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AMERICAN BAR ASSOCIATION
SECTION OF INTELLECTUAL PROPERTY LAW
INFORMATIONAL REPORT TO THE HOUSE OF DELEGATES
This Association year has seen robust activity in all areas of the ABA Section of Intellectual Property Law (ABA-IPL). ABA-IPL stands as a leading voice for the development and improvement of intellectual property law and in shaping laws that profoundly affect commerce, law and society. The Section continues to serve its diverse membership by offering expert content, education and practice information and by fulfilling its goals for the profession.
The Section’s volunteer entities are the engines for the Section’s work and products. Substantive committees in seven divisions provide analyses of statutes, regulations, current litigation and proposed legislation for recommended advocacy. All members have the opportunity to participate at the committee level in developing Section policy. Reasoned and balanced commentary enables ABA-IPL to provide policy recommendations on federal legislation and to speak on important legal issues before the federal agencies that deal with issues of intellectual property law.
ADVOCACY
During this past year, the Section was active in providing numerous comments to various government agencies on intellectual property law and related issues.
· In August, the Section requested renewal of blanket authority to submit to Congress views previously approved by blanket authority on three issues relating to copyright law reform. The House Judiciary Committee is considering a wide range of possible reforms to U.S. copyright law, and invited the Section to meet with Committee staff to present and discuss its recommendations for legislative reform.
· In October, the Section sent a letter to Senators Grassley and Leahy, the Chair and Ranking Member of the U.S. Senate Judiciary Committee, and also to Representatives Goodlatte and Conyers, Chair and Ranking Member of the U.S. House Judiciary Committee, supporting enactment of the “Defend Trade Secrets Act of 2015.”
· Also in October, the Section provided comments to the White House, Intellectual Property Enforcement Coordinator, regarding development of the 2016 Joint Strategic Plan on Intellectual Property Enforcement.
· Also in October, the Section provided comments to the Director of the U.S. Patent and Trademark Office (USPTO) on the Section 101 eligibility update, welcoming the opportunity to continue to work with the Office in identifying patent-eligible subject matter. While these comments focused on the eligibility update, the Section noted that it was working in parallel to develop recommendations on what, if anything, Congress should do to clarify the law on patent eligibility.
· Also in October, the Section sent a letter to President Obama, outlining the copyright qualification considerations in the search for a new Librarian of Congress.
· Also in October, the Section provided comments to the USPTO Patent Trial and Appeal Board on trial proceedings under the America Invents Act before the Patent Trial and Appeal Board.
· In November, the Section provided comments to the International Trade Commission on proposed rulemaking.
· Also in November, the Section provided comments to the USPTO Patent Trial and Appeal Board on its proposed pilot program exploring an alternative approach to institution decisions in post grant administrative reviews.
· Also in November, the Section provided comments to the USPTO Trademark Office on proposed trademark fee increases, generally supporting the USPTO on its proposed fee schedule but noting concerns on the proposed level of the fees.
· In December, the Section provided comments to the U.S. Court of Appeals for the Federal Circuit on the proposed amendments to the Federal Circuit Rules of Procedure.
· Also in December, the Section provided comments to the USPTO, Trademark Office, on proposed revisions to the Nice Class Headings.
· Also in December, the Section provided comments to the USPTO, Commissioner for Trademarks, concerning the proposed changes to Standard Protective Order of the Trademark Trial and Appeal Board.
· In February, the Section provided comments to the Chair and Ranking Member, House Judiciary Committee on Copyright Law Reform, advocating Copyright Office independence, adequate resources for the Copyright Office, establishment of a small claims copyright court, and particulars of proposed orphan works legislation.
· Also in February, the Section provided comments to the Chair and Ranking Member, House Subcommittee on the Courts, Intellectual Property Law and the Internet on H. R. 1057, the “Promoting Automotive Repair, Trade, and Sales Act of 2015” or “PARTS Act, generally opposing the act. The Section favors treating patent rights equally regardless of the area of technology to which those rights apply. The Section expressed its desireto work with Congress to address the concerns.
· Also in February, the Section provided suggested case study topics to the U.S. Patent and Trademark Office for its new pilot program as part of its Enhanced Patent Quality Initiative.
