AIPLA 2013 Mid-Winter Institute eBulletin

BULLETINAmerican Intellectual Property Law Association

2013 Mid-Winter InstituteTampa, FL

AIPLA

2 aipla bulletin 2013 mid-winter institute issue

2013 mid-winter institute issue aipla bulletin 3

in this issue...

President’s Report ...........................................................................................................................................6Board of Directors Meeting Dates .....................................................................................................................5Copyright Office Affairs ......................................................................................................................................8Future Industry Events ....................................................................................................................................11Thank You 2013 Mid-Winter Institute Sponsors ...........................................................................................12Member News ...............................................................................................................................................13

AIPLA Strategic Plan .......................................................................................................................................21New Members .................................................................................................................................................58

Committee Reports:

Alternative Dispute Resolution .............................. 22Amicus ................................................................... 22Anti-Counterfeiting and Anti-Piracy ........................ 23Antitrust Law ......................................................... 23Biotechnology ....................................................... 24Chemical Practice ................................................. 26Copyright Law ....................................................... 27Corporate Practice ................................................. 27Diversity in IP Law ................................................. 28Education ............................................................... 28Electronic and Computer Law .............................. 28Emerging Technologies ......................................... 31Fellows ............................................................... 31Food and Drug ....................................................... 32Industrial Designs ................................................. 32International and Foreign Law ............................... 33International Education .......................................... 34International Trade Commission ............................ 35IP Law Associations ............................................... 35IP Practice in China .............................................. 36IP Practice in Europe ............................................. 37IP Practice in the Far East ..................................... 37IP Practice in Japan ............................................... 37IP Practice in Latin America .................................. 38Law Practice Management .................................... 39Law Students ......................................................... 41Licensing and Management of IP Assets .............. 41Membership ........................................................... 42Mentoring ............................................................... 42

Mergers and Acquisitions ..................................... 43New Lawyers ........................................................ 44Online Programs .................................................... 46Patent Agents ....................................................... 47Patent Cooperation Treaty Issues ........................ 48Patent Law ............................................................. 48Patent Litigation ..................................................... 50Patent-Relations with the USPTO ......................... 50Professional Programs ......................................... 51Professionalism and Ethics ................................... 51Public Appointments .............................................. 51Public Education .................................................... 52Special Committee on IP Practice in Israel 53Special Committee on Legislation ......................... 53Special Committee on Standards and Open Source ......................................................... 54Trade Secret Law ................................................. 54Trademark Internet ................................................ 54Trademark Law ...................................................... 54Trademark Litigation .............................................. 55Trademark Treaties and International Law ............ 55Trademark-Relations with the USPTO ................. 56USPTO Inter Partes Patent Proceedings .............. 56Women in IP Law .................................................. 57

Published from the Association Office

Photo Credits (unless otherwise noted): Richard Burgess

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Bulletin

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

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

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

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

Board of Directors

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

President-ElectWayne P. Sobon Inventergy19925 Stevens Creek Boulevard, Suite 100Cupertino, CA 95014

First Vice PresidentSharon A. IsraelMayer Brown LLP700 Louisiana Street, Ste. 3400Houston, TX 77002-2730

Second Vice PresidentDenise W. DeFrancoFinnegan Henderson FarabowGarrett & Dunner, LLP55 Cambridge Parkway, Suite 700Cambridge, MA 02142-1215

Immediate Past PresidentWilliam G. Barber PirkeyBarber, LLP600 Congress Avenue, Suite 2120Austin, TX 78701

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

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

Officers

term expires october 2013


BulletinBarbara A. Fiacco Foley Hoag LLPSeaport West155 Seaport BoulevardBoston, MA 02210-2600

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

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

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

term expires october 2015W. Todd Baker Oblon Spivak McClelland Maier and Nuestadt, LLP1940 Duke StreetAlexandria, VA 22314

Bradley A. ForrestSchwegman Lundberg &Woessner, PATCF Building121 South 8th Street, Suite 1600Minneapolis, MN 55402

Amie Peele CarterFaegre Baker Daniels, LLPSuite 2700300 N. Meridian StreetIndianapolis, IN 46204

Kevin H. Rhodes3M Innovative Properties Company3M CenterPO Box 33428St. Paul, MN 55133-3428

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 2014

Board of Directors Meeting Dates & LocationsJuly 17, Washington, DC

September 9, Greenich, CT

October 24, Washington, DC

October 26, Washington, DC


One of the many interesting things about being President of AIPLA is the opportunity I have to meet with delegations from around the world, often in their countries. Since I assumed office in October, I have met with government officials, judges, bar association leaders, and attorneys from more than 20 countries. (A number of these meetings are described in the “President’s Blog” I have been writing this year). I am occasionally asked, however, “Why should AIPLA have these meetings?” There are a number of answers to that question, and I want to focus on a few of them for this column.

AIPLA is, of course, the AMERICAN Intellectual Property Law Association—although we have many members in other countries. Accordingly, members often are first and foremost interested in American issues, but it also is true that a large number of American issues overlap with international concerns. Every US patent holder must at some point consider whether they want to file for protection in other countries. For instance, many of our members work for or represent multi-national entities, or at least ones that have business relationships in other countries, and so the international protection of intellectual property is a very important American interest too. The cost of obtaining patent protection in a large number of countries worldwide is often prohibitive, and AIPLA is working diligently with Offices and other industry groups to streamline that process in order to reduce the costs, and the time it takes. Once they obtain patent protection abroad, US IP owners must deal with the complexity of enforcing their rights in multiple countries around the world. Whether dealing with counterfeiting, addressing internet-related infringement, or trying to streamline prosecution (and thereby cut costs), our members and their clients benefit from these international discussions.

Many discussions this year have centered on harmonization and globalization for prosecution. For instance, AIPLA is an active participant in the Industry IP5 meetings (the IP5 is comprised of the Chinese, European, Japanese, Korean, and US patent offices), and IP5 is working on a project called “Global Dossier.” This will be a one-stop portal allowing patent applicants to enter information only once (such as references and certified priority documents), which then can be shared by all patent offices using machine translations, if needed, rather than individual translations. Additionally,

the examiners at each patent office can communicate with each other through a secure network. (More information including the timetable for launching the service can be found on the USPTO’s website.) Needless to say, if patent offices adopt the Global Dossier it will save significant prosecution costs. While all of the major Offices have been highly receptive to this idea, they still need the encouragement and guidance of users and their representatives to make the system practical and efficient. AIPLA delegations have met with them to encourage this project on behalf of our members. By doing so, we have already been able to work through a significant number of the difficulties, and hopefully members will reap those benefits.

Another important issue is the international erosion of attorney-client privilege—one that I am keenly sensitive to as a litigator. The confidentiality of client communications is being limited particularly for patent agents (we call them “patent agents” in the US, but often they are called “patent attorneys” in other countries); even the outline for a European Unitary Patent Court severely limits the protection of confidential communications. For that reason my international meetings have sought support for an international colloquium of government officials that AIPLA is co-hosting this summer on the issue. In many countries this is viewed as simply an “American” issue, but in reality it is an international concern and patent owners throughout the world are worried about their confidential communications. That is why AIPLA is co-sponsoring this colloquium for representatives from many countries including the US government. Hopefully, this will help generate an international standard for protecting confidences.

AIPLA provides the US face for its members and the US IP Community in the international community of users and rights holders. We attend sister organization meetings around the world, and host visits of leaders and government delegations at our Stated Meetings, and bilaterally at AIPLA HQ. AIPLA leaders attend international negotiations at WIPO and other organizations, including the current Diplomatic Conference on the adoption of a treaty to deal with access to copyrighted works for the visually impaired. While the US position is

President’s Reportby: Jeffrey I.D. Lewis, AIPLA President


amply defended by USPTO and USTR, among other agencies, the voice of the IP user community is invaluable in these negotiations, which often result in treaties that modify US law, and AIPLA provides that US voice.”

AIPLA also is concerned with professional growth and education. The association is a leading provider of legal education, and AIPLA conducts legal education seminars around the world in cooperation with local bar associations. Recent international education programs included such varied topics as the America Invents Act, European Unitary Court, multi-party infringement, “FRAND” licenses, non-traditional trademarks, software copyrights, and comparative trade secret issues.

I’d like to make one other point about these trips. AIPLA is committed to diversity and making the IP profession a better place for everyone to work. It consistently has put resources behind this goal. For instance, AIPLA helped create the American Intellectual Property Law Education Foundation, an organization that provides law school scholarships for minority candidates who express interest in intellectual property, and AIPLA has sponsored US-based events supporting women practicing intellectual property law for many years Last year AIPLA started a Japanese Women in IP program, which

continues again this year during the IP Practice in Japan Committee trip. The Women in IP Japan program brings together women judges and IP professionals to share their personal stories of overcoming gender-based discrimination and to help each other meet those challenges. I cannot be prouder of AIPLA for its work on this project, and its many efforts to support diversity throughout the world.

As for my personal meetings during these trips and get-togethers, the list of subjects addressed is truly endless. In addition to the ones mentioned above, it has varied from Cuban IP privatization to proposed Chinese legislation requiring that all inventors receive a portion of patent licenses/sales and from international design protection to ITC boarder enforcement. Fundamentally, however, AIPLA’s members benefit from the intentional discussions and the relationships that are built from personal contacts with government officials and IP professionals in other countries. I will continue to write more about these trips in my President’s Blog, (www.managingip.com/Blog.html) hosted by Managing IP Magazine, so I hope you will continue reading.


The US Copyright Office continues to make progress toward the goals announced in Priorities and Special Projects of the United States Copyright Office 2011–2013, available at www.copyright.gov/docs/priorities.pdf. In that document, Maria A. Pallante, Register of Copyrights and Director of the US Copyright Office, outlined the Office’s priorities in copyright policy and administrative practice and described 10 special projects to improve the quality and efficiency of the Office’s services in the 21st century. Important dialogues with stakeholders from the technical and legal communities are informing all the projects. As the projects conclude over the next several months, findings and recommendations generated by staff will inform the Register’s new five-year strategic plan to commence in October 2013.

Register Appoints Senior ManagersThe Register named David J. Christopher to the position of Chief of Operations of the Copyright Office, effective December 17, 2012. On January 30, 2013, the Register announced the appointment of Karyn Temple Claggett to the position of Associate Register of Copyrights and Director of Policy and International Affairs. In the coming weeks, the Register will announce additional senior appointments, including the Associate Register of Copyrights and Director of Registration Policy and Practices as well as the General Counsel and Associate Register of Copyrights.

Christopher assumed his new duties following 18 months as the Chief of the Office’s Information and Records Division, where he managed the Public Information Office and the publications and document recordation functions and commenced several of the Register’s ongoing special projects, including the digitization of millions of historic copyright records and overhaul of the processes for publicly recording and searching copyright titles, assignments, and licenses. Christopher joined the Copyright Office in 2006 as Special Assistant to the Register.

As Chief of Operations, Christopher will supervise the day-to-day operations of the Copyright Office, including financial controls, budget, human capital, statutory royalty investments, mandatory deposit and acquisitions, and contracts and strategic planning functions. He will work closely with senior managers in technology, registration, policy, and the greater Library of Congress as the Office concludes the work plan described in Priorities and Special Projects of the United States Copyright Office 2011–2013 and begins to

implement new initiatives and direction, including for records search, repositories, and fee adjustments. His first assignment will be to oversee a strategic reorganization of the Copyright Office to better align the business functions with business needs and better manage resources.

Christopher holds a bachelor’s degree in philosophy from the University of Tennessee and a master’s degree in international commerce and policy from George Mason University. He is also a graduate of the Harvard Kennedy School Executive Education Program and was selected as a Presidential Management Fellow by the Library of Congress in 2005.

Read more about Christopher at www.copyright.gov/docs/david_christopher.html.

Temple Claggett served most recently as Senior Counsel for Policy and International Affairs where, since March 2011, she has worked on a wide array of the Office’s policy and international initiatives, including legal solutions for users of orphan works, institutions engaged in mass digitization, and persons who require accommodations because of print disabilities. She was a member of the US delegation to Beijing in June 2012, where member states of the World Intellectual Property Organization concluded a treaty for the protection of audiovisual performances.

In her new role, Temple Claggett is a key member of the Register’s senior team and a top advisor on domestic and international copyright issues. She will work closely with congressional offices, represent the Copyright Office and US government in international delegations, oversee studies and reports, assist with legislative analysis and negotiations, and engage both public- and private-sector stakeholders. She will supervise the policy and international affairs legal staff.

Immediately prior to joining the Copyright Office, Temple Claggett served as senior counsel to the deputy attorney general of the United States, where she assisted with the formulation of Department of Justice policy on intellectual property and other legal issues and helped manage the department’s Task Force on Intellectual Property. She was also an attorney for the Recording Industry Association of America and an associate with the Washington law firm Williams and Connolly, LLP. She began her legal career as a law clerk to the Honorable Nathaniel R. Jones of the US Court of Appeals for the Sixth Circuit, after which she

Copyright Office Affairsby: Wendi A. Maloney & Judith Nierman

US Copyright Office Affairs


joined the US Department of Justice’s Civil Division through its prestigious Honors Program.

Temple Claggett earned her law degree from Columbia Law School, where she was a Harlan Fisk Stone Scholar, senior editor of the Columbia Law Review, and chair of the Columbia Black Law Students Association. She also holds a bachelor’s degree in English from the University of Michigan.

Read more about Temple Claggett at www.copyright.gov/docs/karyn_claggett.html.

Office Pursues Policy InitiativesThe Office is working on numerous issues on the policy front, including section 108 reform, orphan works, small copyright claims, resale royalty rights, and international matters.

The Office cohosted a public symposium on February 8 with the Kernochan Center for Law, Media and the Arts at Columbia Law School on reform of section 108 of the copyright law (copyright exceptions for libraries and archives). Speakers discussed legal issues related to the preservation and digitization activities of libraries, as well as appropriate standards for securing and making available copyrighted works. Maria Pallante spoke, along with Jane Ginsburg of Columbia University, Shira Perlmutter of the US Patent and Trademark Office, and others. For more details, go to www.copyright.gov/docs/section108.

Legal solutions for users of orphan works (that is, copyrighted works for which the authors cannot be identified or located) has long been a focus of the Copyright Office. Through the Federal Register, the Office is now seeking comments on relevant issues, and policy staff are working with stakeholders and members of Congress on possible measures to resolve the problem. Later this year the Office expects to sponsor public discussions on orphan works. For more details, go to www.copyright.gov/orphan.

At the request of Congress, the Office is preparing a comprehensive study of possible small claims solutions for copyright owners who cannot afford to file traditional lawsuits because of the relatively small value of their claims. Last fall, the Office hosted public hearings on the small claims study at Columbia Law School and the UCLA School of Law. For details, go to www.copyright.gov/docs/smallclaims.

