees and the Special Committee on National IP Practitioners Associations Worldwide.

Specific Task Update and Going ForwardThe Committee has conducted five online programs to date, namely three programs for German-speaking practitioners, one program for practitioners in Singapore, and one program for practitioners in China.

The Committee is currently working on organizing a program for 2012 on the America Invents Act for Pacific Rim countries. The countries that are currently being targeted are Singapore, New Zealand and Australia with the possibility of including other countries within similar time zones, such as Japan. Respective national IP organizations in these countries are being contacted to guage interest and determine if they are able to assist us in advertising the program to their members.

Members of the Committee, possibly in conjunction with other substantive Committees, will coordinate each of the online programs. Each online program has at least one local (e.g. North American) coordinator who works with at least one international coordinator to develop and put on the program. The international coordinator interfaces with the IP organization(s) in their country to establish: (1) a topic of interest for practitioners in the country and (2) mechanisms for marketing the program through the IP organization(s). The local coordinator identifies speakers and sponsors for the program based on the established topic of interest. Most

programs will likely be broadcast live using Citrix, though other platforms may be used. The coordinators may work with other AIPLA Committees or possibly local IP associations outside the US in planning the program.

In conjunction with the 360 Education Review, we are establishing AIPLA liaisons in various jurisdictions, with our first liaison being Hung Bai of Singapore. We are also exploring conducting programs in the US with foreign speakers. Interest has been expressed by European attorneys for conducting such programs.

Goals(1) Produce at least four online programs for international audiences during the year.

(2) Recruit additional members to join the Committee. We would especially like to tap into AIPLA’s international members to encourage involvement in AIPLA of those members.

(3) Explore approaches for expanding audiences for programs. One approach is to establish relationships with IP associations outside the US in order to obtain assistance in promoting and possibly also planning and sponsoring programs. Another approach is to begin a formal program of promoting our programs for US IP law to foreign IP associations, including soliciting requests for online programs and offering speakers for local programs.

(4) Establish a list of speakers possessing a high degree of proficiency in foreign languages.

(5) Coordinate with AIPLA to look for ways the Committee can assist in implementing AIPLA’s international strategies.

(6) Work with AIPLA to find a way of making recordings of the online programs available on the website, in a location that is easily found by practitioners outside the US who are not AIPLA members, as well as marketing the existence of the programs to those individuals.

(7) Establish more formal working relationships with other international Committees to coordinate international education efforts and producing programming.


International Trade CommissionChair: L. Scott OliverVice Chair: Kim E. Choate

The Committee on the ITC is comprised of new and experienced practitioners who have a special interest in representing clients before the US International Trade Commission (“USITC”) in Section 337 investigations. The Committee considers rules, regulations and decisions related to litigation before the USITC. The Committee also reviews notices issued by the Commission, as well as any proposed rules and, when appropriate, makes recommendations and provides comments to the Commission. The Committee is also involved in planning and presenting CLE programs at AIPLA meetings to provide further education to AIPLA members on practice before the USITC.


IP Law AssociationsChair: Laura J. Zeman-MullenVice Chair: Anthony M. Zupcic

Vision, Mission and ValuesThe IP Law Associations Committee works to foster beneficial relationships with regional and local associations in the US and encourage cooperation with those associations in educational activities. The Committee also maintains a list of the leaders from the Regional and Local IP associations organized by state.

The Committee currently has three Subcommittees: the E-mailer Subcommittee, the Microsite Subcommittee, and the Regional Roundtable Subcommittee. The E-mailer Subcommittee creates e-mails to the regional and local

associations. The emails include AIPLA-related information that may be of interest including, Patent and Trademark Boot Camp updates, invitations to the Women in IP Law national dinners, AIPLA’s request to support or oppose legislation or participate as a signatory to an amicus brief, and opportunities to participate in, and results obtained from, the Committee’s regional roundtables. The Microsite Subcommittee maintains the accuracy of the Committee’s microsite, including developing and updating content with Committee information, reports, and minutes, and increasing accessibility to regional and local associations. The Regional Roundtable Subcommittee develops discussion topics and organizes and hosts regional roundtable discussions with the leaders of regional and local associations using GoToMeeting, webinars, etc.

AdvocacyWe utilize our Committee’s master list of local and regional IP association contacts to further the advocacy goals of AIPLA’s Strategic Plan, e.g. forwarding advocacy emails from AIPLA to the local and regional IP associations.

We interface with the AIPLA substantive Committees and attend their meetings to obtain information to disseminate to the local and regional associations.

Public EducationWe will create a Public Education Task Force to work with the AIPLA Membership Committee, and any other related Committees, to identify information from our regional roundtables that could be used with AIPLA’s Public Education Committee to further the public education goals of the AIPLA Strategic Plan, including how we can utilize our regional and local IP Association contacts.

Member ServiceWe will create a Membership Task Force to work with the AIPLA Membership Committee, and any other related Committees, to identify information from the Committee’s regional roundtables that could be used to further the member services goals of the AIPLA Strategic Plan. For example, the two groups could create a list of AIPLA benefits and develop a plan for gaining more AIPLA members from the local and regional associations.

Global OutreachThe Committee will host two regional roundtables with the regional and local IP associations – one in spring 2012 and one in fall 2012. The spring roundtable will focus on various aspects of the recently enacted America Invents Act (AIA) and how practitioners are changing their practices in light of the AIA. It will also discuss if and how IP practitioners and/or the local and regional associations/organizations are educating the public about the AIA. Topics for the fall roundtable will include some of the following: PTO


rulemaking and public comments on such new rules, as well as pooling comments on such rules; discussion on who from local and regional associations are AIPLA members, why they are members, the benefits they receive or believe they should receive as an AIPLA member, and what AIPLA could provide that would make it worthwhile for them to join as a member or maintain their membership; developing speakers and speaker resources for CLE programs; ways to coordinate calendars among the regional/local associations; approaches for networking among and recruiting young lawyers for the regional/local associations; best practices association management; AIPLA sponsorship or support for regional/local CLE events; feedback from the USPTO on “hoteling” of examiners at regional locations, and assistance that might be provided by the regional/local IP associations; and discussion of the AIA Pro Bono Task Force. At least one of the regional roundtables will explore creating resources for speakers and a topic specific “speaker pool” that could be made accessible to AIPLA and the local and regional associations.

The Committee will distribute up to four emails during 2012 to the local and regional associations which contain AIPLA-related information including information and/or reports from substantive AIPLA Committees, results from regional round tables, and announcements of AIPLA programs, CLEs, and/or initiatives being put forth to meet the goals of AIPLA’s Strategic Plan.

IP Practice in ChinaChair: William D. “Skip” FisherVice Chair:Ying Tuo

The Committee works to establish and maintain relations with professional societies in China whose members are interested in intellectual property law. The Committee’s members study Chinese law and practice and report on issues of interest to the AIPLA Board of Directors and membership. The Committee also provides information on US intellectual property law to any interested party in China, if called upon to do so.

The Committee has no business to report at this time.

IP Practice in EuropeCo-Chair: Andrew G. SmithCo-Chair: Joerg-Uwe Szipl

Mission, Vision & ValuesThe IP Practice in Europe Committee seeks to inform our Committee members and members of AIPLA in general of key developments in intellectual property law and practice in Europe, through the establishment and maintenance of relations with professional societies whose members are expert in various aspects of intellectual property law and practice in Europe.

Member ServiceThe Committee continues to share key learning as well as developments in practice and law for our members. Our strong and effective relationships with national IP organizations throughout Europe have assisted us in this process of continuing education. Together with the IP Practice in Japan Committee, we presented a 2-hour program at the Mid-Winter Institute entitled: “Post Grant Proceedings in Europe, Japan and the Proposals for Post Grant Review in the US.” The joint program outlined the experience from established opposition proceedings before the European Patent Office, highlighted the impact on the number of proceedings initiated in Japan following the shift from a pre-grant, to a post-grant opposition system and then the further change to post-grant litigation model. Each of these sought to provide guidance for the proposed PGR system and in particular the potential rules of procedure. There was a great deal of interest in the thoughts and comments of PTAB Judge Tierney and there was much discussion around the potential impact on users and the extent to which it would likely be used. Speakers included: Eric Augarde, Brevalex, France, Kay Konishi of P-Nic, Japan, and Judge Michael Tierney of the USPTO.

Global Outreach The first week in March, a delegation including William Barber, Alan Kasper and Todd Dickinson will continue the Committee’s tradition of an annual visit to Europe, where we will meet with officials and members from a number of European IP organizations. The trip will include meetings with patent organizations CIPA and IPLA in London, CNCPI in Paris, GRUR, Patentenwaltskammer and EPI in Munich. For the first time we will also meet with trademark organizations—


ITMA in London and APRAM in Paris. Our visit will include a visit to the German Supreme Court, including a meeting with Judges Grabinski, Bornkamm and Meier-Beck. This trip will also include a visit to the European Patent Office in Munich for a meeting chaired by Wim van der Eijk, Vice-President of the EPO. Our visit provides an opportunity to strengthen ties with international IP organizations, and share developments in US practice, in particular the introduction of AIA, and to exchange ideas on harmonization of IP practice.

IP Practice in the Far EastChair: Kenneth K. ChoVice Chair: Hung H. Bui (not pictured)

The Committee serves as a resource, forum, and network for AIPLA members with a personal and/or professional interest in the IP laws and systems of Asian countries, with an emphasis on China, South Korea, and India. The Committee’s mission is to establish relations with IP associations in those countries, study and report on the IP laws and practices of those countries, and provide information on US IP law and practice to interested parties from those countries. The Committee convenes a combined business and educational meeting at each of the three stated AIPLA meetings, regularly sends delegations to and accepts delegations from Asian countries, and seeks to collaborate with other Committees.