· In March, the Section provided comments to the U.S. Secretary of Commerce and the Director of the USPTO to express concerns relative to the USPTO’s consideration of the Department of Commerce’s proposed shared services initiative as it related to human resources, information technology, and procurement functions. Particularly, the Section noted that the America Invents Act required that all fees collected by the USPTO be used for the expenses of the USPTO. The Section strongly opposes diversion of USPTO user fees to entities outside of the USPTO.
· Also in March, the Section sent comments to the U.S. Register of Copyrights in response to an inquiry concerning information technology upgrades for a twenty-first century Copyright Office, expressing support for modernization and increasing efficiency.
· In April, the Section sent a letter to the Chair and Ranking Member of the U.S. House Judiciary Committee expressing its support for the enactment of H.R. 4241, the “Copyright Office for the Digital Economy Act” or “CODE Act, noting that the act would bring necessary and positive change to the copyright system, allowing greater flexibility in addressing concerns of the copyright community.
· In May, the Section sent a letter to the U.S. Customs and Border Protection agency supporting renewal of the extension of its existing collection of information relating to the recordation and enforcement of trademarks and copyrights.
· Also in May, the Section sent comments to the Director of the USPTO on improving patent quality measurement, encouraging the USPTO to include a mechanism for evaluating the overall quality of the examination as well as accessibility to the examiner, and also encouraging the USPTO to quantify and publicize certain objective measures of quality, as well as survey data.
· In June, The Section sent a letter to the U.S. Commissioner for Trademarks concerning proposed changes to the Trademark Trial and Appeal Board’s Rules of Practice. The Section expressed some concerns regarding specific rule changes, but largely supported the proposed changes.
The Section serves as a leader in offering amicus counsel in key IP law cases— continually monitoring Court decisions to be ready to recommend that the ABA file a brief, and to follow with coordination and cooperation to assist the ABA Amicus Committee in preparing the brief.
· In June, the Section submitted an application to the ABA Amicus Committee recommending that the American Bar Association to file an amicus brief in the United States Supreme Court in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC. The brief, in support of the petitioner, would support interpretation and application of the statutory six-year patent damages period (35 U.S.C. § 286) as limiting availability of the judicially created laches defense as a bar to legal damages for patent infringement.
The Section was again active this year in matters of international and global IP law. Our liaisons to international groups and organizations helped foster relationships and expand the global reach of our views.
· In August, the Section joined with the Sections of Antitrust Law and International Law to provide comments on the Canadian Competition Bureau’s Draft Updated Intellectual Property Enforcement Guidelines.
· In October, the Section joined with the Sections of Antitrust Law, International Law and Science & Technology Law to transmit comments to China’s National Development and Reform Commission on IP misuse antitrust guidelines.
· In October, Section Legislative Consultant Thomas Stoll represented the Section at a meeting between officials from the Japan Patent Office (JPO) and representatives of major U.S. IP organizations in Washington, DC to discuss JPO's new quality initiatives.
· Also in October, Philip Swain represented the Section at the Seventh Global Network Summit in Rio de Janeiro. The Global Network of National IP Practitioner Associations is a collective of a number of nations’ IP associations around the globe which communicate and collaborate on information related to IP law.
· In November, the Section joined again with the Sections of Antitrust Law, International Law and Science & Technology Law to provide comments to the Korea Fair Trade Commission regarding possible revisions to its Review Guidelines on Unfair Exercise of Intellectual Property Rights.
· In December, Fred Koenig represented the Section in a Symposium of the SIPO/US Bar Liaison Council with China’s State Intellectual Property Office (SIPO), at U.S. Patent and Trademark Office headquarters in Alexandria, Virginia.
· In January, the Section joined with the Sections of Antitrust Law, International Law and Science & Technology Law to provide comments again the Korea Fair Trade Commission, regarding its proposed amendments to the Review Guidelines on Unfair Exercise of Intellectual Property Rights.
· In February, the Section once again joined with the Sections of Antitrust Law, International Law and Science & Technology Law to send comments to China’s National Development and Reform Commission on the Anti-Monopoly Guidelines on Intellectual Property Abuse.