Also at the request of Congress, the Office is considering so-called resale royalty issues—that is, whether certain visual artists should be given an opportunity to benefit from the increased value of their works over time by receiving a royalty from the proceeds when their original works of art are resold. The Office is reviewing public comments it has received and relevant international developments to assess how a federal resale royalty right in the United States might affect visual artists and the overall art market. For details, go to www.copyright.gov/docs/resaleroyalty.

Internationally, the Office is assisting with issues related to ratifying and implementing in US law a World Intellectual Property Organization (WIPO) treaty on audiovisual performances

concluded last year. The Office also continues to support efforts at WIPO to develop an instrument to facilitate the cross border exchange of accessible works for the blind and visually impaired, and it will continue in 2013 to serve on international delegations to negotiate the Trans-Pacific Partnership trade agreement.

Special Projects ProceedAmong the Office’s ongoing special projects, the Office is pursuing a comprehensive evaluation of its technical processing platforms, reengineering of its document recordation function, a major update to the Compendium of Copyright Office Practices, enhanced accessibility to the Office’s historical records, and public outreach and copyright education.

The Office’s technical upgrades team has been meeting with stakeholders and other interested parties to learn more about the universe of technical options available to upgrade the Office’s electronic systems, including systems for copyright registration and recordation. The team will seek additional public participation in the coming months.

Regarding document recordation, a recordation reengineering team has hosted numerous meetings with stakeholders across the copyright community.

A team updating the Compendium of Copyright Office Practices is now drafting revised chapters to accommodate new forms of authorship, update existing practices, and develop new practices as appropriate to meet the needs of the 21st-century copyright community. Following a public review process, the new Compendium will be released in fall 2013.

The Office continues to move forward with a multiyear effort to digitize the entire inventory of copyright records for works registered between 1870 and 1977. It has imaged more than 23 million cards out of a total of 40 million. The Office is now exploring how best to make the records available to the public online, a complex challenge. It recently launched a prototype records database.

In support of its role as an authoritative source of information about copyright law and policy, the Office is identifying ways to reach audiences who want help understanding general legal principles and registration practices. It has pursued academic partnerships through cosponsored roundtables and symposia, including those noted above on section 108 reform, the Office’s study of small copyright claims, and orphan works. Within the Copyright Office, the Register has launched a rigorous staff education program called the Copyright Academy, which consists of a series of classroom lectures covering copyright law, policy, and practice. To date, over 80 employees from all parts of the Office have participated.

Read more about the Office’s special projects in an update the Register prepared last fall at www.copyright.gov/docs/priorities_oneyear.pdf.


Office Provides Option for Electronic Filing of Section 115 NoticesThe Copyright Office amended its regulations in January to provide an option for electronic filing of notices of intention to obtain a section 115 compulsory license to make and distribute phonorecords. By law, such notices can be filed with the Office only when the Office’s public records do not identify the copyright owner of a musical work or include an address at which notice can be served.

The amended regulation also clarifies the rules for filing physical notices of intention, clarifies that the Office does not examine notices of intention for legal sufficiency, and includes a Privacy Act advisory statement regarding notices of intention.

Although the amended regulation provides the legal basis for electronic filing, the electronic filing option has not yet been publicly launched because it is still undergoing testing. For more information and notice of an ongoing pilot program for electronic filing, go to www.copyright.gov/fedreg/2012/77fr71101.pdf.

Creative Artists Speak at Copyright Matters Lecture SeriesThe Register launched the Copyright Matters lecture series in 2011 to highlight the practical implications of copyright law and educate Copyright Office staff. The lectures take place at the Library of Congress and are free and open to the public.

Oscar®- and Grammy®-winning songwriter Paul Williams recounted on September 10 how copyright had allowed him to make a living and performed some of his famous songs. Williams also spoke as president and board chair of the American Society of Composers, Authors, and Publishers (ASCAP), whose papers reside in the Music Division of the Library of Congress.

Williams thanked the Register and the Copyright Office staff for supporting the copyright community. He said he worries that digital piracy will prevent young songwriters from being able to support themselves as he did. He told the audience, which included visitors from other government agencies, Congress, and ASCAP, that he will continue to work with the music and tech industries to find a solution.

Scott Turow, Robert K. Massie, and other writers spoke on December 11 about the history and future of the professional author. Hosted by the Copyright Office and cosponsored by the Library’s Center for the Book, the event marked the 100th anniversary of the Authors Guild, which advocates on behalf of writers’ interests.

Turow is president of the Guild and author of The Burden of Proof, Presumed Innocent, and other best-selling legal thrillers. He described the future of the literary scene as “clouded,” pointing to mergers among publishers, a decline in independent bookstores, and the domination of the online book market by a single retailer. He said such developments limit outlets for authors and curtail the diversity of literary culture. Projects to digitize copyrighted books and make them available online without compensating authors also harm writers, he said, as would proposals by some libraries to make their ebook holdings available to a nationwide audience.

But he said rampant book piracy is the “greatest threat of all.” Everyone loses when authors can’t afford to pursue their craft, he said, because new voices and ideas advance democracy.

For more information about Copyright Matters, go to www.copyright.gov/copyrightmatters.html.

Register Moderates Copyright Panel at International Book SummitThe Register moderated “Copyright and the Book: A Conversation about Authors, Publishers, and the Public Interest” on December 7 at the 2012 International Summit of the Book, hosted by the Library of Congress.

“Authors and publishers are part of the public interest, not in competition with it,” the Register stated in introducing the panel.

Peter Jaszi, professor of copyright law at American University, examined how the first-sale doctrine in copyright law has historically supported public access to books. He said the rise of electronic publishing is raising questions about how first sale applies in the digital age.

Tom Allen, president of the Association of American Publishers, described the digital publishing environment as an “ecosystem” that must balance the needs of readers with incentives for authors and publishers to bring new books to the market. Stating that copyright law still applies when content is digital, he said a “frenemy” relationship has developed between publishers and the technology sector over digital content.

James Shapiro of Columbia University, who is vice president of the Authors Guild and an academic author, called the outlook for today’s professional author “grim.” He said that although he values and often relies on copyright fair use in his own work, fair use cannot be the only means of access to copyrighted works.The 2012 International Book Summit, held on December 6 and 7, inaugurated an annual global gathering to promote the book as a crucial format for conveying scholarship and culture worldwide. The National Library Board of Singapore will host the event in 2013.For more details about the Book Summit, go to www.loc.gov/today/pr/2012/12-193.html.


June 19-22ECTA Thirty-second Annual Conference JW Marriott Grand Hotel, Bucharest, RomaniaFull details are available at www.ecta.org/events

June 20AIPLA Chemical Patent Practice Road ShowWilmington, DE

June 23-26ACPC Summer Meeting, Ashville, NC

June 26-28AIPLA/FICPI/AIPPI Joint Colloquium on Prividege, Paris France

July 22-23AIPLA Patent Cooperation Treaty (PCT) SeminarMinneapolis, MN

July 25-26AIPLA Patent Cooperation Treaty (PCT) SeminarAlexandria, VA

August 8-13ABA Annual Meeting, San Francisco, CA

August 18-20ABPI Annual Meeting, Rio de Janeiro, Brazil

August 22-23AIPLA Practical Patent Prosecution Training for New LawyersAlexandria, VA

August 27AIPLA Electronic and Computer Patent Law SummitSilicon Valley, CA

September 15-17IPO Annual Meeting, Boston, MA

September 22-25LES US-Canada Annual Meeting, Philadelphia, PA

October 2-5FICPI’s 14th Open Forum, Sorrento, Italy (www.ficpi.org)

October 19-22APAA Annual Meeting, Hanoi, Vietnam

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

December 1-4ASIPI Annual Meeting, Punta Cana, Dominican Republic

December 2-3AIPLA Legal Secretaries & Administrators’ Conference Alexandria, VA

January 26-29ACPC Winter Meeting, Phoenix, AZ

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

February 5-11ABA Midyear Meeting, Chicago, IL

February 20-22AUTM Annual Meeting, San Francisco, CA May 7-9IACC Annual Spring Conference,Hong Kong, China

May 10-14INTA Annual Meeting, Hong Kong, China

May 15-17AIPLA Spring Meeting, Philadelphia, PA

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

June 18-20ECTA Annual Meeting, Alicantem, Spain

August 7-12ABA Annual Meeting, Boston, MA

September 7-9IPO Annual Meeting

September 14-18AIPPI World Congress, Toronto, Canada

October 5-8LES US- Canada Annual Meeting, San Francisco, CA

October 23–25AIPLA Annual Meeting, Marriott Wardman Park, Washington, DC

November 1-7FICPI Open Forum, Barcelona, Spain

Future Industry Events

2014

2013


Thank You to Our AIPLA 2013 Mid-Winter Institute Sponsors

Saliwanchik Lloyd & Eisenschenk Sponsor: General Meeting Sponsor

McAndrews Held & Malloy, LTD Sponsor: Tournament Golf Balls

Morrison & Foerster LLPCo-Sponsor: Thursday Dinner and Entertainment

Borden Ladner Gervais LLP

Carter, DeLuca, Farrell & Schmidt LLP

Drinker Biddle & Reath LLP

Fildes & Outland PC

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Fish & Richardson PC

Greenblum & Bernstein PLC

Morrison & Foerster LLP

Nutter McClennen & Fish LLP

Orrick, Herrington & Sutcliffe LLP

Pepper Hamilton LLP

Reimann Osterrieth Kohler Haft

Smart & Biggar/Featherton

Sughrue Mion PLLC

Pearl

BronzeCarlton FieldsSponsor: Friday Lunch Reception

Dimock Stratton LLPSponsor: General Meeting Sponsor

Finnegan, Henderson, Farabow, Garrett & Dunner, LLPSponsor: Thursday PM Break

Fitzpatrick, Cella, Harper, ScintoPartial Sponsor: Thursday Dinner & Entertainment

Goldstein Law Offices, P.C.Co-Sponsor: Corporate Practice Committee Breakfast

Intellectual Property Insurance Services CorporationSponsor: Cyber Café

Mayer BrownCo-Sponsor: Opening Night Reception

Merchant & Gould P.C.Co-Sponsor: Opening Night Reception

Marks & Clerk LLPSponsor: Saturday Plenary Session

OCEAN TOMO, LLCSponsor: Thursday Morning Session

Patterson Belknap Webb & Tyler LLPSponsor: Thursday Lunch Reception

Robins, Kaplan, Miller & Ciresi L.L.P.Co-Sponsor: Corporate Practice Committee Breakfast

Schwegman Lundberg & Woessner, PASponsor: Wednesday New Member/First-Time Attendee Reception

CrystalJamisonSponsor: Meeting Signage

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

IP in Japan Pre-Meeting Sponsors:


Thank You to Our AIPLA 2013 Mid-Winter Institute Sponsors

Saliwanchik Lloyd & Eisenschenk Sponsor: General Meeting Sponsor

McAndrews Held & Malloy, LTD Sponsor: Tournament Golf Balls

Morrison & Foerster LLPCo-Sponsor: Thursday Dinner and Entertainment

Borden Ladner Gervais LLP

Carter, DeLuca, Farrell & Schmidt LLP

Drinker Biddle & Reath LLP

Fildes & Outland PC

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Fish & Richardson PC

Greenblum & Bernstein PLC

Morrison & Foerster LLP

Nutter McClennen & Fish LLP

Orrick, Herrington & Sutcliffe LLP

Pepper Hamilton LLP

Reimann Osterrieth Kohler Haft

Smart & Biggar/Featherton

Sughrue Mion PLLC

Member NewsNew PositionsBetts Patterson & Mines, PS (BPM) has significantly expanded its intellectual property capability with the addition of two patent attorneys to its Intellectual Property Practice Group. Pam Kohli Jacobson, a former partner at Christensen O’Connor Johnson & Kindness, and her colleague, Mary Atkinson, join Betts Patterson & Mines bringing an IP practice that includes patent and trademark prosecution, litigation, patentability and freedom-to-practice opinions, intellectual property due diligence, intellectual property licensing, agreements and Trademark Trial and Appeal Board proceedings.The addition of these attorneys emphasizes BPM’s commitment to strategic growth in all aspects of its intellectual property practice. “Pam Jacobson and Mary Atkinson are top patent attorneys who will increase our IP capabilities and allow us to help clients protect their innovations and intellectual assets throughout the United States and globally,” said Managing Shareholder, Lawrence Gottlieb. “Their patent and trademark practice is a perfect fit for our existing IP litigation practice, which already includes three BPM shareholders, John Braislin, James Nelson and Christopher Tompkins.” Pam Jacobson is a patent attorney with a broad intellectual property background which includes licensing, patent prosecution, trademark prosecution and Trademark Trial and Appeal Board proceedings. She draws upon her experience in each of these areas to tactically grow, develop and monetize her clients’ intellectual property portfolios. Prior to law school, Jacobson worked as a research scientist at the University of Chicago and at Honeywell International.Mary Atkinson focuses her practice on assisting and counseling clients in obtaining, protecting, and leveraging intellectual property in the chemical and biotechnology arts. Her technical experiences includes 10 years as a research scientist at the University of Washington in the areas of genetics and molecular biology. In addition to patent preparation and prosecution, Atkinson assists clients in intellectual property due diligence, technology licensing agreements, and infringement, validity, and freedom-to-practice opinions.

Atkinson also provides legal advice and support to life sciences clients in the areas of pre-clinical and clinical drug development. She has extensive experience in drafting and negotiating a variety of agreements associated with the conduct of clinical trials world-wide, such as research collaboration agreements with universities, manufacturing and supply agreements, material transfer agreements, clinical trial agreements with contract research organizations and institutions, indemnification agreements, and informed patient consent. Atkinson has both law-firm and in-house experience, having served as in-house counsel for Sonus Pharmaceuticals, a small biotech company, for five years. Prior to law school she was a research scientist, University of Washington, Department of Pathology from 1989 to 1999.

RatnerPrestia is proud to announce that Keith E. George has joined its Washington, D.C. office as Shareholder, where he will focus his practice on patent matters, including patent prosecution, client counseling, and due diligence analysis on issues of patentability, validity, and infringement. Mr. George has over 34 years of patent prosecution experience and his background covers a diversity of high technology areas, including wireless and landline digital networks, free-space and fiber based optical communications, video encoding and transport protocols, and optical electrical transducers, to name a few. Mr. George is admitted to practice in the District of Columbia, Virginia, and before the U.S. Patent and Trademark Office. He earned his Bachelor of Science degree in Electrical Engineering from George Washington University, followed by earning his Juris Doctorate degree from their Law School. Mr. George is an active member of the American Intellectual Property Law Association.