IP Practice in JapanCo-Chair: Joseph A. CalvarusoCo-Chair: Paik Saber

The IP Practice in Japan Committee held a meeting during the Mid-Winter Institute. This year the Committee’s Pre-Meeting Seminar was attended by 59 individuals, the highest number of attendees in the history of the seminar. We were very pleased to welcome members of the Japan Patent Attorneys Association (JPAA) and the Association for International Protection of Intellectual Property (AIPPI-Japan), including the President of the JPAA, Dr. Soichi Okuyama. The Committee leadership was also very pleased to welcome attendees from Europe and Canada, as well as many first-time participants.

The Committee continued its long tradition of excellent programming. The meeting was comprised of 21 presentations over 1 ½ days, primarily relating to developments in US and Japan intellectual property laws. US topics included: recent developments in the ITC and Federal Circuit, USPTO statistics and trends, appeals before the USPTO, the America Invents Act (appeal, post grant review, derivation proceedings and prior user rights), ICANN’s generic top level domain name proposal, the Trans-Pacific Partnership, and recent Hatch-Waxman cases. Presentations from our Japanese colleagues included: comparison between the US and Japan Patent systems, post-grant patent review, prior user rights, correcting or canceling patent claims, remedies for true patent owners, IP High Court decisions, and the Mottainai Patent Prosecution Highway, to name a few. There was also a presentation related to the latest IP developments in EU.

The meeting and dinner provided excellent networking opportunities. The Committee wishes to thank its members for supporting this year’s pre-meeting seminar. The Committee also offers its gratitude to its many sponsors for supporting this year’s dinner.

During the Mid-Winter Institute, the Committee also co-hosted a meeting with the IP Practice in Europe Committee to discuss post grant review from the European, Japanese, and AIA perspectives. Speakers included Ms. Kei Konishi, a member of the JPAA delegation.

Finally, the Committee is currently planning its annual visit


to Japan from April 16-20, 2012. The delegation is working together closely with its Japanese sister organizations to schedule meetings in Tokyo and Osaka, and is planning its first women in IP law event in Tokyo.

If you are interested in becoming involved in the Committee, please visit the AIPLA website Committee pages. Committee events, including future pre-meeting information will be posted on the Committee micro-site. We look forward to hearing from you!

IP Practice in Latin AmericaChair: James E. LarsonVice Chair: Joaquim Eugenio Goulart

Vision, Mission and Values The IP Practice in Latin America Committee’s mission is to foster a better understanding of the complex differences among the numerous countries of Latin America by educating its members and AIPLA. The Committee accomplishes this by constantly reminding its members, through its programs and web postings, that there are three distinct languages spoken throughout Latin America (English, Spanish and Portuguese), not including the numerous indigenous languages that can be found in each country, and that each Latin American country is very unique in its culture, political system, history and of course their approach to the procurement of intellectual property. The Committee brings together those differences within the best of its abilities to help IP practitioners throughout the world to better understand Latin America and the procurement of IP in the region. The Committee’s vision is to have IP practitioners from every Latin American country on the Committee.

AdvocacyThe Committee is very committed to acting as an advocate to further the understanding and development of IP systems in Latin America. The Committee will work with fellow IP associations in all Latin American countries to assist them in embracing common ideals and systems that are proven to work from other countries with more developed IP procurement systems. However, we will always remain cognizant of the unique cultural differences in each Latin

American country and will never forget that just because a certain system works well in one country, it does not mean that it will necessarily work well in any other Latin American country. The Committee will look to fellow AIPLA Committees such as the International and Foreign Law Committee, the PCT Issues Committee, the various Trademark Committees and the Committees covering Japan, Europe and the Far East, to name just a few, for assistance, mutual cooperation and guidance.

Public EducationThe Committee is committed to the highest level of public education as it relates to IP procurement in the Latin American region. As a means to this ends, we will continue to work with a multitude of the other AIPLA Committees to sponsor joint Committee sessions, especially at each year’s Spring and Annual Meetings. However, the Committee will not limit itself to only working with other “internationally focused” Committees, but will strive to incorporate programs that are co-sponsored by a wide variety of AIPLA Committees so long as the educational program is helpful to the Committee membership and the greater AIPLA community as whole. The Committee has also formed official liaison relationships with the Biotechnology Committee, the International and Foreign Law Committee and the Professional Programs Committee.

Member ServiceThe Committee is wholly committed to expanding its membership to include at least one, if not many, members from each Latin American country in the region. We are also committed to involving members in Committee educational programs by asking them to speak. Further, the Committee has created a new Subcommittee to maintain its AIPLA micro-website to keep its members informed about important changes occurring throughout the Latin American region. Still further, we have created a Social Networking Subcommittee to work with the Microsite Subcommittee to disseminate information to Committee members about credible and informative social networks, group discussions and blogs.

Global OutreachThe Committee’s vision, mission and values, as well its advocacy, public education and member services will work together to provide a greater global outreach. Latin America, as a whole, has become an important economic market for the world and should expect to see IP procurement increase steadily each year throughout the entire region. The Committee intends to help foster global outreach by planning at least one trip per year to a Latin America country to visit its local Patent and Trademark Office and/or other IP office and as well to coordinate a visit with the county’s or city’s local IP association and its Judicial bar. Plans are being finalized for our visit Brazil in late August 2012. In


addition, the Committee, along with the International Trade Commission Committee, will lead an AIPLA delegation to speak at ASIPI’s mid-year meeting in Antigua, Guatemala in March of 2012. Finally, the Committee is tentatively proposing a trip to Mexico City for 2013. More details on the Brazil and Mexico trips will be available at the Spring Meeting in Austin, TX.

Subcommittees:

Subcommittee Reporting on IP Developments in South America for 2012Ignacio Manuel Sánchez Echagüe – Chair Gisella Barreda – Vice Chair

Subcommittee Reporting on IP Developments in Mexico & Central America for 2012César Ramos - ChairJosé Paulo Brenes – Vice Chair

Subcommittee for the Maintenance of the AIPLA LAC Micro-Web SiteEduardo da Gama Camara Junior – Chair

Subcommittee for Development and Integration of Social Networking in Latin AmericaLuis Diego Castro – Chair

Subcommittee for Biotechnology Issue in Latin AmericaBenny Spiewak - ChairJuan Francisco Reyes – Vice Chair

Law Practice ManagementChair: Steven M. AuvilVice Chair: David A. Divine (not pictured)

The main goal of the Law Practice Management Committee this year was the timely production of the Report of the Economic Survey 2011. We are proud to announce that the Report was produced and distributed as scheduled. Copies are available to members on the AIPLA website. We’ve received positive feedback regarding this important industry information.

The Law Practice Management Committee also sponsored a joint educational session (60 minutes CLE) with the Patent Law Committee and Professionalism & Ethics Committee on ethical issues concerning the America Invents Act and risk

management.

We have agreed to collaborate with the Women in IP Law Committee on a program relating to recruiting and retaining female IP lawyers in firms and companies. That program is intended to be held at a breakfast meeting at the Spring Meeting 2012.

Law StudentsCo-Chair: Natalie C. JonesCo-Chair: Deb Sengupta (not pictured)

The Committee held a joint meeting with the Emerging Technologies, Licensing and Management of IP Assets and Mergers and Acquisitions Committees. See the Emerging Technologies Committee report.

Licensing and Management of IP AssetsChair: Kevin A. Wolff Vice Chair: Robert O. Lindefjeld (not pictured)

The Committee held a joint meeting with the Emerging Technologies, Law Students and Mergers and Acquisitions Committees. See the Emerging Technologies Committee report.


MembershipChair: Bryan W. BockhopVice Chair: Cheryl H. Agris (not pictured)

This Committee provides support to the efforts of many other Committees as well as the AIPLA Board to expand membership and increase active meaningful participation by AIPLA members. The Committee oversees the Target-Substantive Committee Liaison program and has started a Solo/Small Firm Practitioner Subcommittee which will offer programs and networking opportunities to these practitioners. In addition, the Committee provides ongoing support to the Women in IP Law Committee in the planning of the annual regional women’s dinner as well as to the Law Students Committee in planning law student receptions around the country.


MentoringChair: Daphne C. LainsonVice Chair: Hetal Kushwaha (not pictured)

The Mentoring Committee held a business meeting at the 2012 Mid-Winter Institute.

The Committee is planning a pilot on-site mentoring program for the 2012 Spring Meeting. We will be pairing more senior AIPLA members with more junior members and first-time attendees/new members who are interested in participating in the program. In this way, we hope to engage on-site mentees in AIPLA. Jenae Gureff (Cantor Colburn LLP) and Michael Valek (Vinson & Elkins LLP) will be chairing this pilot program. If it is successful, then the Committee plans to extend the pilot to the Annual Meeting. We will work

with the Fellows and Membership Committees, as well as the Committee chairs and New Lawyers Committee in the planning and implementation of the pilot.

The Mentoring Committee is implementing new steps to assist mentors and mentees in their relationships. We have introduced a pre-screening that will be done by Kevin Shipley (Bereskin & Parr), working with the new chair of our pairings Subcommittee Orin Paliwoda (Paliwoda PLLC). Tracy Corneau (Borden Ladner Gervais) who will send regular reminders and tips to our mentors and mentees, and solicit feedback so we may improve the program. We will also provide an on-line program on March 15, 2012 to provide mentors and mentees with practical tips on how to make the most out of the program. Further, we will update our current list of liaisons to substantive Committees. The list is a resource for our mentors, providing them with a Committee contact in the event that their mentee has questions about, or wishes to become more involved in, a particular Committee.