· In April, the Section again joined with the Sections of Antitrust Law, International Law and Science and Technology Law to submit comments to the government of India, Department of Industrial Policy and Promotion of the Ministry of Commerce & Industry on its “Discussion Paper on Standard Essential Patents and their Availability on FRAND Terms.” In the letter, the Sections respectfully suggested a careful approach to any legislation addressing breaches of fair, reasonable, and non-discriminatory (“FRAND”) terms and conditions. The letter noted that standards play an important role in the economy and have a long history, and that there is a strong relationship between standards development and patents.
· In May, the Section joined with the Section of International Law to send a letter to the Canadian government addressing amendments made by Bill C-31 to the use requirements of the Canadian Trade-marks Act. The Sections expressed a concern about the amendments, and stated that the amendments relating to use should be repealed or not brought into force.
· Also in May, Section Chair Theodore Davis traveled to Ottawa to represent the Section at the 2016 Federal Courts Judges’ Dinner of the Canadian Bar Association National IP Section.
Notable Additional Activities
· In August, the Section co-sponsored with the Section of Administrative Law the 10th Annual Homeland Security Law Institute in Washington, DC.
· In September, the Section co-hosted with the USPTO “Trademark Day: Behind the Scenes at the USPTO.”
· In October, The Section co-sponsored with the Section of Antitrust Law the Antitrust Intellectual Property Conference at Stanford University.
· In December Lisa Dunner and Erik Pelton participated in the TM5 User Group Meeting at the U.S. Patent and Trademark Office. The TM5 User Group is a partnership of the five largest trademark offices in the world, including the Japan Patent Office, the Korean Intellectual Property Office, the European Union Intellectual Property Office, the Trademark Office of the Peoples Republic of China, and the U.S. Patent and Trademark Office. They periodically gather to exchange information on trademark related matters and discuss harmonization of their practices. The ABA-IPL Section is invited along with other major IP organizations to participate.
· In December, Tracy Durkin participated in the ID5 Users Group Meeting at the U.S. Patent and Trademark Office. The ID5 User Group is the partnership of the five largest intellectual property offices in the world, as noted above in the TM5 User Group information, and they discuss issues of industrial design intellectual property rights.
· The Section cosponsored the Law Education Institute Conference in January in Colorado, sponsored by the Colorado Bar Association, and also cosponsored the Colorado Bar Association’s Rocky Mountain IP Institute in June.
· In March, the Section co-sponsored with the Section of Science & Technology law the Internet of Things (IoT) National Institute in Washington, DC.
· In March, Jonathan Hudis participated in a stakeholder forum of the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office.
· In March, Jonathan Hudis and Rebeccah Gan participated in a meeting of the Trademark Users Group in Washington, DC. The group is composed of trademark experts representing the major IP organizations in the nation.
· In April, Section Chair-Elect Donna Suchy represented the Section at the Section of International Law’s Spring Meeting in New York.
· In May, Section Chair-Elect Donna Suchy participated in a Patent Eligible Subject Matter Task Force meeting hosted by the American Intellectual Property Law Association in Minneapolis.
· In April 2016, for the 10th year in a row, the Section co-sponsored USPTO Design Day with the USPTO and several other IP organizations. Design Day is the annual conference for design patent practitioners and design examiners, held at USPTO headquarters in Alexandria, Virginia.
· In May, a delegation of Section representatives, including Section Chair Theodore Davis, Section Legislative Consultant Thomas Stoll, Donika Pentcheva, and Thomas Franklin, met with U.S. Patent and Trademark Office Director Michelle Lee, to discuss a variety of patent issues.
MEMBERSHIP
The Section’s Membership Board, under the leadership of the Membership Officer, continued to develop the Section’s commitment to serving its members.
· The Section’s Diversity Action Group continues to advance the goals of the Section diversity plan. Networking events were held at the Spring Conference and Annual Meeting revolving around diversity as the Section continues its commitment to ABA Goal III for increasing diversity in the profession. In addition to Liaisons to all the ABA Diversity Commissions, the Section has appointed a Liaison to the National LGBT Bar.