In MemoriamBernarr Roe Pravel (Bill), 1983 President of AIPLA, passed away on April 28 in Houston, TX. Bill worked as a patent examiner at the US Patent & Trademark Office while in law school at George Washington University. He was a partner with Hayden & Pravel, and was the senior founding member of Pravel, Gambrell, Hewitt, Kimball & Krieger. He retired from full-time practice after working with Akin, Gump, Strauss, Hauer

& Feld. He was the author of numerous articles on patent law and held many leadership position in addition to AIPLA President: Chairman, Patent, Trademark & Copyright Section of the ABA; Chairman, National Council of Patent Law Association; Chairman, Patent, Trademark & Copyright Section of the State Bar of Texas; Director, State Bar Board of Texas; First Vice President, Houston Bar Association and President, Houston Intellectual Property Law Association. He is survived by four children, seven grand children and 11 great-grandchildren.

Do you have news to share? Send it our way! [email protected]


2013 Mid-Winter Institute

Leadership

AIPLA

Q. Todd Dickinson – Executive Director

Chen Wang – Program Chair

Wayne Sobon – President-Elect & Officer in Charge

Jeffrey I.D. Lewis – President

Ashok K. Mannava – Program Vice-Chair


Distinguished Speakers


Opening Night Reception – “The Ultimate Football Tailgate Party”

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


Thursday Night Dinner & Entertainment“Havana Nights”

AIPLA would like to thank the sponsors of the Thursday Night Dinner & Entertainment:


AIPLA would like to thank the sponsors of the Corporate Practice Breakfast:

Corporate Practice Breakfast


Women in IP Law Breakfast

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


Saturday Golf Awards

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: J. William Frank IIIVice Chair: Suzanne K. Nusbaum

Vision, Mission & ValuesThe mission of the Committee is to perform chosen activities in a manner that comports with AIPLA’s values in order to implement AIPLA’s mission and, thus, fulfill AIPLA’s vision.

Public EducationThe Committee has not performed activities directed solely to public education regarding the “daily value” of IP, rather it has focused on education relating to the use of ADR in IP cases. The Committee will continue the successful Forum telephone programs throughout the year on topics of interest to the Alternative Dispute Resolution community. The first Forum call was held on December 13, 2012. At least one additional Forum call will be held this year. In addition, we are joining with the Anti trust and FDA Committees for a non-CLE Committee program at the Spring Meeting. We will work on developing a topic for a Committee CLE at the Annual Meeting. Lastly, the Committee will work on a free standing CLE program relating to Alternative Dispute Resolution. It is possible that this program may be developed in cooperation with International Institute of Conflict Prevention & Resolution in New York. As part of this program, the committee will also look at the structure and viability of the AIPLA ADR Panel. Harrie Samaras (Immediate Past Chair) and Bill Frank (Incoming Chair) were the coordinators for a plenary session at the Mid-Winter Institute entitled: Why Can’t We All Get Along? Why Don’t They Think Like I Do? This unique program and format was very well attended and received very good reviews.

Member ServiceThe Committee provides member services through its CLE programs and maintaining relevant and current content on its website. We will be continuing our Forum phone calls. As noted above, the first Forum call was held on December 13 on the Court of Appeals for the Federal Circuit Mediation

program.

Global OutreachThe Committee will continue to monitor changes in procedural rules of international ADR providers and in document exchange rules/guidelines relating to international arbitration. The Committee is considering developing a CLE program to discuss such changes and the practical implications for conducting international arbitrations. This may be accomplished by engaging international arbitration practitioners and representatives from international ADR providers. We have already announced such changes to Committee members through email and provided links to the new rules on the Committee’s microsite. The next Forum call will have an aspect of International Alternative Dispute Resolution Practice.

Subcommittees: Website- Greg Whitehair – Subcommittee Chair

AmicusChair: Jerry R. SelingerVice Chair: Guy Donatiello (not pictured)

Vision, Mission & ValuesThe Committee’s overall mission is to scrutinize judicial and administrative decisions which involve significant issues of law or practice which affect intellectual property, and make recommendations to the Board of Directors that amicus briefs be filed (or not filed) in appropriate circumstances. The Committee’s overall mission involves its own due diligence, as well as responding to requests from party advocates, members of substantive Committees, and the Board. The Committee also makes recommendations to the Board as to brief drafters, and members often volunteer their services pro bono.

Committee Reports Mid-Winter InstituteJanuary 30–February 2

The Committees were asked to align their reports with the goals in the AIPLA Strategic Plan. (See page 21 for the Strategic Plan.)


Advocacy As set forth above, much of the Committee’s work relates to advocacy and member services. The Committee routinely seeks input from whichever substantive Committees might have interest in a judicial or administrative decision, including but not limited to the Patent Law Committee, the Patent Litigation Committee, the Copyright Law Committee, the Trademark Law Committee, the Antitrust Law Committee, the Chemical Practice Committee, the Electronic and Computer Law Committee, the Biotech Committee, and the Trademark Litigation Committee.

Member ServiceAmicus briefs originating from internal Committee discussion are circulated to other IP associations by one of our sister Committees. In addition, the amicus briefs are posted on the AIPLA website.

SUBCOMMITTEES: None

Anti-Counterfeiting and Anti-PiracyChair: Crystal Gothard (not pictured)Vice Chair: Toni Y. Hickey

The AIPLA Anti-Counterfeiting and Anti-Piracy Committee assists AIPLA by being a leader regarding counterfeiting and piracy issues. The Committee serves its members by sharing information and facilitating participation. In addition, the Committee: a) consider laws, rules, regulations and judicial decisions, both domestic and foreign, specific to counterfeiting, piracy, goods hijacking, and the like, to the extent they affect the issues within the United States; b) works with the other Committees concerned with these issues; and c) studies problems and issues in domestic and international practice of formal and substantive law that impacts upon the foregoing.

AdvocacyMonitoring the latest counterfeiting and piracy legislative proposals and proposing public comments where appropriate.

Member ServiceAssisted the Programs Committee with finding speakers for the 2013 Spring Meeting piracy track.

Participating in a joint program/Committee meeting with the Law Student Committee during the 2013 Spring Meeting.

Antitrust LawChair: Kenneth M. FrankelVice Chair: Geoffrey D. Oliver

Vision, Mission & Values The Committee seeks to promote the balance between intellectual property rights and competition laws and policies, thereby fostering innovation and competition; to keep our members informed of developments in the intersections between IP and competition laws and policies; to provide input to the AIPLA Amicus Committee and Board on IP/competition issues arising in the courts, government agencies, and legislature; and to actively involve as many of our members as possible in the Committee’s efforts.

AdvocacyThe Committee often works with the Amicus Committee and Board to develop and draft positions for amicus briefs and legislative initiatives in the IP/competition area, and with the Standards and Open Source Committee to provide input to the Board on IP-standards issues. Currently, the Committee is working with the: (1) Food and Drug Committee to provide input to the Amicus Committee and Board on expected Supreme Court review of court decisions involving antitrust implications of settlements of ANDA pharmaceutical infringement lawsuits; (2) IP in China Committee to provide comments on China’s proposed antitrust enforcement guidelines; and (3) IP in China Committee and the Standards and Open Source Committee in organizing a program for the 2013 Spring Meeting.

Member Service At the Annual Meeting, the Committee presented a program on whether injunctive relief should be available in connection with standards-essential patents.

The Committee’s subcommittees focus on three important topics at the intersection of IP and competition law—pharmaceuticals, standards, and IP acquisitions and licensing—and began periodic telephone conference calls


in which members of our subcommittees share important developments in their focus areas with members of the Committee as a whole. Members interested in the subcommittees should contact the subcommittee chairs listed above.

The Committee publishes a newsletter for which its members contribute articles on IP/competition issues at the time of each AIPLA meeting and distributes it electronically to our members. The newsletter provides a forum for our members to express their views and educate our members about current topics in the IP/competition area. Members interested in writing articles should contact our newsletter editor David Swenson.

Global Outreach The Committee presents programs on international IP/competition issues, and encourages members outside the United States to provide newsletter articles about IP/competition developments in their countries or areas of the world. In addition, the Committee currently is assisting in developing comments on China’s proposed antitrust enforcement guidelines.

Subcommitees Pharmaceuticals: Paul Ragusa, Subcommittee Chair

Standards: Richard Stark, Subcommittee Chair

IP Acquisitions & Licensing: Geoffrey Oliver, Subcommittee Chair

Newsletter Editor: David Swenson

BiotechnologyChair: James J. KelleyVice Chair: Carol M. Nielsen

AIPLA’s 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 a 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.

Public EducationWhite Paper on IP Issues Relating to Personalized Medicine Completed. Our Diagnostics and Gene Patenting Subcommittee completed a white paper on IP Issues Relating to Personalized Medicine. The paper is divided into three sections: Discussion on the Prometheus v. Mayo Decision, including USPTO guidelines and a focus on how the holding may impact bioinfomatics IP; Discussion on Myriad decision; and Discussion on Confirmatory Genetic Testing, including aspects of regulatory and legislative activity in diagnostics that may impact IP for genetic testing used in personalized medicine. The white paper will aid advocacy and education efforts.

Member ServicePROGRAMSMid-Winter Institute, 2013 – 3 Hours of CLE

The Biotech Committee partnered with the Chemical Practice Committee to plan 3 hours of CLE in two panels for Thursday afternoon during the MWI in Tampa, Florida.

Obtaining Value from IP in Personalized Medicine

Lawyers from a very diverse spectrum of entities involved in personalized medicine and diagnostics provided views about the value of IP for the development of new products and services. Judy A. Roesler of the Roesler Law Offices, PLLC moderated the panel, which consisted of Manny Vacchiano, Lead Patent Counsel, Life Technologies; Yuko Soneoka, Senior Corporate Counsel IP, Genome Health, Inc.; Robert L. Sharp from Eli Lilly and Company; Natalie Wright Curley, Managing Director of the Office of Technology Commercialization, MD Anderson Cancer Center; and Jarett Rieger, Director and Associate General Counsel of the Office of Technology Mgmt & Commercialization, Moffitt Cancer Center and Research Institute. About 90 people attended this session. In preparation for this program, the Diagnostics and Gene Patenting Subcommittee prepared a white paper titled “IP Value for Personalized Medicine” with contributions from Judy Roesler, Ling Zhang, Lynn Tyler, and Karen Canady. Two authors from Eli Lilly and Company, Mark Stewart and Robert Sharp, provided another paper titled “IP Considerations Associated with Companion Diagnostic Discovery and Development.”

Aligning IP Strategies with Business Objectives Up and Down the Supply Chain

In-house lawyers along a supply chain provided views about the value of IP for their businesses and how they modify their IP and licensing strategies depending on their place in the


chain. The panelists were Richard Phillips, Chief Attorney Technology, ExxonMobil Chemical; Patrick Bengtsson, VP, Assoc. GC, IP, The Clorox Company; Valerie L. Calloway, Chief IP Counsel, Polymer Group, Inc.; and Nancy M. Klembus, Assistant General Counsel, Kimberly-Clark, Corp. Carol Nielsen of Nielsen IP Law, Houston TX moderated the panel. The panelists addressed questions, such as: How does a company’s position in a supply chain affect IP strategies? How do companies that are suppliers and customers adjust their approaches to IP acquisition and licensing in light of business relationships? How do companies use IP to obtain value in the marketplace even when their businesses might not be thought of as innovative? The session was also well-attended and a dynamic interchange with the audience occurred.

BIOTECH BUZZThe Committee’s monthly newsletter, Biotech Buzz, continued to be provided to all members – every month.

CASE LAW REPORTSVirtually every month, members provide reviews of recent pertinent cases, mostly in the US, but also from around the world. Cases reviewed in the period were:

• Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60 (Nov. 8, 2012) (invalidating Pfizer’s Canadian patent covering Viagra™ for lacking a sufficient disclosure).

• Bayer CropScience AG v. Dow AgroSciences LLC, Case No. 10-1045 (D.N.J. Sep. 27, 2012) (granting summary judgment of non-infringement to Dow in view of claim construction of functional term and analyzing written description).

• ButamaxTM Advanced Biofuels LLC, et al. v. E.I. Dupont de Nemours & Co., Case No. 2012–1490 (Fed. Cir. Nov. 16, 2012) (affirming denial of preliminary injunction for patent related to biofuels because defendant raised a substantial question of validity).

• Petition to the Secretary of Health and Human Services to “March In” Against the Ritonavir Patents, (Oct. 25, 2012) (PIRG petition the U.S. government to exercise its “march in” rights and force Abbott to grant a compulsory license to AIDS drug).

• PerkinElmer, Inc. v. Intema, Ltd., Case No. 2011-1577 (Fed. Cir. Nov. 20, 2012) (holding claims to method of diagnosing Down’s syndrome invalid under 35 U.S.C. §101 as not being directed to patentable subject matter).

• Bowman v. Monsanto Co., et al., Brief for the United States as Amicus Curiae Supporting Affirmance, No. 11-796 (U.S. Sup. Crt.) (whether a patentee’s rights are exhausted as to subsequent generations of seeds after patented seeds have been purchased in an authorized sale for planting).

Global OutreachMonthly Biotech Buzz Reports. Virtually every issue of the monthly Biotech Buzz Committee newsletter provides reports from our International Issues subcommittee. Members have contributed the following reports:

• Oh Canada! – So Promising, So Invalid

• CJEU Rules Against AstraZeneca in Abuse of Dominant Position Appeal (SPCs and Anti-Competition Law)

• Brüstle v. Greenpeace, German Federal Supreme Court, 27 November 2012, Case no. X ZR 58/07 (Neural Precursor Cell Patent Partially Invalidated).

• Patentability of Plant Biotechnology Inventions in Argentina

SubcommitteesProgram DevelopmentTim Meigs, Chair, Meetings

Lynn Tyler, Chair, Webinars

Biotech BuzzDan Lev, Editor

Noel Courage, International Editor

Case Law UpdatesMelanie Szweras, Chair

Nicholas Landau, Vice Chair

USPTO RelationsSuzannah Sundby, Co-Chair

Julie Meigs, Co-Chair

MicrositeWilliam Childs, Chair

International IssuesAnne Marie Verschuur, Chair

Qin Shi, Vice-chair, Far East, China, Japan, India

Rafael Pastor, Vice Chair, Latin America

Rene Raggers, Vice-Chair, Europe

Noel Courage, Vice Chair, Commonwealth

Global AdvocacyJim Kelley, Chair

Carol Nielsen, Vice-Chair

Biotech Patent EducationKaren Canady, Chair


Diagnostic and Gene PatentingLing Zhong, Co-Chair

Judy Roesler, 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 2013 have examined areas unique to chemical patent practice, and explored technical and legal issues from a chemical practitioner’s perspective. Our most recent program was held jointly with the Biotechnology Committee and involved two CLE programs. The first program examined IP Considerations for Personalized Medicine with panelists from Genomic Health (Yuko Soneoka), MD Anderson (Natalie Wright), Life Technologies (Manny Vacchiano) and Moffitt Cancer Center (Jarett Rieger). The second program examined Alignment of IP and Business Strategies Up and Down the Supply Chain with panelists from Polymer Group, Inc. (Valerie Calloway), Kimberly-Clark (Nancy Klembus), The Clorox Company (Pat Bengtsson) and ExxonMobil (Richard Phillips). Both panels were very well-received!