Mergers and AcquisitionsChair: Neil Henderson (not pictured)Vice Chair: Peter E. Mims

Vision, Mission and ValuesTo engage and educate the membership on intellectual property issues that arise in corporate transactions (mergers and acquisitions) and generally raise awareness regarding the importance of intellectual property to mergers and acquisitions.

AdvocacyWe have not engaged in advocacy as of yet, but there may be opportunities in the future. For example, there are conflicts in the rulings of several circuit courts of appeal regarding the assignment or transferability of intellectual property license agreements.

Member ServiceWe have implemented monthly conference calls that are intended to be of benefit to member education. All members are invited to participate in these monthly calls. We are also considering webinars on topics that won’t fit into the regular conference calls. These webinars may be used as a subset


of meeting discussion topics.

We have or will be conducting joint Committee meetings with presentations with other Committees such as Electronics & Computer Law, Law Students, Emerging Technologies, Corporate, and Women in IP Law to help inform a larger cross-section of AIPLA members about mergers & acquisitions.

At the Mid-Winter Institute, we had a joint session with the Licensing, Emerging Technologies and Student Committees:

We focused on two primary topics, the first related to the impact of the AIA on IP transactional practices and the second related to IP assets in cross-border M&A transactions. Specifically, Robert Krebs, Nixon Peabody, addressed the AIA and its impact on due diligence in transactions and Keith Grzelan, Wells St. John, addressed the financing of emerging technologies with special attention to the impact of the AIA on venture capital funding.

In the second part of the program, speakers Valerie Calloway, Polymer Group, Inc. and Daniel Glazer, Patterson Belknap, Webb & Tyler, LLP, addressed issues related to IP assets in cross-border transactions, addressing the treatment of IP assets in mergers and acquisitions as well as specifically focusing on IP assignments.

Global OutreachWe have had some international members attend our Committee meetings. One of the goals of the Committee will be to engage the IP Practice in Japan, China, Europe and other Committees to conduct joint sessions with regard to mergers and acquisitions in other jurisdictions.

We are under way with planning for a larger session at the AIPLA Annual Meeting in 2012.

New LawyersCo-Chair: Melissa A. Sikorski Co-Chair: Chad Pannell

During the Mid-Winter Institute, the New Lawyers Committee held a successful joint meeting with the Trademark, Trademark Treaties and International Law, Trademark Litigation, Food and Drug, Diversity, Education, and PCT Issues Committees, and the Special Committee on Genetic

Resources, Traditional Knowledge and Folklore. We had a great discussion that even included poker chip rewards for good questions and responses. Thanks to our panel Kieran Doyle, Sheldon Klein, Jay Erstling, Freddie Park, and Todd Baker, for presenting a discussion of what new lawyers do not learn in law school but need to know in practice. Special thanks also goes out for the lively audience discussion lead by Joe Re. The group discussed how legal practice is changing, the need for specialization, what motivations drive firm and in-house culture and decisions, best client practices, work-life balance, and how to appropriately use technology. You can look for a more detailed summary of the meeting in the New Lawyer’s Business Casual™ March Newsletter.

The New Lawyers Committee also announced it will also be holding it first CLE program in the coming months. Headed by Richard Matthews in partnership with the Education and Online Programs Committees, the program provides CLE for new lawyers by new lawyers. Our vision is to integrate education with our networking events around the country, allowing new attorneys the opportunity to present at their local gathering while connected via videoconference around the country with new attorney gatherings in other cities.

The New Lawyers Committee Chairs have been and will continue to make announcements on the AIPLA email list and utilize other sources, such as our Facebook page and LinkedIn group, to seek volunteers for various AIPLA projects, post job openings, make announcements, and communicate about upcoming local events led by the networking Subcommittee leaders.

If you are interested in getting involved in the New Lawyers Committee, please send an e-mail to Chad Pannell [email protected] or Missy Sikorski [email protected].

Online ProgramsChair: Brad ChinVice Chair: Stephen E. Belisle

MissionOur mission is to provide high quality, affordable education through online media.


Our vision is to develop and prepare technological options and vendors to work with the leadership and other Committees to identify, develop, and provide efficient and effective online program content to AIPLA and to help others in AIPLA utilize online media for program delivery. Through its work on the AIPLA Education 360 Strategic Planning Group, the Committee strives to strengthen and improve the effectiveness of AIPLA’s online education to meet the goals in AIPLA’s Strategic Plan.

The Committee provides substantial means to AIPLA to expand its role as an innovator, powerful advocate, and visible global leader in intellectual property, including through its interactive and timely Internet-based (and thus global) programming. The Committee also provides AIPLA with the capacity to serve its members, public policy leaders, and the public, while generating revenue necessary to ensure the sustainability of the organization and its employees.

AdvocacyThe Committee provides AIPLA with means to directly connect with its membership and the public. While the Committee itself does not engage in advocacy, its capacity to communicate information to and among target groups via online programming provides AIPLA with an invaluable tool in today’s instant information world.

For example, on September 30, 2011, the Committee facilitated a Q&A webinar interview with USPTO Director David Kappos by AIPLA Executive Director Q. Todd Dickinson, which provided for a mutual exchange of information regarding the initial impact of patent law reform under the Leahy-Smith America Invents Act (AIA). Similarly, on October 27, 2011 (shortly after the AIPLA Annual Meeting), the Committee hosted a webinar entitled “USPTO Implementation of the America Invents Act,” which featured the USPTO Patent Reform Coordinator, Janet Gongola, and provided a mechanism for information exchange between the USPTO and webinar attendees. The Committee will continue its series on the AIA into 2012 with a number of webinars which educate and enable practitioners to navigate their practices under the AIA.

Public Education While the Committee has historically provided excellent intellectual property programming for members of AIPLA and others, there is room to further leverage the programs to educate the general public about the daily value of intellectual property and to funnel that programming to specific target groups. Thus, the Committee is continuing to evaluate potential programming topics, audience groups, and cost-sensitive online delivery means in this regard, and coordinating with AIPLA regarding preferred practices for notifying such target groups of the online programming opportunities.

Member ServiceThe Committee provides substantial services to the members of AIPLA through two primary online webinar platforms: those professionally hosted by KRM Information Services, Inc. (KRM) and those done through webinars. In 2011, the Committee hosted 17 online programs covering a wide-range of topics, including the AIA, copyrights, patent interferences, patent reexaminations, patent prosecution, trademark prosecution, inequitable conduct, litigation, trade secrets, and others. These online programs not only serve the members of AIPLA, but generate revenue to help ensure the financial sustainability of the AIPLA into the future. We intend to host about 20 to 22 online programs in 2012, covering a wide range of subject matter to reach a broader scope of the membership.

Online programs also provide a substantial channel for the members to obtain needed CLE credits.

The Committee also has the following Subcommittees whose collective mission is to cooperate with other AIPLA Committees to expand and enhance member services:

(1) Citrix GoToWebinar Subcommittee, which is charged generally with facilitating such webinars, including a Career and Practice Management Webinar Series, and specifically with coordinating online programming with the Biotechnology, Chemical Practice, Corporate Practice, Electronic and Computer Law, International Education, Mentoring, and Patent Litigation Committees as well as the Special Committee on Standards and Open Source; and

(2) Online Presence Subcommittee, which is charged with evaluating and improving the overall online presence and marketing of the programming of Online Programs, including through such channels as Facebook, LinkedIn, Twitter, Blogs, and the AIPLA microsite.

Global OutreachThe Committee provides AIPLA with global outreach through its online programming, which by its very nature is without boundaries (of course, time zones and language barriers affect the audience for any given webinar). The Committee continues to coordinate with the International Education Committee to identify and develop relevant online programming for international audiences, and to increase AIPLA’s international membership.

Upcoming Programs

April 18 The Resurgence of Trade Secret Law

Janet CraycroftMark R. Halligan

May 2 Patent Prosecution Under the AIA: Strategies for Before, During and After the Transition to First-Inventor-to-File

Courtney BrinkerhoffJoe Matal


Patent AgentsChair: Esther M. KepplingerVice Chair: Naomi Abe Voegtli

The Patent Agents Committee held a joint meeting with the Patent- Relations with the USPTO Committee. See report under Patent-Relations with the USPTO.

Patent Cooperation Treaty IssuesChair: Jay A. Erstling (not pictured)Vice Chair: Stephen G. Kunin

The mission of the Committee is to educate patent professionals about the use and operations of the PCT system; to identify and advocate for improvements in and enhancements to the system; and to sponsor resolutions and promote dialogue with the USPTO, the World Intellectual Property Organization (WIPO), and patent offices and practitioners around the world.

At the Mid-Winter Institute, the PCT Issues Committee met in an educational session that focused on new PCT developments. Three speakers addressed the Committee. Michael Neas, Supervisory PCT Legal Examiner in the USPTO’s Office of PCT Legal Administration, spoke on PCT updates and PCT-related initiatives within the USPTO, including the selection of Rospatent (the Russian Patent Office) as an international searching authority for US PCT applications. Neas also addressed improvements in PCT processing. Matthew Bryan, Director of the PCT Legal Division at WIPO, discussed changes in the PCT Rules, enhancements in electronic access to the PCT (ePCT), and expansion of the PCT Patent Prosecution Highway (PCT-PPH). Carl Oppedahl, of the Oppedahl Patent Law Firm LLC, spoke on what the new developments mean, particularly PCT-PPH and ePCT, from a user’s perspective and how

users can most profit from them.

The Committee also announced that the sixteenth annual AIPLA PCT Seminar will take place on July 23-24, 2012, in Alexandria, Virginia. The Seminar, which brings together leading experts on the PCT, provides an in-depth understanding of PCT procedures, strategies and best practices.