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 web page.

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 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. We are in full planning mode for a Road Show in June 2013, to be held in Wilmington, Delaware. Mary Jo Boldingh is guiding that effort, and the local support has been excellent.

For 2013, we turn some of our attention to planning for 2014 and beyond, with our Spring Meeting set as a Committee Meeting to develop our Subcommittees who will help guide our future efforts.

We continue to put together webinar programs with William Childs leading that effort and promoting available webinars through communications with our Committee members. We hope to provide a new program this year, that will focus on the complications of current USPTO restriction practice. We are hoping to find willing participants during this year’s Committee meeting for putting together still other webinars that might touch on the impact the AIA changes have had on chemical patent practice.

Member ServiceIn 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 Vice Chair: Stefan Mentzer

No business to report at this time.

Corporate PracticeChair: David P. RuschkeVice Chair: Valerie Calloway

Vision, Mission and ValuesThe overall mission of the Corporate Practice Committee is to serve the particular needs of the corporate IP professional segment of the AIPLA membership, a segment which historically has been underrepresented and perhaps underserved.

AdvocacyThe Corporate Practice Committee is educating its membership with respect to important IP issues of the day, in particular, implementation of the AIA by the March 16, 2013 deadline. At the Committee’s monthly brown bag lunch teleconferences, we have engaged various professionals in the corporate world from Motorola (Randi Karpinia), 3M (Melissa Buss, Greg Allen), and GE (Michael Gnibus) to present to the entire membership efforts by those companies to strategically implement AIA internally. Also, the Committee is planning to hold a roundtable discussion at the March brown bag lunch teleconference where the membership as a whole will be able to ask questions of

each other as to implementation strategies. In this way, the Committee is supporting advocacy issues through a better informed membership.

Public EducationThe Corporate Practice Committee is forming a Subcommittee to hopefully implement in-person local events, so that corporate IP professionals can gather together in various geographies around the country and participate in the Monthly Brown Bag Lunch Teleconferences face-to-face. In that way, we hope to foster more direct personal contact among AIPLA corporate members, as well as reach out to corporate non-AIPLA members in those local geographies to educate as well as encourage involvement in AIPLA.

Member ServiceAs noted above under advocacy, the Committee holds monthly brown bag lunch teleconferences to educate its membership. Also as noted above under Public Education, the Committee hopes to establish local events to facilitate regional/local networking. Finally, he Committee holds a breakfast meeting at each stated meeting exclusively for corporate AIPLA members to encourage networking and discussion of issues directly related to in-house counsel IP practitioners. The breakfast meeting at the Mid-Winter Institute was well-attended (approximately 75 persons). Corporate non-lawyer practitioners were the panelists at the meeting and it focused on the relationship between the in-house attorney and their corporate clients.

Global OutreachThe Corporate Practice Committee’s membership is open to all corporate members of AIPLA, irrespective of geography. However, the vast majority of the Committee’s members, and in particular, the leadership, is US-based. In addition, to date, the Committee’s educational efforts have been focused on the AIA. That said, as we plan our monthly brown bag lunch teleconferences, the Committee will endeavor to include Outside the US issues as potential discussion topics, including, for example, the efforts in Europe to create a unified patent system and burgeoning patent systems (e.g., Far East).

Subcommittees: Breakfast Meeting Midwinter 2013 (Randi Karpinia); Breakfast Meeting Spring 2013 (Paul Fair, Tim Hove, Sheila Akirad); Breakfast Meeting Annual 2013 (tbd); Monthly Brown Bag Lunch Teleconferences (David, Valerie); Local Event In Person Corporate Get-Togethers (tbd); Implementation of Survey Results (David)


Diversity in IP LawChair: Shayne E. O’ReillyVice Chair: Wilson L. White (not pictured)


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

Vision, Mission and ValuesThe mission of this Committee is to support the AIPLA Patent Boot Camp, to support the educational missions of AIPLA.

Public Education The Committee coordinates the Practical Patent Prosecution Training for New Lawyers (known as the “Patent boot camp”) usually scheduled for the late summer/early fall. The Committee also seeks to provide educational opportunities to all attorneys and agents.

Member Service The Law Professor Subcommittee provides a platform for present and future full-time and adjunct IP law professors to discuss resources available to IP law professors, best practices, techniques to get involved in teaching, and other issues of interest.

Global Outreach The Committee often holds joint meetings with the New Lawyers Committee.

Subcommittees

We have created a LinkedIn® Group for law professors and adjunct faculty. AIPLA has advertised through its emails the formation of this Subcommittee to attract law faculty as new members and we, using resources from the New Lawyers Committee, are assisting to identify intellectual property law faculty throughout the US so that emails can be sent giving notice of this Committee. If you are interested to share ideas and connect with fellow IP professors on our LinkedIn® page, please send an email to Myra H. McCormack at [email protected] and Ehab Samuel at [email protected].

Electronic and Computer LawChair: James D. HallenbeckVice Chair: Michael P. Dunnam

Vision, Mission and ValuesThe ECLC has the mission of considering 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 cooperate with the AIPLA Board of Directors with recommendations and as requested in such matters. As detailed below, the ECLC has fulfilled this mission quite substantially through the work of the Committee, through collaboration with the USPTO on various projects and open communication, and including practitioners in the leadership of our Committee from several diverse countries.

The ECLC 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 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, seminars of the ECLC seminar series are typically offered free of charge 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 ECLC has partnered with the Young Lawyers, Women in IP Law, Diversity, Patent Law,


Patent Litigation, and Corporate Committees to continue building Committee relationships, cohesiveness in the AIPLA community, and to encourage participation by all AIPLA members in the activities and leadership of our Committee.

AdvocacyThe ECLC continues to monitor major case law and legislation. The ECLC will advise AIPLA and request AIPLA participation as relevant issues arise, particularly as to the scope of patentable subject matter. In the recent past, the ECLC twice surveyed our Committee 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 were used as background in forming AIPLA amicus briefs, to which the ECLC contributed by drafting, editing, and/or organizing. The ECLC also created a helpful compilation of decisions subsequent to the CAFC’s Bilski decision. Most recently, the ECLC 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 “Trademark’s Next Generation.”

Public EducationThe ECLC 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. In particular, a Webinar on Interview Practice was being planned for February 2013 in partnership with the Patent Law Committee and the USPTO.

The ECLC will continue the annual Partnering in Patents program hosted jointly with the USPTO. Planning for the 20th Annual program will begin later this spring.

The ECLC will continue to maintain its long standing dialog with group directors in technology centers corresponding to electronics and computer-related inventions. We also have our annual teleconference scheduled for later this spring.

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

Member ServiceThe ECLC will continue to procure track and Committee sessions at upcoming major meetings.

At the 2013 Spring Meeting, the ECLC is currently planning a joint session with the Patent Law Committee. The topics have not been fully decided yet, although the program will include a discussion of parallel activities of prosecution while litigation is pending.

New this year for the ECLC is the addition of a Newsletter Subcommittee. The purpose of this Subcommittee is to provide informational updates to the ECLC membership regarding past and upcoming events, requests for input and participation, and an outlet for the membership to provide short articles with regard to issues of interest to practitioners from the US and other jurisdictions. Through the newsletter, it is hoped the large ECLC membership will be more informed and become more engaged in Committee activities. The publication is electronic and accessible from the ECLC portion of the AIPLA website. The first edition of the newsletter is slated for January 2013.

The ECLC, through the efforts of two recent Committee chairs Brad Forrest and Manny Schecter, 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. A recent AIPLA webinar presented highlights of the data received thus far and was an update from a track session at the 2009 Annual Meeting, for which Brad Forrest and Manny Schecter received the AIPLA President’s Award.

The ECLC 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 current list of Subcommittees is set forth on the following page.

Global Outreach

At recent AIPLA meetings, the ECLC has partnered with the IP Practice in Japan, Europe, Latin America, and Far East Committees in presenting joint Committee sessions. These sessions have included speakers not only from the US, but also from the relevant jurisdictions of the other Committees. The ECLC 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. Members of the ECLC have also participated in webinars organized by the International Education Committee for attorneys outside of the US. Additionally, ECLC Subcommittees include leaders from outside the US and in-house attorneys from non-US entities.

Subcommittees TSC Subcommittee

Liaison to Young Lawyers

Chair: Frank Bruno

Coordinates interactions between ECLC and Young Lawyers


Liaison to Women in IP Law and Diversity Committees

Chair: Bea Koempel-Thomas

Coordinates interactions between ECLC and Women Lawyers, Diversity Committees

Liaison to Corporate Practice Committee

Chair: Valentina Boyet

Coordinates interactions between ECLC and Corporate Practice Committee

Copyright Subcommittee

Chair: David Einhorn

Addresses issues related to securing copyright protection for computer software. Liaison with the Copyright Committee. Also, makes or coordinates at least one presentation during a webinar as coordinated by the Webinar Subcommittee.

International Affairs Subcommittee

Chairs: Ed Round, Jennifer Jannuska

Tracks changes in the laws of other countries and informs the committee of these changes. Also, makes or coordinates at least one presentation during a webinar as coordinated by the Webinar Subcommittee.

Patents, Legislative Affairs, and Advocacy Subcommittee

Chairs: Lance Reich, David Swenson, Jeff Ranck, Robert O’Connell, Justin Dillon, Eamon Wall

Track pending legislation, particularly concerning the patenting of electronic and computer technologies. Monitor judicial matters and pending cases, rulemaking, and corporate issues, especially emerging issues. Interfaces with PTO Relations Subcommittee and other AIPLA committees as needed (e.g., Amicus, Copyright, Patent Law, Patent Litigation, Patent-Relations with the USPTO, Special Committee on IP Legislation, Public Education). Identify law review articles and other media of interest to the ECLC and generate responses, in coordination with the larger AIPLA community, as determined necessary. Coordinate a presentation periodically throughout the year during webinars as arranged by the Webinar Subcommittee.

PTO Relations Subcommittee

Chairs: Lynn Anderson, Mike Stein

Organizes the Partnering in Patents seminar, the annual Brown Bag lunch meetings with TC directors, and manages our committee’s efforts to provide technical training to PTO examiners.

Licensing, Transactions, and Monetization Subcommittee

Chairs: Wenjie Li Ernie Beffel

Addresses issues concerning licensing, transaction, and

monetization of electronic and computer technologies. Also, makes or coordinates at least one presentation during a webinar as coordinated by the Webinar Subcommittee.

Professional Programs Subcommittee

Chairs: John Salazar, Michael Drapkin, Tim Christman

Responsible for the educational programs presented by the ECLC during stated meetings.

Webinars Subcommittee

Chairs: Steve Lundberg, Thiery Lo

Responsible for on-line education programs presented by the ECLC. Partner with the other subcommittees to develop content.

Road Show/IP Summit Subcommittee

Chairs: Michael Drapkin

Responsible for travelling education programs presented by ECLC

Technology and Business Subcommittee

Chairs: Sandy Godsey, Randy Canis

Addresses the advancement of technology, research, and development in business related computing with a focus on business methods and Covered Business Methods under the AIA. Also, makes or coordinates at least one presentation during a webinar as coordinated by the Webinar Subcommittee.

ECLC Website Subcommittee

Chair: Steve Weed

Maintains ECLC website and dissemination of information to the membership.

Electronic and Computer Patent Prosecution Subcommittee

Chairs: Tim Bianchi, Scott Stinebruner

Holds periodic electronic round table meetings to discuss current patent prosecution issues. This will likely include at least one webinar per year with the cooperation of the Webinar Subcommittee.

Newsletter Subcommittee

Chairs: Scott Higdon, Francisco Castro, Per Larsen, Paul Schramm

Gathers updates from the Chair, Vice-Chair, and sub-committee chairs to inform the membership on Committee activities and upcoming events/activities and request and receive articles from the Committee membership.

2013 Mid-Winter Institute Subcommittee – Ad hoc

Chairs: Brian Batzli, Bradley Forrest


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


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

AIPLA’s bylaws provide for a special category of membership called the Fellows of the Association. Fellows may from time to time be requested by the Board of Directors to undertake projects, including those of a scholarly, educational, research or informational nature. The Fellows support Association objectives, principles and Committee missions and activities, and may submit proposed initiatives to be undertaken by the Fellows to the Board for approval, with any resulting studies, papers and proposals being submitted to the Board for its consideration and disposition.

In support of the Association’s strategic goals, and its vision, mission, and values relating to advocacy, public education, member service, and global outreach, Fellows are working on and discussing a number of projects and issues.

The Fellows met in Tampa on February 2, 2013.

Public Education – Fellows will be called upon to participate in World IP Day (April 26) by assisting the Public Education Committee, which would welcome Fellows as presenter at events around the country. Sal Anastasi, Chair of the Public Education Committee, summarized the plan for World IP Day. Several Fellows volunteered on the spot and others will likely contact him.

Fellows Committee on Leadership Development – Special Board Project (Don Martens, Bill LaFuze, Alan Kasper, Roger Parkhurst)Under the able leadership of Don Martens and his co-chairs, the Fellows Committee on Leadership Development submitted a report to the AIPLA Board of Directors on January 3, 2013. Additional Committee members are: Elizabeth Burke, Vince Garlock, Richard Goldstein, Troy Grabow, Myra McCormack, Freddie Park, Andrew Stein, Rex Stern, and John Wiedemann.

In Don Martens’ absence, Bill LaFuze briefly summarized the Committee’s report to the Board. The Board plans to implement the Committee’s first round of suggestions at the 2013 Annual Meeting with the AIPLA staff to work out some of the details of implementation. Alan Kasper also offered comments. It was noted that this was a first step in an ongoing effort, and that several Committee members spent a great deal of time developing and analyzing the very extensive survey that led to the report and recommendations.

Pro Bono (Bill LaFuze)Bill reported that certain issues that are still open for resolution could possibly interfere with the project.

AIPLA Website Learning Center (Brad Forrest)Brad reported that his group’s review and comment on this section of the AIPLA website was part of an ongoing Board review of the overall education and outreach functions of the website. One suggestion was that AIPLA needs to figure out the three most common reasons people visit the site and create some big buttons on the website to help them accomplish their objectives more easily. They also indicated a need for better search capabilities for materials, such as multiple indices that people could access for materials. The indices should include author, subject, meeting/CLE, where presented, etc.

Onsite mentoringSheldon reported on his positive experiences mentoring new member attendees at both this Mid-Winter Institute and last year’s Spring Meeting in Austin, and encouraged other Fellows to participate.

Community Service Opportunity at Spring Meeting (Rex Stratton)Sheldon reported that Rex volunteered to investigate a possible activity at an area food bank. The activity would be open to all attendees, not just Fellows. Subsequent to the meeting, Patrick Coyne volunteered to assist Rex.


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


Industrial DesignsChair: Garfield GoodrumVice Chair: Margaret Polson

Vision, Mission and ValuesThe Mission of the Industrial Designs Committee is stated succinctly on our Committee web page: Sec. 1. This committee shall: (a) Consider design patent, trade dress and copyright laws, rules, regulations and judicial decisions applicable to the protection of industrial designs. (b) Consider new legislation pertaining to the protection of industrial designs. (c) Consider ways to strengthen the predictability and enforceability of industrial design rights. (d) Establish a liaison with the US Patent and Trademark Office and Copyright Office to identify and solve problem areas encountered during prosecution of applications to register and/or patent industrial designs. (e) Report to the Board of Directors recommendations in regard thereto.

AdvocacyDuring the last quarter, the Committee has been very active in advocacy. At the 2012 Spring Meeting in Austin, it became clear that the Committee needed to renew its work on advocating that Design Patents be recordable for import interdiction purposes by USCBP, just as US copyright and federal trademark registrations are recordable. Since the Spring Meeting, we formed a Subcommittee for the

effort, mustered Committee members, who educated the membership on the law with a conference call and written materials, and surveyed the status quo of outside efforts to lobby Congress and CBP. We then drafted a Board resolution, held a Committee vote and presented it to the Board, and the Board formally adopted our proposed resolution. Most recently, our Subcommittee chair and AIPLA staff members, Vince Garlock and Al Tramposch attended a joint meeting CBP meeting with IPO members on the effort.

We have been particularly active regarding the recent accession of the US to the Hague System for the International Registration of Industrial Designs, for which the USPTO is currently drafting implementing regulations. We are directly interacting with USPTO personnel on the regulations and expect to comment on the draft, once it is made public by the USPTO. We are also intending to treat the implementation of the Hague System during our Committee meeting at the 2013 Annual Meeting and possibly with a webinar, road-show or concurrent session at the Annual or another major meeting.

We are monitoring In re Owens, a design patent case at the federal circuit, awaiting a panel decision concerning continuation practice and reliance on unclaimed boundary lines. Third-party commentary suggests the case could have major (“catastrophic”) significance. We therefore formed a sub-committee to monitor and are presently drafting a brief (1-2 pages) informational memo to the Board. Depending on the decision and whether en banc reconsideration is requested, we may recommend an AIPLA amicus brief.

The ID Committee is internally discussing developments in 3-d printing, small copyright claims and orphan works, all as they relate to Industrial Design. The US Copyright Office has issued a third request for comment (due 4/12/13), for which we might provide input to AIPLA’s Copyright Committee, e.g., abuse of such systems by knock-off purveyors and counterfeiters, need for experienced courts to undertake and for consistency in originality and separability analysis, registration arcana, etc.

Public EducationThe Committee has formed a Subcommittee for its Hague System work, which will draft and maintain the AIPLA Information Page.

Member ServiceOn January 24, 2012, we inaugurated our new informal, substantive conference calls on topics of interest to Committee members, of which we hope to have 4 to 6 each year. We hosted 3 speakers (2 with slides), who presented on 3-d printing, Hague and In re Owens.

We are trying to increase member use of our AIPLA Committee website by requesting and posting news,


writings, etc., of interest, and advocating use of the LYRIS and on-line discussion features by members. We’re also opened the permissions for use of the calendar there. So, we have posted several articles, links to Federal Circuit oral argument, PowerPoint presentations and papers from our meetings at AIPLA major meetings and our aforementioned conference calls, etc. We’ve also posted our working materials for the various topics addressed herein, e.g., DP recordation at Customs, our recent Fashion Bill resolution, Hague implementation, In re Ownes, etc.

Global OutreachVice-Chair Margaret Polson and Chair Garfield Goodrum separately attended meetings of WIPO’s Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) in Geneva, where discussions on a new design law formalities treaty are actively being negotiated. We interacted with other NGOs and also foreign government delegates, WIPO personnel and USPTO personnel representing the US. We will attend future SCT meetings either ourselves or help recruiting attendees.

The Committee is presently reviewing AIPLA’s draft comments on the SIPO Examination Guide.

The Committee is aware and informed of other international meetings, which it considers attending from time to time, e.g., OHIM’s conference re 10 Years of the Community Design in Alicante, ES, April 8-9, 2013, as well as AIPLA country / region trips.

Subcommittees:Legislation Sub-Committee, Jason Somma, Chair

In re Owens, Richard Stockton, Chair

Hague System, Margaret Polson, Chair

Design Patent Recordation w/ CBP, Perry Saidman, Chair

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

Vision, Mission & Values

The 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 countries nationals. A further role of the IFLC is to coordinate with other AIPLA Committees on matters which are relevant to the jurisdiction of such Committees.

AdvocacyThe IFLC coordinates with AIPLA leadership to research and advocate, on the behalf of IP stakeholders, 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 foreign Committees where the foreign rights are potentially affected.

The IFLC has established a group of Foreign Liaisons to assist the IFLC by providing advice on intellectual property issues in their representative regions.

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. During the 2013 Mid-Winter Institute, the IFLC coordinated with other international Committees to help put together a program entitled “IP Rippling through the World—Merging Business and IP in Emerging Economies,” which included a panel of top IP dignitaries from around the world. The IFLC has recently established a Subcommittee (described immediately below) tasked with regular reporting of updates to international laws and regulations of interest to AIPLA membership.

Global Outreach

The IFLC has been instrumental in establishing Subcommittees pertaining to international practice, with the goal of such subcommittees ultimately becoming active Committees, the most recent of which are the Arabian Practice Subcommittee (APS) and the International Practice Survey Subcommittee (IPSS- pending). The IPSS will be tasked with reaching out to the AIPLA international membership for


updates concerning international laws and regulations, for regular reporting to the AIPLA membership.

Also, the IFLC has recently been charged with being the AIPLA representative Committee to coordinate with the Global Network of National IP Practitioner Associations (the Global Network), an organization including (to date) ten IP associations from around the world. The IFLC will maintain AIPLA’s Global Network site, and will periodically reach out to this network for purposes of information exchange, cooperation, legal updates, surveys, and scheduling.

Subcommittees Arabian Practice Subcommittee, Nabil Salame, Chair

International Practice Survey Subcommittee (pending)

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

The Committee has two main functions. The 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 those of the Online Programs, International and Foreign Law, the IP Practice in Europe, the IP Practice in Japan, the IP Practice in Latin America, the IP Practice in the Far East Committees, and the Special Committee of International Practitioner Associations.

The Committee has conducted six online programs since 2010, namely three programs for German-speaking practitioners, one program for practitioners in Singapore, one program for practitioners in China, and one program for practitioners in Australia, New Zealand and Singapore. Most recently, a program for practitioners in Australia, New Zealand and Singapore was conducted on March 6, 2013 with the assistance of the Institute of Patent and Trade Mark

Attorneys of Australia, the New Zealand Institute of Patent Attorneys and the Association of Singapore Patent Agents.

The Committee is in the process of developing multiple webinars for different jurisdictions to be presented within the first half of 2013.

A program is being developed for a Spanish-speaking audience with the assistance of AIPPI Spain with the likely topic of the program being related to the AIA. We are in the process of reaching out to Spanish-speaking countries in Latin America through the assistance of the IP in Latin America Committee, in order to increase the size of the audience for this program. We will identify dates, specific topics and speakers once the audience has been set.

At least one program, and possibly more, will be developed for German-speaking audiences in Europe with the likely topics of these programs being on subject matter eligibility of software and biotechnology inventions post-Bilski that was scheduled for March 21, 2013. A second program for German-speaking audiences in Europe on third-party post-patent grant proceedings under the AIA is under consideration for development.

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. Training sessions will be held for local coordinators shortly.

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) 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

(2) 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 related approach is to begin a formal


program of promoting our programming services for US IP law to foreign IP associations, including soliciting requests for online programs and offering speakers for local programs.

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

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

(5) 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.

(6) Establish more formal working relationships with other international Committees for purposes of coordinating international education efforts and producing programming.

International Trade CommissionChair: Kim E. ChoateVice Chair: Michael W. Maas (not pictured)

The ITC Committee has been active since spring working closely with the Board to further advocate Section 337 practice at the United States International Trade Commission (USITC). In doing so, the Committee prepared comments for the Board’s approval and submission in response to two recent Federal Register Notices published by the USITC which proposed new rules and procedures for Section 337 practice.

The Committee has also been active in public education. In August, the Committee sponsored an Webinar where the Honorable Theodore Essex, Administrative Law Judge at the USITC, and Kim Choate, Special Counsel at Cadwalader, Wickersham & Taft LLP, spoke on recent updates at the USITC. Additionally, the Committee is planning on participating in one of the educational sessions at the Spring Meeting 2013.

The Committee has formed several Subcommittees to continue its advocacy for Section 337 practice before the USITC and looks forward to working with other Committees to achieve this purpose.

IP Law AssociationsChair: Anthony M. ZupcicVice Chair: Troy Grabow

Vision, Mission & ValuesThe IP Law Associations Committee is AIPLA’s outreach vehicle to all other IP law associations, both local and regional, throughout the United States. The Committee maintains a roster of the leadership of these other IP law associations and fosters cooperation and an exchange of ideas between IP law associations.

AdvocacyOne of the tasks assigned to the Committee is to maintain the Amicus Notification Network which is a Lyris list that enables AIPLA to distribute to member organizations its amicus briefs and similarly to receive copies of amicus briefs filed by other IP law associations that are members of the network. New members to the network are solicited during each Regional Roundtable. Several new members have been added since the Annual Meeting.

The Committee works though Headquarters and the Amicus Committee to distribute all AIPLA amicus briefs to the network in a timely fashion.

Public EducationRegional Roundtables are used as a vehicle to advise local and regional IP law associations of the efforts AIPLA is making in educating both the IP bar and the general public.

In the latest series of Regional Roundtables, the Committee mentioned the several webinars that AIPLA has hosted on various aspects of AIA and explained how those webinars could be used by local and regional associations to educate their members on this important change in IP law.

The Committee worked with the Online Programs Committee to assess how these webinars might be bundled and made available to the local and regional IP law associations.

The Committee also noted that AIPLA is willing to provide speakers on various topics including AIA, upon request. This proposal has been well received and so the Committee is considering how best to identify speakers on given topics for the local and regional IP law associations.


The latest series of Regional Roundtables were also used as a platform to discuss AIPLA’s efforts to educate the public on IP issues. The availability of educational materials at the “Creativity in Bloom” website (www.creativityinbloom.org) has been noted. Several Regional Roundtable participants have expressed interest in reviewing these educational materials developed by our Public Education Committee and will consider using them for local events.

The Committee also mentioned during these Regional Roundtables that the Public Education Committee is developing talking points for the local component of the upcoming World IP Day event in April 2013.

Member ServiceRegional Roundtables also provide a vehicle for learning what benefits other organizations offer their members that might also be implemented by AIPLA in attracting new members. At the same time, AIPLA has offered local and regional associations AIPLA work product that the local and regional associations might not be otherwise able to offer to their members. The Amicus Notification Network and AIPLA’s public education materials are two examples of such work product.

The Committee has also coordinated with the New Lawyers Committee to provide them with local contacts as that Committee tries to set up local events that attract young attorneys.

Committee Meeting, Plans and GoalsThe Committee met during the Mid-Winter Institute and began to identify topics for the next series of Roundtables. There was also discussion on how best to identify speakers to the local and regional IP law associations.

The Microsite Subcommittee reported on its efforts to update the microsite and expand content while the E-Mailer Subcommittee reported on its proposal for an e-mailer prior to each major meeting.

The Committee also discussed when we will invite the local and regional associations to a legislative update presentation which is given annually by Vince Garlock. Due to Committee meetings at the Mid-Winter Institute being scheduled at 8 am Eastern, which would not work very well for the local and regional associations not on the East Coast, the Committee had to postpone this year’s update. We are presently considering whether the update will be presented at the Spring Meeting in May or as a webinar in early June.

Finally, the Committee was advised that our report on the last series of Roundtables is being prepared and will be circulated to all participants sometime in March.

Subcommittees: Regional Roundtable Subcommittee, E-Mailer Subcommittee and Microsite Subcommittee

IP Practice in ChinaChair: Ying TuoCo-Vice Chairs: Patrick J. Coyne and Zhun Lu (not pictured)

Vision, Mission and ValuesSection 1. Under the guidance of the President and the Executive Director, this committee shall:

(a) Establish and maintain relations with professional societies in China whose members are interested in intellectual property law.

(b) Study the law and practice of China and report on issues of interest to the Association Board of Directors and membership.

(c) Provide information on US intellectual property law to any interested party in China, if called upon to do so.

Section 2. This Committee shall coordinate its activities with the International and Foreign Law Committee.

AdvocacyReviewing, evaluating, and participating in public comment and preparing translations for AIPLA’s comments on revisions to the Chinese Trademark Law, Standards Guidelines, the Chinese Anti-Monopoly Law, Chinese Patent Law on behalf of AIPLA;

Organizing a panel for a plenary session at the Spring Meeting with the Antitrust Law and Standards Committees.

Public EducationOn January 10, 2013, Chen Wang, Board Liaison to the Committee, Patrick Coyne and Zhun Lu, Co-Vice Chairs of the Committee, participated in the China IP Conference at the George Washington Law School in Washington D.C. The conference was organized by George Washington and Fordham Law Schools. Some 50 IP professionals, officials, professors, law students and judges from the US and China attended the conference. Chen and Patrick spoke as panelists at the conference.

Member Service(a) Soliciting comments and needs from members and acting on the commends and needs from the members;

(b) Organizing a delegation to visit China in 2014;


(c) Encouraging AIPLA members to join the Committee;

(d) Encouraging Chinese IP professionals to join the Committee

Global Outreach

(a) Maintaining existing relationships with Chinese IP organizations, such as ACPAA, CIPS, ACLA, Zhejiang IP Office, and the Shanghai IP Office;

(b) Developing new relationships with Chinese IP organizations, such as Beijing IP Office, Jiangsu IP Office and Guangdong IP Office;

(c) Preparing to receive a delegation organized by the Committee;

(d) Inviting Chinese speakers to give presentations about Chinese patent prosecution at the Spring Meeting and Chinese Patent Enforcement at the Annual Meeting

(e) Outreaching to potential members in China

Subcommittees: Program Planning: Li Feng; IP Developments: Brad Chin; Website: Craig Tucker; Liaison: Ying Tuo; Membership: Zhun Lu; Public Comments: Patrick Coyne

IP Practice in EuropeCo-Chair: Andrew G. SmithCo-Chair: Laura Brutman

Our Mission: The IP Practice in Europe Committee seeks to inform our 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 IP organizations whose members are experts in intellectual property law and practice in Europe.

Member Service: The IP Practice in Europe Committee is continuing to support the sharing of key developments in intellectual property law

and practice for our members. Our strong relationships with national IP organizations throughout Europe assist us in this process of continuing education.

Global Outreach The Committee’s annual visit to Europe took place the week beginning March 11, 2013.