Patent LawChair: Kenneth N. NigonVice Chair: Marc A. Hubbard

Vision, Mission and Values The Patent Law Committee provides an open community for the exchange of ideas and concerns on US patent law and underlying policy, disseminates information on recent developments in patent law, develops educational programming on patent law for the membership and policy leaders, assists other Committees with developing educational and other programming, identifies important issues of patent law to the membership, and assists in developing positions on issues of patent law to be advocated by AIPLA. The Committee will do so without regard to any particular technology.

AdvocacyOne of the Committee’s primary objectives is to assist AIPLA in its advocacy by monitoring issues that arise concerning the substantive aspects of US patent law and bringing those issues to the attention of the membership and AIPLA. The Committee gathers input from its members on issues involving patent law, and recommends positions to be taken by AIPLA. It also drafts, on behalf of AIPLA, resolutions and comments in response to requests from governmental agencies concerning patent law. The newly-formed Advocacy Subcommittee will assist the Committee in these efforts, as described below.

In February, the Subcommittee under the leadership of Pou-I (Bonnie) Lee summarized five Notices of Proposed Rule Making (NPRMs) under the America Invents Act (AIA), solicited comments from the entire Patent Law Committee, summarized those comments and passed them on to the AIPLA Task Force. Currently, the Subcommittee is seeking


comments on the NPRMs concerning post-grant procedures, derivation and practice before the Patent Trial and Appeal Board.

Public EducationWe are a resource for the Public Education Committee for developing materials for use in public education. In January, we reviewed and commented upon educational materials prepared for middle-school students by the Public Education Committee. We will continue to work with the Public Education Committee to ensure that issues relating to the public perception of IP law are addressed.

Member ServiceThe Committee serves members of the Committee and AIPLA through a number of different avenues.

First, our substantive Subcommittees provide forums or communities through which Committee members exchange information and thoughts on current legal developments and policy questions. As described above, the Advocacy Subcommittee has solicited and submitted comments to the AIPLA Task Force regarding the Notices of Proposed Rule Making under the AIA.

The Patent Law Committee is fortunate to have a technically–diverse membership, enabling it to cover all technologies that arise, including software and the life sciences. Because of the success of the Subject Matter Eligibility Subcommittee, we have expanded its scope to include all issues relating to patentability and renamed it the Patentability Issues Subcommittee. This Subcommittee is co-chaired by Ben Borson and Gary Cohen. On February 21, the Committee sponsored its first teleconference. Members of the Patent Law Committee were invited to a free discussion of In re Lee, a case from the Board of Patent Appeals and Interferences dealing with the use of secondary consideration evidence for obviousness rejections and obviousness-type-double patenting rejections. Matt Hammersley gave a short presentation on the majority opinion and Anthony Craig addressed the dissent. We had over 70 participants on the teleconference. The Subcommittee will continue to monitor general developments in the area of patentability, including subject matter eligibility, anticipation, obviousness, and §112 issues, hold regular conference calls to discuss important cases, and bring them to the Association’s attention and work with Committee leadership, the Amicus Committee and the Board on developing positions to be taken on important issues.

Second, the Committee regularly arranges and sponsors educational programming during its meetings, often for CLE credit. At the 2012 Midwinter Meeting, the Patent Law, Professionalism and Ethics and Law Practice Management Committees held a joint CLE meeting focused on ethical considerations under the America Invents Act. Ray Van

Dyke addressed ethical considerations arising under the Supplemental Examination provisions of the AIA, summarizing the newly proposed rules which had been published earlier in the day. Steve Auvil discussed ethical considerations raised by Best Mode requirement. Anthony Greene of Herbert L. Jamison & Co discussed ethical issues relating to Audit Letters and ownership/direction of clients.

Going forward, our Programs Subcommittee, chaired by Paul Kitch of Nixon & Peabody and Liz Brooks of Hunton & Williams, will be responsible for planning educational content, preferably for CLE credit, during the Committee’s meetings. The Programs Subcommittee will also be responsible for coordinating with the Professional Programs and the Midwinter Institute Committees, as well as the Online Education Committee, to provide them with ideas for programming, and resources in connection with producing the programming.

The Committee will present another joint CLE educational meeting for the 2012 Spring Meeting with the Professionalism and Ethics Committee. This meeting will focus on the USPTO procedures and Statute of Limitations for proceedings before the Committee on Discipline of the USPTO.

In addition to their efforts in soliciting and collecting comments on the NPRMs, the Advocacy Subcommittee will monitor case law, USPTO publications and NPRMs for issues that may need to be addressed by AIPLA. If an issue is deemed worthy by the Subcommittee, they will make recommendations to the Amicus Committee or prepare a draft resolution for consideration by the Board.

Third, the Committee assists other Committees with programming content.

Fourth, the Committee informs its members of important legislative and administrative initiatives, and provides a mechanism through which members may contribute collectively to comments that will be submitted in response to those initiatives.

Global OutreachOur Programs Subcommittee will work with the International Education Committee to make resources and speakers available on US patent law, as well as suggest possible topics and programs that might be of interest to an international audience.


Patent LitigationChair: Dianne B. ElderkinVice Chair: Scott J. Pivnick

Subcommittees:

Model Jury Instructions Subcommittee Chair, Scott Pivnick

Action Review SubcommitteeThe Model Jury Instructions Subcommittee finalized a draft set of instructions which Chair Scott Pivnick presented to the Board at the Mid-Winter Institute. They are currently being reviewed by a Board subcommittee. Upon approval of the instructions, we plan to have them available on the website. The Subcommittee will be charged with keeping the instructions current.

Last summer, volunteers for an Action Review Subcommittee were solicited. There are close to a thousand members of the Patent Litigation Committee, which can make committee-wide communication cumbersome and slow. The Action Review Subcommittee will be our “quick response” team, charged with obtaining Committee input and presenting a Committee position in response to Board inquiries requiring quick turn-around and with coordinating Committee communications so that we may pro-actively present our input to the Board on issues and topics on which we desire to be heard.

The Committee leadership will communicate with Committee members about ideas for additional Subcommittees and useful projects, and solicit volunteers. The Subcommittees and projects will be formulated with an eye toward addressing the Association’s missions of Advocacy, Public Education, Member Service, and Global Outreach.

At the upcoming Spring Meeting, we will hold a joint meeting with the Antitrust Committee and the Special Committee on Standards and Open Source. The joint Committee presentation, entitled “IPR and Open Source Issues Affecting Mobile App Developers and Device Makers,” will include presentations on “Summary of Patent Infringement Cases in the Mobile Space,” focusing on cases in the United States and Europe. CLE credit is being sought for the meeting.

Patent-Relations with the USPTOChair: Gregory D. AllenVice Chair: Nicholas P. Godici

Subcommittees: Federal Register Notice Committee: Lead drafter designated on a per Notice basis; and Microsite: Michael D. Berger.

Vision Mission and ValuesThis Committee monitors and provides comments on various patent-related activities of the United States Patent and Trademark Office (USPTO) that may be of interest or concern to the profession or the public. The Committee focuses on the USPTO Rules of Practices in Patent Cases and their effectiveness in furthering the objectives of the patent system; the extrastatutory and extrarule aspects of USPTO practice with respect to pending patent applications, as reflected in the Manual of Patent Examining Procedure and in actual cases coming to the attention of the Committee; the effectiveness of that practice in furthering the objectives of the patent system; and the effectiveness of the facilities afforded by the USPTO to the public interested in patent matters, including publications.

AdvocacyThe Committee seeks input from its members and other interested Committees on USPTO Federal Register Notices, for possible AIPLA comments to the USPTO. The Committee will also work with the Special Task Force on AIA Rulemaking and other Committees to assist the Task Force.

Public EducationThe Committee typically invites a USPTO official to committee meetings during the stated meetings to discuss the current status of patent operations and programs, and any new patent policies, practices, or procedures that have recently been adopted or proposed. The latter is usually a joint meeting with at least one other interested Committee. In addition, the Committee often joins with other Committees at the stated meetings for their Committee meetings.

For example, at the Mid-Winter Institute, we held a one-hour joint meeting with the Patent Agents Committee. We were pleased to have USPTO Deputy Under Secretary and Deputy Director, Teresa Rea, provide updates on the America Invents Act (AIA) rulemaking process. She delivered


valuable information on the timelines and a synopsis of the important features of each of the current Notices of Proposed Rule Making (NPRMs). The presentation provoked a lively discussion of the process and she encouraged the submission of comments to the USPTO. Deputy Director Rea also addressed questions raised by the members.

Further, at the Mid-Winter Institute, the Patent-Relations with the USPTO and the Electronic and Computer Law Committees held a joint two-hour meeting on the state of appeals at the USPTO. We were pleased to have USPTO Chief Administrative Patent Judge James Smith present on the “State of the Board,” as well as former APJ William Smith, and Stephen Kunin, with Oblon, Spivak, McClelland, Maier & Neustadt, in Alexandria, VA, providing analysis and practice tips regarding the new appeal rules, and Nick Godici, of Birch, Stewart, Kolasch & Birch LLP, Washington, DC, discussing challenges at the Board and the impact of the America Invents Act (AIA) on the Board.

Member ServiceThe Committee actively maintains its microsite to provide information of particular use to the membership.

Professional ProgramsChair: Steven C. MalinVice Chair: Manny W. Schecter

The Professional Programs Committee met during the 2012 Mid-Winter Institute to finalize topics for the Annual Meeting and assign coordinators. We also discussed the 2012 Spring Meeting, addressing any problems or issues raised. The Professional Programs Committee will continue to conduct meetings to organize upcoming AIPLA stated meetings. Our next in-person meeting will take place during the 2012 Spring Meeting in Austin, with a focus on developing the program for the 2012 AIPLA Annual Meeting in October. We also plan to continue planning for the Annual Meeting with regular conference calls going forward.