IP Practice in the Far EastChair: Kenneth K. ChoVice Chair: Christopher J. Maier (not pictured)

The Committee has no business to report at this time.

IP Practice in JapanCo-Chair: Joseph A. CalvarusoCo-Chair: Christopher J. Fildes (not pictured)

Vision, Mission & ValuesConsistent with the AIPLA’s Vision, Mission, and Values, the Committee is maintaining a high-level of visibility through its interactions with key Japanese IP organizations to promote the exchange of information on significant IP developments in the US and Japan. These exchanges have historically occurred at two pre-meetings (prior to October AIPLA Annual Meeting and Mid-Winter Institute), each lasting for one and a half days as well as a week-long delegation visit to Japan, generally undertaken in April of each year. It is noted as a result of our consultation with a number of Japanese IP organizations, our Committee decided to forego having a


pre-meeting at the 2012 AIPLA Annual Meeting. Basically, the leadership of the Japanese groups advised us that participating in the Annual Meeting this year was very difficult for them because of prior commitments they have to other international meetings scheduled for the same time.

Our Committee participated in a two-hour joint session during the Annual Meeting with the Electronics and Computer Law Committee and the IP Practice in Latin America Committee. During that joint session, there were presentations on the protection of software inventions in the US, Japan, Europe, Mexico and Brazil.

On September 3-4, 2012, our Committee Co-Chairs, Paik Saber and Joseph A. Calvaruso represented AIPLA at the LES Asia Regional Conference in Tokyo. The Conference had about 300 attendees. Joe Calvaruso was a speaker at the session moderated by Paik Saber. During the Conference, Paik Saber also presented Mr. Harashima, LESJ President, with a gift from Bill Barber and the AIPLA organization to commemorate LESJ’s 40th Anniversary. In addition, Joe Calvaruso represented AIPLA at the Annual Meeting of the Japan Trademark Association on September 6-7 in Nagoya. Joe was the sole US speaker at the Nagoya meeting. There were 180 attendees at the Annual Meeting.

Our Committee has already begun planning for our pre-meeting before the January 2013 Mid-Winter Institute as well as our annual April trip to Japan. Immediately following our joint session on October 25, our Steering Committee met with representatives from JPAA to discuss both the MWI pre-meeting and April Trip. We already have confirmed dates for most of our April 2013 meetings. Included in those April meetings will be our second Women in IP Law meeting as well as our second seminar with JPAA in Osaka.

The Committee will continue to explore having expanded meetings in Japan with JTA and LES Japan including the possibility of an additional trip to Japan for a smaller AIPLA delegation.

The Committee currently has about 160 active voting members. It is the Committee’s intent to increase active participation of its members, and to encourage joining of new members by:

i) posting more information on its web page; and

ii) taking advantage of the annual April trip to Japan to promote AIPLA memberships among the IP professionals working in Japan.

Finally, while historically the Committee has been focused on exchanging information with the Japanese IP organizations, the Committee is now increasing its focus on advocacy, consistent with the AIPLA objectives. To that end, during our April 2012 Trip, the delegation had a very candid discussion with the JPO Director of International Affairs on the issue

of what it takes to increase the number of patent filings in Japan.

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

Vision, Mission and ValuesThe 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 works to this end by constantly reminding its members through its committee programs, web postings and social networking 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 fosters to bring together those differences within the best of its abilities to assist IP practitioners and company executives throughout the world to better understand Latin America and the procurement of IP in the region. The Committee’s vision is to include IP Practitioners from every Latin American country as members of the Committee and as members of the AIPLA community. The Committee’s values are identical to those of the greater membership of the AIPLA in its belief to the enduring power and importance of all areas of Intellectual Property for creating economic growth and prosperity for all of Latin America.

AdvocacyThe Committee is very committed to acting as advocates for furthering the understanding and development of IP systems in Latin America. We will work with fellow IP associations in all of Latin America to assist them in embracing common ideals and systems that are proven to work from other countries with more developed IP procurement systems. However, LAC will always remain cognizant of the unique cultural differences in each Latin America country and will never forget that just because a certain system works in one country, does not mean that it will necessarily work in any


other specific Latin American country. The LAC will look to fellow AIPLA Committees for assistance, mutual cooperation and guidance, 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. As well, the LAC has established a liaison with AIPLA’s Biotechnology and International and Foreign Law Committees to foster greater awareness and cooperation among these sister Committees.

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, the Committee will continue to work with a multitude of the other AIPLA Committees in sponsoring joint Committee sessions, especially at each year’s Spring and Annual Meetings. However, the LAC will not only work with other “internationally-focused” Committees, but will strive to incorporate programs that are co-sponsored by a wide variety of the numerous AIPLA Committees so long as the educational program is helpful to the its membership and the greater AIPLA community as whole. As an example of such, the Committee is having a joint Committee session at this year’s Spring Meeting in Seattle with the Biotechnology Committee to discuss the most important biotechnology issues developing throughout Latin America. The invited speakers include Biotech IP practioners from Mexico, Costa Rica, Brazil and Argentina. And the Committee is already planning a joint session with the PCT Issues, IP Practice in the Far East and International & Foreign Committees to discuss the “growing pains” of newly ascended PCT member states, such as Chile and Peru, to just name two from Latin America. Still further, the Committee has a Subcommittee called the “Subcommittee for the Maintenance of the AIPLA IPP-LatAm Micro-Web Site” for the express purpose of providing the latest information to its committee membership and the AIPLA membership as a whole in regards to the latest IP issues occurring in Latin America. And even further, the Committee now has a LinkedIn sub-group page under the umbrella of the greater AIPLA LinkedIn group, which will be updated and managed by its “Subcommittee for the Development and Integration of Social Networking in Latin America.”

Member ServiceThe IP Practice in Latin America 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 including our members in educational Committee programs by asking them to speak at any of the three stated meetings when their specific area of expertise fits within the programmed Committee session. Further, IPP-LatAm has formed subcommittees to maintain both its AIPLA microsite and its newly started LinkedIn sub-group page for the express purpose of keeping its members

more informed with the most updated information in regards to important changes occurring in the IP world throughout the Latin American region. Still further, the Committee is actively pursuing AIPLA delegation speaking opportunities with its sister Latin American associations such as the Brazilian IP Association (or “ABPI”), the “Asociación Interamericana de la Propiedad Intelectual” (or “ASIPI”) and the “Asociación Mexicana para la Protección de la Propiedad Intelectual” (or “AMPPI”), to name just a few. Finally, IPP-LatAm is actively seeking AIPLA Board approval to establish Liaison relationships with organizations such as ABPI, ASIPI, AMPPI and AAAPI (of Argentina).

Global OutreachEach of the IP Practice in Latin America Committee’s vision, mission and values as well its advocacy, public education and member services will work in coincidence to provide a greater global outreach. Latin America, as whole, has become an important economic market for the world and we should expect to see IP procurement increase steadily each year throughout the entire region. The Committee intends to help foster a global outreach by planning a once a year trip to a Latin America country to visit its local Patent and Trademark Office and/or other Industrial Property Office and as well to coordinate a visit with the county’s or city’s local IP association and its Judicial bar. Plans for a June 2013 trip to Mexico City are set for June 5th through June 7th and preliminary discussions are already underway about our 2014 trip. News of the 2013 trip is available at the Committee’s micro-web site on the larger AIPLA web site and as well on its LinkedIn subgroup page. Other trips are also being considered that would coincide with meetings arranged by ASIPI and other sister Latin American organizations. News will be posted on the Committee micro-site and the LinkedIn sub-group page as the information becomes available, and as well, will be disseminated by both membership e-mails (Lyris) and announcements at any and all of the three stated AIPLA meetings during Committee sessions.

SubcommitteesSubcommittee Reporting on IP Developments in South America for 2013

Ignacio Manuel Sánchez Echagüe – Chairman

Gisella Barreda – Vice Chairman

Subcommittee Reporting on IP Developments in Mexico & Central America for 2013

César Ramos - Chairman

José Paulo Brenes – Vice Chairman

Subcommittee for the Maintenance of the AIPLA IPP-LatAm Micro-Web Site

Eduardo da Gama Camara Junior – Chairman


Subcommittee for the Development and Integration of Social Networking in Latin America

Luis Diego Castro – Chairman

Subcommittee for the Coordination and Planning of the 2013 Annual Latin American Trip

César Ramos – Co-Chairman

Eugenio Pérez – Co-Chairman

Subcommittee for the Coordination of the 2013 DC Meeting IPP-LatAm Committee Session

Robert Wells - Chairman

Law Practice ManagementChair: David A. Divine (not pictured)Vice Chair: Richard W. Goldstein

Vision, Mission and ValuesThe mission of the Law Practice Management Committee is to provide resources, support, and education to our members, to policy leaders, and to the public to help them effectively manage their law practices and for their own professional development. This mission directly corresponds with the AIPLA mission of serving our members, the public, and policy leaders. Our mission supports the AIPLA mission and values as it provides a further avenue for expanding its role as an innovator, powerful advocate, and visible global leader - in furtherance of building a strong community of committed and visionary professionals that are passionate about intellectual property.

One of the main goals of the LPMC is the timely production of the Report of the Economic Survey. A second goal of the LPMC is to provide educational programming and resources to our members related to law practice management and leadership. A third goal of the LPMC is to provide a forum for discussion of issues related to law practice management.

AdvocacyThe 2013 Economic Survey of AIPLA members and associated firms is being conducted by the Committee, and will be

complied into the 2013 Report of The Economic Survey. The Report plays a critical role in backing AIPLA positions and economic arguments as it advocates for a more effective IP system, and is also used by the legislature, courts, and agencies - including the USPTO - in making law, deciding cases, and promulgating rules related to IP practice.

The LPMC is collaborating with other organizations involved with law practice management. As part of those initiatives, Vice Chair Rich Goldstein has written several articles published by different entities, including the ABA and the California Bar, which promote law practice collaboration practices, and advocate for fair treatment of attorneys as they seek to compete with non-legal entities which provide legal services electronically.

Public EducationThe Committee has been holding a series of monthly, 60-minute teleseminars discussing the “The Six Critical Conversations That Every Successful Law Firm Leader Must Master.” The next call will be held March 20, 2013, and will cover the last of the six critical conversations. The calls facilitate education, discussion, and support related to law practice management and leadership issues. These calls are open to anyone interested in law practice management.

The Law Practice Management Committee, in coordination with the Diversity Committee and the Corporate Practice Committee, is preparing a CLE program entitled “Best Practices for Hiring and Retaining Lesbian, Gay, Bisexual, and Transgender (LGBT) Attorneys” for the Spring meeting in Seattle.

Member ServiceThe 2013 Economic Survey was distributed to AIPLA membership in January. The response period has been extended until the week of March 18, 2013, at which time they will be tabulated by the survey company that administers the survey. The Report of the 2013 Economic Survey will be released shortly thereafter. The bi-annual Report is a service of AIPLA that is considered by many members to be one of their most valued benefits of membership. The Committee has also entered an initiative with AIPLA President Jeff Lewis to study how AIPLA can better serve certain categories of underserved members.

Subcommittees2013 Economic Survey Subcommittee headed up by Colleen Schaller and John Thuermer

Educational Programs Subcommittee headed up by Rich Goldstein


Law StudentsChair: Yelena MorozovaVice Chair: Samuel V. Eichner

Vision, Mission & ValuesThe Law Student Committee was created to help the Association better identify with the concerns of law students. The Committee wishes not only to invigorate AIPLA’s current law student members, but also to welcome more students to join AIPLA as active members. The Committee will be a vehicle to educate members on AIPLA’s broader purpose and goal.

The importance of law student outreach to AIPLA cannot be overstated; the law student community is far and away the largest pool of potential new AIPLA members. As a result, a major goal of the Law Student Committee is to expand the AIPLA presence at law schools around the country and around the world, and educate law students about AIPLA’s role in the IP community , while emphasizing the benefits of the AIPLA affiliation. By expanding the AIPLA law student membership base, we can increase exposure to AIPLA and accomplish more as a Committee and as an organization.

We look forward to an active year, and to contributing members, ideas and hard work to the AIPLA community.

Public EducationThe Law Student Committee has been working in conjunction with the Education Committee by providing students to assist the Education Committee with compiling a list of IP law school professors around the country.

Member ServiceOur Committee is actively involved in the mentor/mentee program, which pairs law students with new lawyers, allowing the latter to provide guidance on practice areas and employment opportunities to the former. This program is being implemented in conjunction with the New Lawyers Committee. At the Annual Meeting, we participated on a panel “Business Development: Practical Tips for Creating and Strengthening Relationships with In-House Counsel”, hosted with the Law Practice Management Committee and New Lawyers Committee. The event focused on understanding client’s needs, building a successful rapport with clients, and “what in-house counsel really wants.” We

stressed the importance of networking as a law student, and how that relates to obtaining business as an attorney down the road from corporate clients.

Generally speaking the Committee will continue its longstanding outreach efforts which focus on engaging, educating and expanding the AIPLA membership. We intend to expand these efforts in a number of ways. The Event Planning Subcommittee is being created to provide one mechanism for mass outreach to law students. Law students will serve in regional positions on the Subcommittee, providing our Committee with the infrastructure for planning AIPLA events at key schools with strong IP programs. The Social Media Subcommittee currently in development is also a key aspect of our member outreach initiative. We intend to embolden our Facebook and LinkedIn presence, while also starting a new Twitter account devoted to connecting with law students on a consistent basis.

Global OutreachThe Committee has begun to consider various strategies and ideas as to how we can increase membership on a global basis. While this initiative is in its infant stages, we believe the right approach to global outreach will allow the Committee to gain a foothold in key foreign legal institutions, and allow AIPLA to grow its membership internationally.

Licensing and Management of IP AssetsChair: Robert O. Lindefjeld Vice Chair: Penny Lynn Prater

The Committee has been actively involved in educational presentations during Committee sessions for both the Spring and Annual 2012 meetings. During the Spring Meeting session, James Kelley, Assistant Chief Patent Counsel of Eli Lilly and Co., and Penny Prater, Senior Counsel, Chevron. provided a joint presentation entitled, “Management of Large Intellectual Property Portfolios.” The two presentations provided different perspectives on IP portfolio management within large corporations. An accompanying article, written by Gregory Grissett, Jacob Woolbright and John Thuermer, was provided for CLE credit.


During our session at the Annual Meeting, the concept of licensee estoppel was considered by a panel which analyzed the recent Rates v. Speakeasy decision. Panelists included Pat O’Reilley of Finnegan, Andrew Wu of IP Value, and David Leichtman of Robins, Kaplan Miller and Ciresi. Two supporting articles were prepared for CLE credit by the teams of Donika Pentcheva with Roy Isaac and Debodhouyaa Sengupta with Andrew Kesnevich.

We have posted material from our recent education sessions on the Committee website. We are also adding a listing of popular books and articles of interest in the licensing area. Please let us know if you have suggestions for items to add to our list.

MembershipChair: Michael W. PiperVice Chair: Elizabeth Ann “Betty” Morgan

The Membership Committee is focused on assisting the Board and AIPLA Headquarters in finding and developing better and more effective ways to serve our membership as well as evaluating and proposing ways to grow and maintain our membership base. The Committee plays a role specifically in maintaining a strong community that is open and inclusive and supporting membership growth and retention that provides the foundation for financial stability.

ADVOCACYWhile the Committee is not currently directly supporting the advocacy efforts of the Association, if it is successful in its efforts at increasing the size and diversity of the Association, this may assist the advocacy pillar.

PUBLIC EDUCATIONWhile the Membership Committee is not currently directly supporting the public education efforts of the Association, if it is successful in its efforts at increasing the size and diversity of the Association, this may assist the public education pillar.

MEMBER SERVICEThe Committee’s primary focus since the Annual Meeting has been working with AIPLA HQ and the Board to evaluate

and recommend potential new categories of members. These are direct efforts to improve the effectiveness of the membership structure. The Committee brought a proposal to the Board at their December meeting and returned with an expanded proposal to the Board at the Mid-Winter Institute.

The Committee has also formed small working groups looking at corporate members, student and new lawyer members, and licensing and transactional interested members to consider tailoring benefits or even potentially the membership structure to better meet their needs. The current goal is to have a proposal to the Board on corporate members in time for the March Board meeting. Over time, the Committee intends to collaborate with the Corporate Practice Committee, the Law Students Committee, the New Lawyers Committee, and the Licensing and Management of IP Assets Committee respectively on these efforts.

The Committee’s work on new categories provides an effort to grow the membership base but also to do so in a way which supports financial sustainability. Specific assessments of potential financial impacts are a part of each effort of the committee. If the Committee is successful in its overall effort of increasing the base of membership and improving retention, this also speaks directly to the bottom line of financial sustainability.

Finally the Committee has formed a small working group to provide feedback and support to AIPLA HQ on the Membership Marketing 2.0 plan and is assisting in implementing a comprehensive marketing & communication strategy to exchange and engage with members on a professional and personal daily basis and improving the process for recruiting and retaining members.

Global OutreachWhile the Committee is not currently directly supporting the global outreach efforts of the Association, if it is successful in its efforts at increasing the size and diversity of the Association, this may assist the global outreach pillar.

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


Vision, Mission & ValuesThe Mentoring Committee facilitates mentoring relationships within AIPLA to help members achieve their goals within AIPLA. Professional mentoring may also be an aspect of the mentoring relationship.

AdvocacyThe Committee does not have a formal role with respect to advocacy. However, through pairings, our mentors introduce their mentees to substantive Committees which have a role in advocacy.

Member ServiceWe believe that the Committee draws in new members interested in becoming more involved in AIPLA and who may want professional mentoring.

One of the ways that we contribute to Member Services is through our pilot “on-site” mentoring programs. We ran our second on-site mentoring program at the Mid-Winter Institute 2013, with great participation. The on-site program is designed to pair new members/first time attendees with regular AIPLA attendees for the duration of the meeting. The objective is to introduce the mentees to AIPLA, its programming and what the organization has to offer its members. We plan on continuing the on-site mentoring program at the 2013 Spring Meeting in Seattle.

Another way that we contribute to Member Services is with the Klitzman Award. One objective of the Award is to assist junior corporate counsel in becoming more involved in the AIPLA.. We will begin the application process for the 2013 Klitzman Award after the Spring meeting.

We have implemented a mentor/mentee pre-pairing interview in order to improve the mentoring experience. Jenae Gureff contacts each mentor and mentee pair to confirm that the pairing is appropriate. We also continue to annually reward our outstanding mentors with a Mentor of the Year award, which is chosen based on mentee feedback through our selection committee led by Lisa Jorgensen and Allison Strickland Ricketts.

Global OutreachOur Committee has and will continue to improve ways for our members to become more involved outside of major meetings. This allows members who are not able to travel to meetings to become involved in and learn more about AIPLA.

We are a global Committee: foreign members are involved in the mentoring program at the leadership level and within the mentoring program as mentors and mentees.

We are trying to develop new ways to reach out to our members using our committee microsite as well as other on-line resources. In furtherance of this objective, we recently started a LinkedIn group for our Committee, where we plan to

provide resources for our members in addition to information to be posted to our microsite. We are also considering ways to provide local mentoring opportunities, building on what the Young Lawyers and the Women in IP Law Committees have achieved through community events.

Subcommittees- On-Site Mentoring Subcommittee: Debodhonyaa (“Deb”) Sengupta

- Pairings Subcommittee: Diana Luo

Mentor/Mentee Pre-Screening: Jenae Gureff

- Evaluations Subcommittee (includes reviewing applicants for Mentor of the Year Award): Lisa Jorgensen; Allison Strickland Ricketts

- Klitzman Award Selection Subcommittee: Rakesh Mehta

Technology Subcommittee: Jack Abid

Mergers and AcquisitionsChair: Peter E. MimsVice Chair: Carey C. Jordan (Not pictured)

To engage and educate the membership on intellectual property issues arising in mergers and acquisitions and to raise the awareness of the membership 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 is conflict in the rulings various courts regarding the assignment or transferability of intellectual property license agreements. We hope to have a Committee presentation at the 2013 Spring Meeting or the Annual Meeting on this topic with the goal of developing the membership’s views on these issues.

Public EducationThe Committee is in the process of expanding its website to feature the output of two new Subcommittees: “Best Practices” and “M&A Case Law Project.” After these


projects are more fully developed, it may be possible that this information could eventually be made public or serve as the basis for a webinar.

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. Besides discussing the activities of the Committee at upcoming meetings, we often include a case law highlight in these monthly conference calls.

In the past two months, we have appointed chairs for the four Subcommittees as listed below. The primary goal of these Subcommittees is member service. We plan to use the Committee website to provide members “best practices” forms and case law resources regarding the merger and acquisition practice area. With the Networking Subcommittee, we hope to help professionals in M&A IP practice to meet and discuss their practices with their colleagues. Based on discussions in the past on these conference calls, in some cases, the M&A IP practitioner works alone on the IP issues in a M&A deal and so we believe that a networking Subcommittee could provide a useful service of facilitating communications and sharing of experiences among the members.

We have or will be conducting joint Committee meetings with presentations with other Committees. At the Spring Meeting, we will be conducting a joint educational program with the Patent Law Committee to provide insight into representing a start-up from establishing an Intellectual Property (IP) portfolio through funding and exit strategies. The speakers will discuss some of the unique aspects to representing start-ups including establishing patenting strategies, working with venture capitalists for financing, monetizing investments through the selling of IP, handling the acquisition of the start-up, and even how to represent the start-up company when it fails. In the past few years, we have conducted joint Committee meetings with such varied Committees as Electronics & Computer Law, Emerging Technologies, Law Student, Corporate, and Women in IP Law.

We have provided as many opportunities as possible for Committee members to be involved – through Subcommittees, speaking, moderating, project managing, etc.

GLOBAL OUTREACHWe have had some attendance at stated meetings by international members of AIPLA. One of the long-term goals of the Committee will be to engage the IP Practice in Japan, China, Europe and other similar Committees to conduct joint sessions with regard to mergers and acquisitions in other jurisdictions. Such a program would be well suited for an Annual Meeting, which is the meeting at which we tend to have the best attendance by international members of the AIPLA.

Subcommittees:Programs and Website (Chair: Neil Henderson); Best Practices (Chair: Ram Menon, Research In Motion and Stanton D. Weinstein, Lockheed Martin Corporation); M&A Case Law Project (Co-Chairs: Cecilia Vega (General Electric) and Andrew Maas); and Networking (Co-Chairs: Jacki Daspit (C. R. Bard, Inc.) and Jeff Wolfson (Haynes & Boone))

.

New LawyersCo-Chair: Melissa A. Sikorski Co-Chair: Richard T. Matthews (not pictured)

The New Lawyers Committee focuses on members in their first ten years of practice. The Committee provides educational and networking opportunities to new lawyers in the Association through the stated meetings and receptions. In addition, the Committee serves as a central resource to communicate with other Committee chairs and members of AIPLA’s Board to provide new lawyers opportunities to become more involved in the association. New Lawyers Committee members are active participants in planning substantive programs for the major meetings, co-authoring CLE papers with speakers, including corporate counsel, judging and administering the AIPLA Giles Rich Moot Court Competition and the Watson Writing Competition, and assisting substantive Committees with a variety of activities, including research and writing projects, Committee meeting planning and implementation, developing educational materials, and managing Committee microsites.

Advocacy: NLC members welcome the opportunity to volunteer for advocacy-related initiatives, such as Amicus Committee briefs. Substantive Committee leadership should e-mail the NLC with advocacy volunteer opportunities.

Public EducationThe NLC sends volunteers to judge the Intel International Science and Engineering Fair each year. The NLC continues to work with Committees such as the Education Committee on public education initiatives, and NLC members welcome the opportunity to volunteer for public education-related


projects. Substantive Committee leadership should e-mail the NLC with public education volunteer opportunities.

Member ServiceThe NLC’s third NLC CLE entitled “Ethics in Patent Prosecution” is scheduled to be broadcast live from DC to New York, Boston, Chicago, Atlanta and Seattle on March 22, 2013, 12:00-1:30.

The NLC coordinates a number of opportunities for its members to be active and serve within the organization. Several NLC members have sought the opportunity to work with CLE track speakers on their papers in preparation for the 2013 Spring Meeting. NLC members recently volunteered to assist the Biotech Committee create and grow its social networking platforms.

The NLC continues to grow its new law student mentoring initiative with the Law Students Committee. Local networking continues in several cities, and the NLC recently expanded local networking in the DC area in a joint initiative with the Patent Agents Committee. Furthermore, the NLC will send job opportunities to its members via its e-mail listserv.

For the 2013 Spring Meeting in Seattle, the NLC will present a panel geared toward law students and new lawyers on relocating for work, held jointly with the Anti-Counterfeiting and Anti-Piracy, Education, International and Foreign Law, International Education, Law Students and Mentoring Committees. A networking reception will follow.

Global OutreachThe NLC has recently expanded local networking internationally to London, England. Additionally, NLC member volunteers regularly assist international Committees with projects. NLC members welcome the opportunity to volunteer for international projects. Substantive Committee leadership should e-mail the NLC with internationally-focused volunteer opportunities.

Subcommittees:1. NLC CLE: Subcommittee Chair, Chad Pannell, Team: Joseph M. DiCioccio, Beth Wolfson, Roy Issac, Theresa Gressell and Joshua Lee

The next CLE, “Ethics in Patent Prosecution,” will be held live in DC on March 22, 2013 from 12-1:30 and simulcast to sponsor firm locations in Boston, New York, Atlanta, Chicago and Seattle.

2. Giles Rich Moot Court

Contributors to the bench brief included David Gosse, Ryan Schermerhorn, and Scott Allen. Alexis Simpson addressed questions as they came up. The Giles Rich Problem drafting team included Ida Wahlquist-Ortiz, Erick Lee, Victoria Hall, Lars Taavola, James Chang, and Alexis Simpson. This core group was part of a larger group that researched

and ultimately selected the issues that became part of the problem. In addition to the drafting team members, the larger research group also included Kristin Beidinger, Josh Miller, Josh Lee, Jason Croft, Ryan Schermerhorn, Joe Dicioccio, Matt Brigman, and Tanya Dunbar. Chad Pannell and Yelena Morozova also served as ex officio members of the team.

3. Watson Writing Competition – no updates

4. Law Student Mentoring

Current NLC Mentors: Frank Gerratana, Sam Eichner, Yelena Morozova, Rob Wells, Ben Siders, Roy Isaac and Michael Bentley

5. Local Networking

Austin – Nathan Glass

Atlanta – Russell Blythe and David Moreland

Boston - Missy Sikorski and Frank Gerratana

Charlotte – Seth Hudson

Dallas/Ft. Worth – Justin Cohen and Victoria Helling

DC/VA/MD – Chrystina Zelaskiewicz, Lauren Peterson, Josh Miller, Pier DeRoo, and Steve Holzen (Chair of the Patent Agents Committee’s Local Networking SubCommittee, liaison to NLC)

Detroit – Isaac Slutsky

Miami - Rob Weaver

Minneapolis – Al Vredeveld

New York - Ceyda Maisami and Joe Diciocco

Orange County - Ehab Samuel

Palo Alto – Aaron Capron and Jeffrey Smyth

Philadelphia – Debora Plehn-Dujowich

Tampa - Nathan Suedmeyer

London, England - Julie Carlisle and James Seadon

Local Networking Leaders are needed in Chicago, Houston, Los Angeles, Milwaukee, Pittsburgh, San Francisco and Seattle. Interested NLC members should e-mail NLC Chair Missy Sikorski.

6. The New Lawyers Committee Newsletter, Business Casual

Justin Cohen, Editor-in-Chief. Editors: Ryan Schermerhorn, Landon Wiebusch, Karen Presley, John Sokatch, Ida Wahlquist-Ortiz. Layout and Design, Yelena Morozova


Online ProgramsChair: Brad ChinVice Chair: Stephen E. Belisle

Vision, Mission & ValuesOur mission is to provide high quality, affordable education by means of online media.

Our vision is to develop and prepare technological options and vendors to be able to work with the leadership and other Committees to identify, develop, and provide efficient and effective online program content to AIPLA and to facilitate others in AIPLA to utilize online media for program delivery.

The Committee provides substantial means for 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.

AdvocacyThe Committee provides AIPLA with means to directly connect with its membership and the public. While the Committee 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.

The Committee will continue its webinar series on the AIA, educating and enabling 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 online programs to educate the general (non-member) 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 platforms, namely Citrix GoToWebinars and webinars professionally hosted by KRM Information Services, Inc. Since the 2011 Annual Meeting, the Committee has hosted more than 12 KRM, 10 Citrix, and 10 Committee webinars covering a wide-range of topics, including the AIA, ITC investigations, counterfeiting, PCT prosecution, patent prosecution, trademark prosecution, litigation, e-discovery, and negotiation 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. Webinars typically attract between about 50 and 350 registrations and net between about $1,500 and $45,000. The Committee intends to host at least 18 to 20 webinars in 2013, covering a wide range of subject matter to reach a broader scope of the membership of AIPLA.

The Committee also provides a substantial channel for the members of AIPLA to obtain needed CLE credits. For example, last year, AIPLA webinars proessed over 7,000 requests for CLE. The CLE requests, which have historically originated from at least 44 of the 50 US states, demonstrate the geographically diverse reach of the Committee’s efforts.

The Committee coordinates with several other AIPLA Committees to provide and continue to expand online programming subject matter and geographic reach. Most recently, the committee has been coordinating with the New Lawyers Committee to recruit new program coordinators and to provide the means to take geographically targeted (localized) programming under development by New Lawyers and offer that programming online.