Professionalism and EthicsChair: Raymond Van DykeVice Chair: Rodney K. Caldwell

The Professionalism & Ethics Committee had an active presence at the Mid-Winter Institute in Las Vegas. Chair Ray Van Dyke moderated a panel on ethics, and presented on the provisions for Supplemental Examination in the America Invents Act, as proposed by the Patent Office, at a joint meeting with the Patent Law Committee and Law Practice Management Committee. Vice Chair Rodney Caldwell presided over the business meeting for the Committee.

Vision, Mission and ValuesAs is the Committee’s mandate, we stand ready to assist the AIPLA Board and membership when called upon to address professionalism and ethical issues presented. The Committee is exploring avenues of potential interest to the AIPLA membership, such as ethical issues involving the AIA and to be proactive in this regard, e.g., the Chair’s presentation on ethical and other issues involving Supplemental Examination at the Mid-Winter Institute.

AdvocacyThe Committee has taken the initiative to join with other Committees in joint sessions, facilitating the presentation of issues germane to the Committee.

Public EducationWithin the Committee’s mandate, it stands ready to promote public education on issues of professionalism and ethics.

Member ServiceAgain, the Committee had a joint session with the Patent Law Committee and the Law Practice Management Committee at the Mid-Winter Institute, facilitating the joint program on ethics and obtaining CLE credit for the attendees.

Global OutreachWithin the Committee’s mandate, it stands ready to support the AIPLA Board, other Committees and the membership with further activities and assistance, particularly if requested by the Board.


Public AppointmentsChair: Michael K. KirkVice Chair: William C. Rooklidge

This Committee is appointed by the President-Elect of AIPLA. It has responsibility for responding to requests from the AIPLA Executive Committee and Board to report to the Board on the qualification of certain individuals being considered for appointment to positions such as a Federal Circuit judge, Undersecretary of the Department of Commerce for Intellectual Property and Director of the USPTO or other similar public appointments.


Public EducationChair: Salvatore Anastasi (not pictured)Vice Chair: Michael B. Stewart

Subcommittees:

Youth EducationElexis Jones

Business EducationDave Carlson

Website DevelopmentMichael Stewart

Vision, Mission and ValuesDevelop key Public Education message points, materials and audience targets

Tailor the message to particular audiences and prioritize

Disseminate Public Education tailored messages through specific channels to prioritized audiences

AdvocacyThe Committee is working closely with the Rapid Response Task Force to help identify areas where an AIPLA response is appropriate to address public misconceptions regarding intellectual property and to facilitate communication of the response to the public.

The Committee is working with the USPTO and WIPO to celebrate World IP Day 2012 with a joint program and reception. The Committee goal is to continue to make this an annual event to increase awareness and educate those on the Hill about the importance of Intellectual Property.

Public EducationThe Committee has continued its work to provide education packages for use by the membership in reaching public audiences. The Committee has reached out to other AIPLA Committees to help with review and finalization of these presentations including the Copyright Committee, Trademark Committee, the Trade Secret Committee and the Patent Committee: The status of the presentations are as follows:

• General IP presentation – posted

• Copyright presentation – posted

• Trademark presentation – awaiting TM Committee comment and final review

• Trade Secret presentation - awaiting TS Committee comment and final review

• Patent presentation – awaiting Patent Committee comment and final review

The Committee is working to revitalize the Creativity In Bloom website and has created a working draft vision document. The Committee Chair and the Vice Chair will meet with AIPLA staff to discuss the redevelopment of the website.

The Committee is reaching out to various national organizations with an interest in learning more about intellectual property to utilize their distribution network to increase the public awareness of intellectual property. For example, the Vice Chair recently did a presentation for a local club of a senior men’s organization. The same presentation may be reused by AIPLA members speaking before other groups. The Chairman has been in contact with the Future Business Leaders of America (FBLA).

The Committee continues to coordinate with the USPTO and to participate in public outreach efforts, including programs devoted to educating the public about trademarks and patents.

Member ServiceThe Committee is in consultation to substantially update its microsite and to provide ready access to the presentations and materials created so that they may be utilized by AIPLA


membership. Moreover, the Committee desires timely feedback as the materials are used so that they may be refined and new packets of material developed over time. The materials have already been used and survey based feedback received. The goal is to automate the process of distribution and survey feedback, if feasible, and then to broadly advertise to the membership the availability of these materials. Among other things, the Committee envisions the use of online training sessions introducing the materials to the membership. The Committee also hopes to advertise them in daily communications associated with AIPLA meetings and in the AIPLA daily or weekly e-mail communications to the membership.

The Creativity in Bloom website is intended to provide an additional mechanism to provide materials for use by the membership to educate the general public about intellectual property and to address incorrect or misleading perceptions.

Global OutreachPlease see the discussion above including, for example World IP Day, the development of the website and materials for use by the AIPLA membership.

Special Committee on Genetic Resources, Traditional Knowledge and FolkloreChair: Thomas T. MogaVice Chair: DeAnn F. Smith

Vision, Mission and ValuesThe Committee continues to raise awareness among members of the intellectual property community as to existing and developing rules of practice and policies related to genetic resources, traditional knowledge and folklore. An example of this was our participation in the Young Lawyers Committee meeting during the Mid-Winter Institute. This participation helped new lawyers become aware of our Committee, its mission and our goals. This will be helpful as most lawyers, experienced and inexperienced, are unfamiliar with genetic resources, traditional knowledge and folklore. By enlightening intellectual property practitioners our Committee enables the members of AIPLA to better

understand trends and developments at the very front end of global intellectual property issues.

AdvocacyThe Committee advocates the distribution of knowledge related to the global treatment of genetic resources, traditional knowledge and folklore. These areas continue to develop at a rapid pace.

Public EducationThe education of our fellow lawyers on the subjects of genetic resources, traditional knowledge and folklore is critical to the mission of our committee. Our work at the 2012 Mid-Winter Institute in joining with the Young Lawyers Committee to discuss the Committee and its work demonstrates this commitment.

Member ServiceThe addition of the Special Committee on Genetic Resources, Traditional Knowledge and Folklore to the list of AIPLA Committees serves to provide a great benefit to our membership as it has certainly raised the awareness of members. The Committee provides a unique resource and truly singular for this information.

Global OutreachCommittee Vice Chair DeAnn Smith recently attended the February session of the WIPO’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore held in Geneva. During the Mid-Winter Institute, DeAnn represented the Committee at a joint meeting of the Diversity in IP Law, Education, Food & Drug, PCT Issues,Trademark Law,Trademark Litigation, Trademark Treaties and International Law, and Young Lawyers Committees.

Special Committee on IP Practice in IsraelCo-Chair: William H. MandirCo-Chair: Joel K. Schmidt (not pictured)

This Committee serves as a resource, forum, and network for AIPLA members with a personal and/or professional interest in IP laws and systems in Israel. The Committee’s mission


is to establish and maintain relations with IP associations in Israel and study and report on issues of interest to the AIPLA Board and membership. The Committee also provides information on US intellectual property law to any interested party in Israel, if called upon to do so.

Special Committee on LegislationCo-Chair: Ann Mueting (not pictured)

Co-Chair: Patrick J. Coyne

Subcommittees:

Copyright Industrial Designs Patents/Litigation PTO/Agency Practice Trademark These Subcommittees address issues within their areas of expertise and coordinate with the relevant substantive law committees. Committee membership is by appointment.

Vision, Mission and ValuesThe overall mission of the Committee is to support the Board and facilitate rapid consideration of legislative proposals. This includes generation of proposals, as well as consideration of both internally-generated and externally generated proposals. The Committee also works closely with the various substantive law Committees to ensure that the Board has feedback from them on legislative proposals.

The Committee supports the vision of the organization by continually seeking to improve the laws governing intellectual property rights, by considering members’ views as represented by the Committee membership and substantive law Committees with whom we coordinate and communicate, and by supporting the Board and leadership in advocating before Congress.

The Committee supports the Association’s mission by keeping members informed regarding legislative developments and initiatives and advocating for fair and effective intellectual property laws. The Committee serves the Association by

generating legislative proposals and providing commentary and views of the membership on various legislative proposals to the Board and leadership.

AdvocacyThe Committee supports the Board and leadership, as requested. This includes generating, reviewing, commenting on, and preparing legislative proposals, positions on legislative proposals, and testimony regarding legislative proposals. We work closely with the substantive law Committees in doing so and serve a liaison between the Board and those Committees to ensure that proposals are carefully considered by persons within the organization having the relevant expertise and experience to provide to the Board sound recommendations and the studied judgment of the members.

The Committee is currently monitoring several issues, including: possible technical amendments to the America Invents Act (AIA); Patent Law Treaty (PLT) implementation; trademark issues, including technical amendments to dilution provisions of the Lanham Act, protection of well-known marks, trademark remedies, and trade dress protection; fashion design protection; orphan works, the Stop Online Piracy Act; liability for streaming; antitrust scrutiny of reverse payments; federal trade secrets protection; and other issues has requested.

Member ServiceThe Committee actively solicits the substantive law Committees in performing its mission. We seek to provide the Board with a sense of the membership on the various issues that are considered by the Committee.

Global OutreachAs the Committee is directed to US legislation, we consider and coordinate primarily regarding US legislation. Nonetheless, a number of legislative proposals require consideration of various international issues, as well as harmonization with other countries’ laws. The Committee addresses these issues in the regular course of its work.


Special Committee on National IP Practitioner Associations WorldwideChair: Mark A. GuetlichVice Chair: Mark J. Abate (not pictured)

This Special Committee is charged with creating and promoting opportunities for leaders of national IP practitioner organizations around the world to meet and develop recommendations for best practices globally. It focuses on education, common advocacy goals, and how attorneys around the world use technical information.


Special Committee on Standards and Open SourceCo-Chair: Monica M. BaroneCo-Chair: Christopher J. Dervishian (not pictured)

Subcommittees:

Policy/Projects Latonia Gordon and Joe Wrkich

Outreach Marc Braner and Naomi Voegtli

ProgrammingHope Shimabuku and Michael Stein LLP

Management Joanne Montague and Paula Shakelton

Our Committee will hold a joint educational meeting with the Patent Litigation and Antitrust Committees during the

2012 Spring Meeting which will include a presentation on intellectual property rights issues affecting mobile app developers. Speakers will discuss the following topics: (1) IP business models and licensing in the mobile space, (2) summary of patent litigation in the mobile space, and (3) a deeper dive into Oracle v. Google copyright issues around Android, and possibly (4) these issues from the European perspective.

The Committee holds monthly conference calls, and in-person meetings during the AIPLA stated meetings to discuss ongoing projects. The Committee co-chairs are adding international reports to the discussion beginning with Europe. We have also worked with AIPLA staff to produce an online survey for the Committee members to explore the types of projects they are interested in pursuing. The survey is in process.

In the recent past, the Committee has concentrated on standards-related projects. Currently, we are initiating a project related to open source. All interested Committee members will be given the opportunity to research and compare the features of OSS scanning tools and produce a compilation of this research in tabular form. The Committee is also working on our 2012 Partnering in Standards Program to be held during the 2012 Annual Meeting. The National Institute of Standards and Technology (NIST) is providing input into the substance of the program.

The Committee currently has several Subcommittees which enable us to explore many different issues at the same time and engage greater numbers of members in the projects and programs. These Subcommittees include a Policy/Project Subcommittee, an Outreach Subcommittee, a Programming Subcommittee, and a Management Subcommittee. This structure provides the Committee an even greater efficiency in engaging the industry and policy-makers on issues related to standards and open source as well as providing greater services to the Committee’s membership.

An important activity of the Committee is reporting on relevant lawsuits, enforcement actions, government policies, regulations, and legislation both domestically and internationally in the areas of standards and open source that may be of interest to AIPLA members. Recent examples include: (1) the European Commission’s investigation into Apple’s allegations that Samsung violated SSO rules; (2) several decisions in German litigations regarding the Samsung dispute; and (3) the dismissal in January, with leave to amend the complaint, of the Trueposition v. Ericsson litigation, which included two standards setting organizations as defendants.


Trade Secret LawChair: Daniel P. Westman (not pictured)Vice Chair: Janet Craycroft (not pictured)

Vision, Mission and ValuesTrade secrets are a sometimes overlooked element of the portfolio of owners of intellectual property, and the Committee passionately strives to raise awareness about the importance of trade secrets.

MissionServing Members: The Committee offers programming at stated meetings on topics relevant to the membership.

Serving Public Policy Leaders: The Committee has served as a sounding board for a proposed federal trade secrets litigation statute.

Serving the Public: The Committee’s programming and publications are intended to educate and benefit the public.

ValuesPassion About Intellectual Property. Trade secrets practice is continually evolving with constant changes in technology and applicable law, and the Committee’s activities convey a sense of passion and enjoyment of the practice.

A Strong Community. The Committee makes a strong effort to engage with people from a diverse array of industries, geographies, and personal backgrounds. The Committee leadership is based on the two coasts and in the Midwest.

Committed and Visionary Professionals. The Committee is pleased to have as members some of the leading trade secrets practitioners in the US and the world.

AdvocacyProposed Legislation. The Protecting American Trade Secrets and Innovation Act—which would amend the Economic Espionage Act to include a civil right of action—has been introduced in Congress. This proposal grew out of the law review article by former Trade Secret Law Committee Chair R. Mark Halligan proposing such amendments, which

was debated at the 2011 Mid-Winter Institute.

Preparation of Resolutions for Board Consideration. Based on the session at the 2011 Mid-Winter Institute “Addressing International Trade Secret Litigation: Should the Federal Economic Espionage Act Be Amended to Include a Civil Cause of Action?,” the Litigation Subcommittee intends to attempt to develop a resolution for consideration by the AIPLA Board of Directors.

In addition, the Committee is considering whether to present a resolution to the Board regarding the Federal Circuit’s recent decision in TianRui Group v. ITC, a case allowing US companies to seek importation bans on products manufactured in China using trade secrets misappropriated in China.

Public EducationAt the 2012 Mid-Winter Institute, the Committee co-sponsored a two-hour joint CLE session with the Corporate Practice Committee on the topic of “Separating Personal and Professional Digital Lives.”

At the 2012 Spring Meeting, the Committee will sponsor a three-hour concurrent track on Thursday, May 10, 2012 as follows:

“The Internationalization of Trade Secret Disputes: Big Cases, Big Verdicts and Big Challenges”

Managing and Protecting Your Trade Secrets Overseas – Best Practices to Minimize Misappropriation

Employees Without Borders: Managing personal devices and digital technology in an increasingly mobile world

Overcoming the Special Challenges of Litigating Against Foreign Parties and Companies

Litigating Spoliation of Evidence Disputes: Fallout from the DuPont v. Kolon case and how to use, or avoid, it in your trade secret case

Litigating Trade Secret Cases before the ITC – The future of TianRui Group v. ITC and the fallout on trade secret protection internationally

Update on Pending Trade Secret Legislation – Status of the Economic Espionage Act, Cybersecurity Bill, New Jersey’s recent adoption of UTSA and recent state trade secret and non-compete legislation

At the 2012 Annual Meeting, the Committee intends to sponsor a concurrent track tentatively titled “Are You the Weakest Link: Trade Secrets, Cybersecurity, and Best Data Security Practices.” Also, the Committee intends to organize a “Trade Secrets Summit” with programming for new and experienced lawyers. The annual review of trade secret litigation will be presented at the plenary session.


Member ServiceThe Committee places high importance on providing high quality programming to serve the membership. It has worked closely with the Corporate Practices Committee in presenting programs to the AIPLA membership and is considering creating a Subcommittee to facilitate greater interaction with other AIPLA Committees.

The Committee has established a LinkedIn group, thanks to the efforts of Mark Klapow, to facilitate discussion between members of the Committee on matters of mutual interest.

The Committee is scheduled to present a webinar through AIPLA’s Online CLE Committee in April 2012.

Global OutreachThe Committee will continue to encourage its members to reach out to potential new members of AIPLA. The Committee believes that the growth of trade secret law and its accessibility to non-patent members of the bar present real opportunities to grow and expand the number and scope of AIPLA’s membership.

To enable global discussion on the Internet, a LinkedIn group has been created thanks to the efforts of Mark Klapow, and Deirdre Fox has agreed to chair the Social Media Subcommittee.

Subcommittees:

Amicus Chair: David Almeling, O’Melveny & Myers

Best Practices/CyberSecurity Chair: Warrington Parker, Orrick

International Chair: Wil Rao, McAndrews, Held & Malloy

Legislation Chair: Russell Beck, Beck Reed Riden

Litigation Chair: Sid Leach, Snell & WilmerVice Chair: Mark Klapow, Crowell & Moring

Media Relations Chair: David Almeling, O’Melveny & MyersVice Chair: Vito Costanzo, Holland & Knight

Membership Chair: Seth Hudson, Clements Bernard

Social Media Chair: Deirdre Fox, Shoeman, Updike & Kaufman

Special Programs/Inter-Committee Liaison Chair: John Marsh, Hahn Loeser & Parks

Trademark InternetChair: Mark V.B. PartridgeVice Chair: Kristin Jordan Harkins (not pictured)

This Committee held a joint meeting with the Anti-Counterfeiting and Anti-Piracy, Trademark Law, Trademark Litigation, Trademark-Relations with the USPTO.

Trademark LawChair: Amie Peele CarterVice Chair: Kieran G. Doyle

This Committee held a joint meeting with the Anti-Counterfeiting and Anti-Piracy, Trademark Internet, Trademark Litigation, Trademark-Relations with the USPTO.

Trademark LitigationChair: Jennifer L. KovalcikVice Chair: Stephanie Bald

Subcommittees:

Regional Circuit Litigation Standards Chart Trademark Litigation Case Summary Reports


Vision, Mission and ValuesThe Trademark Litigation Committee is dedicated to education, outreach, member service, and advocacy. The Committee strives to provide helpful tools and reports to educate AIPLA members and the public regarding current trademark litigation legal standards and updates. In addition, the Committee participates in program planning for various AIPLA meetings throughout the year. The Committee continues to achieve member collaboration through participation in Committee projects. The Committee continues to seek out and act upon opportunities to provide well-considered and vetted analysis regarding policy and decision-making related to trademark litigation.

AdvocacyThe Committee collaborated with the Patent Litigation Committee and Special Committee on Legislation to prepare a recommendation opposing H.R. 966, The Lawsuit Abuse Reduction Act of 2011, which proposes revisions to Federal Rule of Civil Procedure 11 regarding sanctions. Among the changes, the bill would remove the 21-day cure period and obligate courts to enter sanctions upon any finding of a Rule 11 violation, including a mandatory award of attorneys’ fees. An AIPLA working group comprised of members from the Trademark Litigation Committee, the Patent Litigation Committee and the Committee on Special Legislation prepared a report and recommendation for the AIPLA Board of Directors. The report and recommendation were submitted to Committee members for vote and we received 37 votes in favor and 2 opposed. The report and recommendation were then submitted to the Board and the recommendation was approved. Going forward, the Committee will evaluate the impact of the Supreme Court’s decision in eBay and its effect on injunctive relief as well as trademark infringement remedies for proposed Committee action and/or legislative proposals. We are also preparing research on trade dress cases in consideration of possible legislation to clarify analysis of inherent distinctiveness and functionality.

Public EducationThe Committee implemented an updated litigation tool which displays a map of the US Circuit Courts of Appeal, and provides an online summary by circuit of leading precedent governing core trademark legal issues. In addition, volunteers from the Committee continue to provide case summary reports in advance of each of the three AIPLA stated meetings. Website updates have been and will continue to be made to the Committee webpages. Going forward, we are looking at ways to better leverage the case summary reports in connection with the AIPLA newstand.

Member ServiceThe Committee continues to actively involve its members in projects such as the legal standards map and case

summary reports. To this end, the Committee has appointed member-volunteers as project coordinators, web master, amicus representative, and editor to improve the quality and extent of the Committee’s ongoing projects. We are planning additional Committee projects, including evaluation of the impact of the Supreme Court’s decision in eBay and its effect on injunctive relief as well as trademark infringement remedies for proposed Committee action and/or legislative proposals. Further, we are looking at opportunities to work with other Committees to build outreach and education initiatives and cross-market membership and volunteer opportunities. Finally, we are looking to build membership through community outreach, cross-marketing and the Committee’s website, as well as leveraging case summary contributions for the AIPLA newstand.

Trademark Treaties and International LawChair: Michael M. BallardVice Chair: Jonathan M. Madsen (not pictured)

The Committee held a joint meeting with the Anti-Counterfeiting and Anti-Piracy, Trademark Internet, Trademark Law, Trademark Litigation, Trademark-Relations with the USPTO.


Trademark-Relations with the USPTOChair: Linda K. McLeodVice Chair: Yasmin Tavakoli

The Committee held a joint meeting with the Anti-Counterfeiting and Anti-Piracy, Trademark Internet, Trademark Law, Trademark Litigation, Trademark Treaties and International Law.

USPTO Inter Partes Patent ProceedingsChair: Herbert D. HartVice Chair: Salima A. Merani (not pictured)

Interference practice involves issues of priority, patentability, derivation, and inventorship. This Committee tracks and reports all significant decisions and trends in the US Patent and Trademark Office and the Federal courts bearing on formal and substantive aspects of interference practice. The Committee studies existing issues/problems of formal and substantive interference law and practice as may from time to time come to its attention. Committee members also examine proposed legislation and rule changes relating directly or indirectly to formal and substantive aspects of interference practice and law.


Women in IP LawChair: Alyson G. BarkerVice Chair: Hathaway Russell

This Committee’s mandate is to further and facilitate the practice of intellectual property law by women, including through educational events, networking and mentoring, and the Committee is always looking for volunteers. The Committee meets at each of the three stated meetings, requiring new topics of interest and reporters to prepare a summary of the meeting for publication in the AIPLA Bulletin. It has a virtual book club for which it seeks ideas for books and moderators. The Committee also has established Subcommittees, including a planning Committee for the annual networking dinners held across the United States, which needs regional assistance.



New MembersREGULAR

Brian ArnoldLos Angeles, CA

Keith M. AurzadaDallas, TX

Matthew BacaAustin, TX

Janice BaderCulpeper, VA

Theodore W. BakerSeattle, WA

John C. BarkerAustin, TX

Dwight M. Benner, IIWashington, DC

Michael W. BienSan Francisco, CA

Jeremy R. BridgeRockford, IL

Bradley CaldwellDallas, TX

Soheui ChoeYongin-si, Gyeonggi-do, South Korea

David DalkeLos Angeles, CA

Denise M. De MoryEast Palo Alto, CA

Gerard F. DiebnerNew York, NY

Liem T. DoSan Diego, CA

Matthew J. EvansMarion, IA

Eric T. FingerhutWashington, DC

Ray FreiwirthSan Diego, CA

Sharon M. FujitaRedwood City, CA

Christopher M. GarciaSaint Louis, MO

Kimberly B. HermanBoston, MA

Jay HoetteClayton, MO

Lisa HolthusHouston, TX

Todd IversonReno, NV

Nicolas JampolLos Angeles, CA

Kenyon JenckesSan Diego, CA

Darrell S. JuneauSan Diego, CA

Eric T. KrischkeChicago, IL

Robert G. LancasterSanta Monica, CA

Stephen LarsonIrvine, CA

Amy E. LaValleDallas, TX

Phillip P. LeeSanta Clara, CA

Carol LoeschornWeston, MA

Timothy F. LoomisSan Diego, CA

Chenghua LuoRockville, MD

Karen MagriRaleigh, NC

Andrea MaysSan Diego, CA

Kristen McCallionNew York, NY

Matthew G. McKinneyOrlando, FL

Derek MeekerIndianapolis, IN

Claus D. MelartiPark Ridge, NJ

Yuri MikulkaNewport Beach, CA

Robert MoirFarmington Hills, MI

Larry J. MoskowitzSan Diego, CA

Peter RainvilleGranby, CT

Erin R. RanahanLos Angeles, CA

Steven A. RaneySan Diego, CA

Derek RichmondWashington, DC

John G. RickenbrodeSan Deigo, CA

Mitchell S. RosenfeldSan Francisco, CA

Julie R. RubinBaltimore, MD

Francis G. RushfordCarlsbad, CA

Christian J. ScaliLos Angeles, CA

John SchaubPalo Alto, CA

Steve SchortgenDallas, TX

Jennifer L. ScismArlington, VA

Cheryl ScotneyCincinnati, OH

Sandeep SethHouston, TX

Greer N. ShawLos Angeles, CA

Ira M. SiegelBeverly Hills, CA

Matthew J. StarkAlcoa, TN

Gina M. SteeleSan Francisco, CA

Adam B. StraussKalamazoo, MI

Brian SwientonIrvine, CA

Amir TabarrokSan Jose, CA

Paul TengNew York, NY

Kristin TimmerDallas, TX

The following applications for membership are being published as of March 14, 2012 in accordance with Article II of the By-Laws. We welcome all of our new members.


Robert J. TostiAshland, MA

M. Craig TylerAustin, TX

Emanuel VacchianoBurr Ridge, IL

Tambryn K. VanheyningenMilwaukee, WI

Jaconda WagnerPortland, OR

Jeffrey C.P. WangNewport Beach, CA

Shauna M. WertheimReston, VA

Monica WinghartPalo Alto, CA

James H. YanceySan Diego, CA

Linda S. ZachariahSeattle, WA

ACADEMIC

Stephen J. ConroySan Diego, CA

Charlie ScottNewport News, VA

Charles L. ThomasonColumbus, OH

FOREIGN

Mohammed AbubakarAbuja (FCT), Nigeria

Enrique A. CajigasPanama, Panama

Renato G. CalmaMakati City, Phillipines

Anthony J. ConaghanBrisbane, Australia

Joshua J. DeathMississauga, ON, Canada

Mark B. EisenToronto, ON, Canada

Peter A. ElyjiwToronto, ON, Canada

Christian Gassauer-FleissnerVienna, Austria

Joseph K. GheriafiDubai, United Arab Emirates

Robert IraniCalgary, AB, Canada

Shelton M. JolicoeurVictoria, Seychelles

Jan-Willem LouwaardThe Hague, Netherlands

Jose MadanMumbai, India

Andre MerizziLakefield, ON, Canada

Yehuda NeubauerTel Aviv, Israel

Kristian RobinsonSingapore, Singapore

Rany J. SaderBeirut, Lebanon

Duncan G. StoweRoseau, Dominican Republic

Kevin K. W. TsaiTaipei City, Taiwan

Xuesong YangBeijing, Peoples’ Republic of China

GOVERNMENT

George C. BestAlexandria, VA

James Bruno, Jr.Richmond, VA

David M. KeyzerTexarkana, AR

Julie A. RajzerGrosse Pointe Woods, MI

Amy L. RessingWashington, DC

JUNIOR

Tyson BensonOmaha, NE

Cheri E. BessellieuNew York, NY

Michael J. BrignatiPrinceton, NJ

Judy C. ColonSan Francisco, CA

Kisha L. CheeksChattanooga, TN

Espartaco Diaz HidalgoSan Diego, CA

Michelle EstebanOakland, CA

Jake EwerdtWashington, DC

Catherine FeldmanBoston, MA

Paul FluckeLos Angeles, CA

Mandy T. GarrelsSheboygan, WI

Joel M. GotkinSt. Louis, MO

Nicole M. GratzerMentor, OH

Esther HongNew York, NY

Zachary D. HydeBoston, MA

Sarah JelsemaSalt Lake City, UT

Andrew KopelmanNew York, NY

Jenna LogolusoLos Angeles, CA

William A. M. MansfieldCambridge, MA

Lisa MargonisHouston, TX

Cynthia L. MartinIndianapolis, IN

Donna Denise MashburnLee’s Summit, MO

Luke T. MohrhauserDes Moines, IA

Gary W. NewsonScottsdale, AZ

Andrew NewtonSan Diego, CA

Michael M. Obradovitch, IISeal Beach, CA

James O’HareSan Diego, CA

Rupit PatelSan Diego, CA

Ramya PossettAlexandria, VA

Heather PradoSan Diego, CA

Kevin RepperFairfax, VA


Drew A. RobertsonLos Angeles, CA

Raquel RodriguezChicago, IL

Lev RosenblumSalt Lake City, UT

Jennifer L. SchusterIndianapolis, IN

Jeb A. ShookmanChicago, IL

James M. ShortFayetteville, AR

Bryan L. SkeltonDurham, NC

Kyle D. SmithBoston, MA

M. Daniel SpillmanPeoria, IL

Janice L. TaAustin, TX

Iuliana TanaseNew York, NY

Xiaoyan ZhangNew York, NY

Li ZhuMinneapolis, MN

PATENT AGENT

Mark BornDallas, TX

Paul A. LoomisAustin, TX

PATENT AGENT – JUNIOR

Amitkumar N. DhariaIrving, TX

Krista L. HerndonSummerville, SC

James R. MajorWashington, DC

Lissi MojicaMinneapolis, MN

Arvinder J. SinghFrederick, MD

Ebenesar ThomasSilver Spring, MD

Jeffrey ToHouston, TX

USPTO PROFESSIONAL

Robert M. DeWittyWashington, DC

Chris SponheimerAlexandria, VA

Cheng-Yuan TsengTysons Corner, VA

STUDENT

Kirk AndersonUniversity of Kansas School of LawLawrence, KS

Michael J. BallancoGeorge Mason University School of LawArlington, VA

Bryant Kyle BassSt. Louis University School of LawSt. Louis, MO

Matthew BellCapital University Law SchoolColumbus, OH

Brice L. BigginsGeorge Mason University School of LawAlexandria, VA

Michelle BlevinsUniversity of San Diego School of LawPoway, CA

Albert BoardmanYeshiva University, Benjamin N. Cardozo School of LawBrooklyn, NY

Jasmine C. BoydFranklin Pierce Law CenterConcord, NH

Clifford T. BrazilUniversity of Kansas School of LawLawrence, KS

Whitney BrockusIndiana University School of Law, IndianapolisIndianapolis, IN

Justin BurgessSyracuse University College of LawSyracuse, NY

Stephen BurkeSyracuse University College of LawSyracuse, NY

Michael P. BurnsUniversity of Minnesota Law SchoolFalcon Heights, MN

Jason C. CameronThomas M. Cooley Law SchoolCaledonia, MI

Tylor T. ChoJohn Marshall Law SchoolChicago, IL

Jason DunhamThe Catholic University of America School of LawAlexandria, VA

Christina N. GervasiUniversity of Dayton School of LawDayton, OH

Brendan B. GilmartinBrooklyn Law SchoolBrooklyn, NY

Nathan GlassThomas M. Cooley Law SchoolAnn Arbor, MI

Laura GordonDrexel University School of LawPhiladelphia, PA

Ariel GreenStanford Law SchoolStanford, CA

Cynthia HathawaySouthwestern University School of LawLos Angeles, CA

Nicholas HoefflerValparaiso University School of LawValparaiso, IN

Jun-Jie HongFranklin Pierce Law CenterConcord, NH

Mae HongUniversity of Florida College of LawGainesville, FL

Mary C. HorwathUniversity of Southern CaliforniaLos Angeles, CA

Dang HuhAmerican University Washington College of LawBethesda, MD


Dominic A. IsgroUniversity of Florida College of LawGainesville, FL

Daniel IslerUniversity of Nevada, Las Vegas, William S. Boyd School of LawLas Vegas, NV

Alexandra M. JigaGeorge Washington University National Law CenterWashington, DC

Kate Yoojin JungJohn Marshall Law SchoolChicago, IL

Teri KarobonikSanta Clara University School of LawSanta Clara, CA

Amit KesarFranklin Pierce Law CenterConcord, NH

Dae KimDePaul University College of LawChicago, IL

Zachary KinnairdWest Virginia University College of LawMorgantown, WV

Milissa KirkpatrickUniversity of New Mexico School of LawTrinity, TX

Jonathan KoppellHofstra University School of LawMelville, NY

Edward LebowTemple University School of LawPhiladelphia, PA

Misung LeeFranklin Pierce Law CenterConcord, NH

Robert B. LowerWashington & Lee UniversityLexington, VA

Tiffany M. LozanoHofstra University School of LawBaldwin, NY

Kelly LuGeorge Washington University National Law CenterWashington, DC

Karlo R.LugoYeshiva University, Benjamin N. Cardozo School of LawRego Park, NY

Michelle MaSanta Clara University School of LawSanta Clara, CA

Ramya MalisettyArizona State University College of LawTempe, AZ

Matthew T. MeadeGonzaga University School of LawSpokane, WA

Gregory J. MeditzAmerican University, Washington College of LawWashington, DC

Karl G. MeierLewis and Clark Law SchoolPortland, OR

Ben MohimenSuffolk University Law SchoolNewton, MA

Juliana MonassaUniversity of Washington School of LawKirkland, WA

Chinenye OkaforGeorge Mason University School of LawArlington, VA

Lourdes PerezThomas M. Cooley Law SchoolComstock Park, MI

Tim RawsonPepperdine University School of LawSanta Monica, CA

Lee G. RendeiroOhio Northern University Pettit College of LawFort Wayne, IN

Noelle G. RobinsonNew York Law SchoolWyckoff, NJ

Felipe RubioSt. Thomas University School of LawMiami, FL

Brett RustemeyerThe Catholic University of America School of LawStafford, VA

Anjella ShirkhanlooUniversity of California, Hastings College of the LawSan Francisco, CA

Xhavin SinhaSanta Clara University School of LawSanta Clara, CA

Saliya SubasingheUniversity of Houston Law CenterHouston, TX

Karthik SubramanianThe University of Alabama School of LawArlington, VA

Jeff TaggartThomas Jefferson School of LawSan Diego, CA

Adam J. ThompsonUniversity of Nevada, Las Vegas, William S. Boyd School of LawHenderson, NV

John TotonLoyola Law SchoolLos Angeles, CA

Mark J. VadersWake Forest University School of LawWinston-Salem, NC

Brogan J. WachobStetson University College of LawSarasota, FL

Megan WargackiSeattle University School of LawSeattle, WA

Andrew W. WernerWilliam Mitchell College of LawSt. Paul, MN

Justin H. WilkesCharleston School of LawCharleston, SC

Steven WrightGeorgia State University College of LawRoswell, GA

Bonnie YamaniFlorida Coastal School of LawJacksonville, FL

Heejong YooUniversity of San Diego School of LawSan Diego, CA

C. Sebastian ZonteUniversity of California at Los Angeles School ofLos Angeles, CA


32 • 2011 Spring Meeting • San Francisco, CA

Trim: 7.25”x9.75”

TEL: +92-42-36285588-90, +92-42-37249638-9 FAX: +92-42-36285585-7, +92-42-37323501

Undertaking Intellectual Property Registrations & Enforcement in Gulf, Middle Eastern, South & East Asian

and African Countries through the network of regional offices

Email:

Websites: and

[email protected]

www.utmps.com www.unitedip.com

(Registered) Head Office:

West End Building, 61-The Mall,

Lahore - 54000 PAKISTAN.

(New) Postal & Visiting Address:

(Opposite Ferozesons books store / adjacent rado time center)

85 -The Mall Road, Lahore 54000 Pakistan

DUBAI (UAE)

Postal Address:

P.O. Box. 72430,

Dubai, UAE

Street Address:

Suites 401- 402,

Al-Hawaii Tower,

Sheikh Zayed Road,

Tel: +971-4-3437544

Fax: +971-4-3437546

Email: [email protected]

SHARJAH

Postal Address:

P.O. Box 22880

Sharjah, UAE

(UAE)

Street Address:

Suite 203, Buhaira Building,

Buhaira Corniche (Al-Majaz)

Sharjah, UAE

Tel: +971-6-5722742

Fax: +971-6-5722741


Street Address:

Suite 21, Bldg 232, Block 321,

Old Exhibition Avenue,

Al Hoora, Kingdom of Bahrain.

Tel: +973-1-7710458

Fax: +973-1-7710459


BAHRAIN

Postal address:

P.O. Box 26754

Adliya, Kingdom of Bahrain

Street Address

Al- Thumama Street,

Sulaiyamania, Riyadh,

Saudi Arabia

Tel: +966-1- 4655477+966-1-4653128

Fax: +966-1- 4622134


SAUDI ARABIA

Postal Address:

P.O. Box 15185, Riyadh 11444,

Kingdom of Saudi Arabia

Street Address:

nd

Suite 7, 2 Floor,

Chicago Building, Abdali

Amman, Jordan

Tel: +962-6-5683088

Fax: +962-6-5683089


JORDAN

Postal Address:

P.O. Box 925852

11190 Abdali, Amman, Jordan

Street Address:

th rd

4 Floor, 3 Entrance,

Bin Jaham Al Kuwari Complex,

Al Saad Street, Doha, Qatar

Tel: +974-4443083, 4443093

Fax: +974-4447311


QATAR

Postal Address:

P.O. Box 23896,

Doha, Qatar

LEBANON

Postal Address:

P.O. Box 11-7078,

Beirut - Lebanon

Street Address:

6th Floor, Burj Al Ghazal,

Tabaris

Beirut - Lebanon

Tel : +961-1-215373

Fax : +961-1-215374


OMAN

Postal Address:

P.O. Box 3441 Ruwi, Postal Code 112,

Muscat, Sultanate of Oman

Street Address:

th

Suite No. 702, 7 Floor,

Oman Commercial Centre,

Ruwi, Muscat, Sultanate of Oman

Tel: +968-2-478 7555, +968-2-470 4788

Fax: +968-2-479 4447


UNITED TRADEMARK

& PATENT SERVICES

Trademark,

registration, litigation & enforcement services

Patent, Design, Copyright, Domain name

International Intellectual Property Attorneys

Your reliable partners for property

in

Pakistan, South East Asia, Arabian Gulf, Middle East & Africa

intellectual matters

AIPLA 2012 Mid-Winter eBulletin

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Transcript of AIPLA 2012 Mid-Winter eBulletin