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

(1) Citrix GoToWebinar Subcommittee, which is charged with facilitating 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, 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 the AIPLA’s international membership.

Patent AgentsChair: Esther M. KepplingerVice Chair: J. Ritu Chander (not pictured)

The mission of thePatent Agents Committee is to strengthen the Patent Agent community through networking, educational programming and facilitating participation in the IP community. The Committee serves to connect agents through electronic media, social networking tools and in-person events.

This Committee serves to provide members with updates on the evolving legal landscape and current information about changes to practice and procedure before the USPTO. We assist in strengthening the patent system by providing feedback and suggestions to officials from the USPTO regarding its internal issues and problems. We strive to provide an environment which assists patent agents in growth and development within their career by offering practical information which helps maintain and improve the skills and knowledge essential to successful performance in this occupation.

AdvocacyThis Committee seeks input on the USPTO Federal Register notices regarding proposed rule changes and coordinates feedback to AIPLA for inclusion in its comments. In particular, this Committee solicited feedback regarding the USPTO RCE Feedback Proposal.

Member ServiceThe Patent Agents Committee worked with the Online Programs Committee to provide educational seminars relating to prosecution, jointly sponsored with the Intellectual

Property Law Association of Chicago. This event was held in February.

This Committee is also working with attorneys to provide PowerPoint presentations for on-demand viewing by committee members on the Patent Agents page of the AIPLA website.

The Committee typically invites a USPTO official to its 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. These are typically joint meetings with another Committee, usually the Patent Relations With the USPTO Committee.

For the Spring Meeting, the Committee, along with the Patent Relations with the USPTO Committee, has requested a USPTO official to attend the meeting to discuss the current status of patent operations and any new programs, policies, or procedures that have been implemented or proposed.

The Committee completed an electronic survey of AIPLA Patent Agent members from December 2012 through January 2013. The survey assesses topics, such as, how much Agents participate in AIPLA activities and what may be prohibiting participation. Results are posted on our microsite and the Committee is currently utilizing the information gleaned from that survey to develop initiatives and ways to provide better service to our committee members.

The Patent Agents Committee is now collaborating with the New Lawyers Committee’s networking events. The New Lawyer’s Committee holds networking events coinciding with AIPLA meetings, as well at other times in the DC area. The New Lawyer’s Committee has extended attendance to AIPLA Patent Agent members. We will strive to leverage leadership in major cities across the country to organize local networking events. We have appointed Stephen Holzen as the Patent Agents Committee Local Networking Subcommittee Chair to liaise with the New Lawyer’s Committee regarding these events.

The Patent Agents Committee has created a LinkedIn group for AIPLA Patent Agent members to provide an additional avenue for networking. We welcome all members of AIPLA, including attorneys to join the LinkedIn group in hopes of diversifying and enriching educational and professional discussions on this platform.

Subcommittees: Patent Agents Committee Local Networking Subcommittee, Stephen Holtzen, liaison with New Lawyers Committee.


Patent Cooperation Treaty IssuesChair: Jay A. ErstlingVice Chair: Brooke Schumm III


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

Vision, Mission and ValuesThe 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 to the membership and AIPLA important issues of patent law, and assists with 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 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 resolutions, and comments in response to requests from governmental agencies concerning patent law. The Advocacy Subcommittee assists in these efforts.

In addition to their efforts in summarizing and soliciting and collecting comments on the NPRMs, the Advocacy Subcommittee continues to monitor case law, PTO 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.

• The Committee has collected, or is in the process of collecting, comments from Committee members in response to Federal Register Notices relating to: (1) real parties in interest, (2) RCE practice, (3) the partnership for enhancement of quality of software related patents and (4) preparation of patent applications, (5) the global dossier, (6) PPAC’s proposal for streamlined prosecution, and (7) the AIPLA’s Harmonization Task Force.

• Committee Chair Ken Nigon testified on behalf of AIPLA at the Roundtable on Real Party In Interest. The Committee drafted the formal comments on the Federal Register Notice and submitted them to the Board for approval.

• Our Legislation Subcommittee, chaired by Eric Mirabel and Lance Reich, continues to work on developing a position that can be recommended to the Board concerning a revision to 35 U.S.C. § 101. An ad hoc Committee of members of the Patent Law, Biotechnology and Electronic and Computer Law Committees has been formed to for this purpose. Comments on possible proposals from the ad hoc Committee are being collected through a forum. Once comments have been collected they will be reviewed and the committee for recommendation will prepare one or more resolutions for consideration and approval of the Board.

• Members of this Subcommittee are also working on comments for the software patent quality FRN.

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

Member ServiceThe Committee serves its members 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 to the Patentability Issues Subcommittee. This Subcommittee is co-chaired by Ben Borson and Gary Cohen.

Second, the Committee regularly arranges and sponsors educational programming during its meetings, often for CLE credit—through its Programs Subcommittee, which has chaired by Paul Kitch of Nixon & Peabody and Sarah Knight of Saliwanchick, Lloyd & Eisenschenk. The Subcommittee is responsible for planning educational content, preferably for CLE credit, during the Committee’s meetings. The Programs Subcommittee has been coordinating with the Professional Programs and the Midwinter Institute Committees, as well as the Online Education Committee, by providing to those Committees ideas for programming, and assistance and resources in connection with producing the programming.

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.

• A September 17, 2012 free teleconference to discuss the new Post Grant Procedures, Post Grant Review, Inter Parties Review and the Transitional Program for Covered Business Methods. The speaker was Kevin Greenleaf of Schwegman, Lundberg & Woessner.

• A September 21, 2012 teleconference to discuss how the new Declaration practice under the AIA has been working. The conference included a brief presentation by Todd Benni of McDonald Hopkins, LLC followed by a discussion by Committee members sharing helpful tips on handling the new Declaration and Power of Attorney forms.

• On June 5, 2012 the Subcommittee held a free teleconference to discuss obviousness-type double patenting, two recent Board decisions involving this issue, Otsuka Pharmaceutical Co.., Ltd. vs. Sandoz, Inc., Apotex, and Teva Pharmaceuticals (2011-1126, 1127; May 7, 2012) and Eurand, Inc. & Cephalon, Inc. v. Mylan Pharmaceuticals Inc. (2011-1399-1409; April 16, 2012), as well as a 2008 Board decision in Ex Parte Whalen II (Appeal 2007-4421). Chris Paradies of Fowler White Bogs, and Charles Miller of Dickstein Shapiro presented.

• On July 24, 2012, the Subcommittee held a free teleconference to discuss patent eligible subject matter. The

teleconference included a discussion of the Federal Circuit decision in CLS v. Alice (2011-1301; July 9, 2012) and the 101 guidelines issued by the USPTO on July 3, 2012 in view of the Supreme Court’s decision in Mayo v. Prometheus.

• On September 4, 2012, the Subcommittee continued its series of free conference calls, focusing this time on decisions in The Association for Molecular Pathology, et al., v. United States Patent and Trademark office, et al., 653 F.3d 1329 (2011).

• On March 5, 2013, the Subcommittee will hold a free a teleconference on Doctrine of Equivalents, in which Deere v. Bush Hog, and SanDisc v. Kingston, and Brilliant Instruments and Guidetech will be discussed. Members of the Corporate Practice Committee have been invited to participate in the call.

The Subcommittee continues to monitor developments generally in the area of patentability, including subject matter eligibility, anticipation, obviousness, and §112 issues, for the purpose not only of holding regular conference calls to discuss important cases, but also bringing the Association’s attention to them and working with Committee leadership, the Amicus Committee and the Board on developing positions to be taken on important issues.

• For the 2012 Annual Meeting, the Programs Subcommittee prepared a 60-minute CLE program on: (1) declarations and assignments and (2) effective filing date of claims under the AIA. The speakers were Todd Benni, McDonald Hopkins, LLC, Cleveland, OH Stephen Weed, RatnerPrestia, Valley Forge, PA. Paul Kitch of Nixon & Peabody moderated the program.

• The Subcommittee has planned with the Mergers and Acquisitions Committee a joint CLE program for the Spring Meeting in Seattle. The topic of the program is representing a start-up from establishing an intellectual property portfolio through funding and exit strategies. The speakers will be Sabrina Chang of Epicenter, Sharon Barkume of Canrock Ventures, and Keith Grzelak of Wells St. John.

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

Subcommittees: Patentability Issues; Programs; Advocacy; Legislation


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

At the upcoming Spring Meeting in Seattle, the Patent Litigation Committee will hold a joint meeting with the Electronic and Computer Law Committee on “Parallel Lines Intersecting: Interplay Between Patent Prosecution, Post Grant Trials, and Litigation.”

The AIA/Litigation Issues Subcommittee, co-chaired by Alex Goranin and Maya Eckstein, is working with the Program Committee to develop a track on “AIA Issues in Litigation” for the Annual Meeting.

The Damages Issues Subcommittee, co-chaired by Matthias Kamber and Christian Platt, plans to organize a panel discussion on hot-topic damages issues for the Committee meeting at the Annual Meeting.

An ad hoc subcommittee co-chaired by John Marshall and Michael Specht is addressing issues arising from concurrent (or sequential) District Court Litigation and PTO Litigation post-AIA. The Subcommittee intends to prepare a report addressing questions including the extent to which parties maybe be able to rely on District Court litigation successes for claim or issue preclusion within PTO litigations; the weight to be given to court judgments and findings related to validity within a PTO proceeding; and whether statutory estoppels of 35 USC 315(e) and 325(e) should be interpreted with common law principles of claim and issue preclusion, or whether they are to be interpreted more literally.

An ad hoc subcommittee is preparing proposed comments responsive to the PTO’s “Request for Comments on a Patent Small Claims Proceeding in the United States,” for the Board’s consideration. 77 Fed. Reg. 243 (Dec. 18, 2012).

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

Vision, Mission and ValuesThis Committee monitors and provides membership comments on various patent-related activities of the USPTO that may be of interest or concern to the profession or the public. The Committee focuses on the USPTO practices and procedures and their effectiveness in furthering the objectives of the patent system; the statutory and regulatory aspects of USPTO practice with respect to the examination of 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 consideration and evaluation for possible AIPLA comment to the USPTO. The Committee will also be working with the Special Task Force on AIA Rulemaking and other Committees, as needed to assist the Task Force.

Public EducationThe Committee typically invites a USPTO official to major meeting Committee 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 holds joint meetings with other Committees during the major meetings.

For the 2013 Spring Meeting, the Committee, along with the Patent Agents Committee, has requested a USPTO official attend their Committee meeting 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.

Member ServiceThe Committee activity maintains the Committee microsite


to provide information of particular use to the membership.

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

Professional ProgramsChair: Manny W. SchecterVice Chair: Jacques L. Etkowicz

Vision, Mission, and Values The Professional Programs Committee organizes the agenda and speakers for the AIPLA Spring and Annual Meetings with the objective of providing world class IP programs by respected speakers and thought leaders.

Global OutreachThe Professional Programs Committee is currently organizing the 2013 Spring and Annual Meetings. The Spring Meeting agenda is set and session coordinators are busy finalizing and preparing moderators and speakers. The topics for the Annual Meeting are finalized (but for one meeting session that will be held open for the potential insertion of a late breaking topic) and session coordinators were assigned at our meeting during the Mid-Winter Institute.

Subcommittees 2013 Spring Meeting Topic Subcommittee, Jim Hallenbeck, Subcommittee Chair

2013 Annual Meeting Topic Subcommittee, Michael Drapkin, Subcommittee Chair

Professionalism and EthicsChair: Raymond Van Dyke (not pictured)Vice Chair: Rodney K. Caldwell


Public AppointmentsChair: William C. RooklidgeVice Chair: Roger W. Parkhurst (not pictured)

Vision, Mission and ValuesThe Public Appointments Committee, consisting of members chosen for geographical distribution to provide opportunity for personal acquaintance with candidates for office coming under the Committee’s consideration, considers the qualifications of candidates referred to it by the Board of Directors and reports in confidence to the Board of Directors that in its opinion the candidate is qualified and any other information the Committee believes useful to the Board.

AdvocacyThe Committee’s activities support the Board’s efforts in advocating for the nomination and confirmation of particular candidates for office in the federal courts, an aspect of its leadership and unbiased analysis resulting in its perception as a highly sought after and respected thought leader. The Committee recently proposed to the Board expansion of its jurisdiction to include the other branches of government besides the judicial branch. Moreover, the Committee provided the Board with a revised version of its Federal Circuit Judges White Paper and an initial draft of a USPTO Director and Deputy White Paper.


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

Vision, Mission and Values• Develop 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 team 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 WIPO and the USPTO on the Capitol Hill World IP Day celebration targeted for the week of April 22, 2013.

Public EducationThe Committee is working to build upon the work it has done with WIPO and the USPTO in the past on World IP Day by taking the annual Capitol Hill celebration to the public for 2013. This plan is intended to develop into a multiyear program as we build on successes in 2012. The Committee envisions AIPLA, in collaboration with other sponsors, coordinating World IP Day celebrations in many cities and local venues around the country. The celebrations will include coordinated presentations on a given years themed aspect of IP. In 2013, World IP Day presentations and celebrations are being scheduled for Detroit, Denver, Silicon Valley, Dallas, and New York.

The Chair and Vice Chair have met with representatives of the Patent Office to plan the event. The points of contact for the various cities have been established. We have the theme from WIPO and have started outlining the AIPLA portion of the presentation. We have a working copy of a model agenda to be used in each city and expect to have speakers from the AIPLA, USPTO, WIPO (or some kind of recorded message), and a local venue speaker. We are discussing having a panel to bring to life local success

stories and opportunity for developments. The possibility of sharing a message between the venues is being discussed with the USPTO. The end of each presentation may include a mixer and displays showing local creativity. Much of the work on the logistics will be completed by the middle of March. A media plan along with promotional materials will be a developed with the USPTO. We plan on doing a dry run of the presentation with the speakers before the actual presentations are done.

The 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 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 – posted

Trade Secret presentation – posted

Patent presentation – posted

The presentations are now present on our microsite and the Creativity in Bloom Web Site (www.creativityinbloom.org) along with the recorded webinar. Additional presentations directed to non-school aged audiences are being developed and tested. We also anticipate having a version of the presentation prepared for World IP Day added to the sites and useful in other settings.

The Committee is reaching out to various national organizations having an interest in learning more about intellectual property to utilize their distribution network to increase the public awareness of intellectual property.

The Committee continues to coordinate with the USPTO and to participate in public outreach efforts of the USPTO, including programs devoted to educating the public about trademarks and patents. For example, the Vice-Chair did a presentation on the legal aspects of intellectual property for entrepreneurs at the satellite office of the PTO in Detroit, Michigan in late December. Representatives from PTO and the Small Business Administration were also present and spoke. The presentation will be made available for similar programs that will be taking place at other Satellite Offices in the near future as they open and reach out to the local inventor communities.

Member ServiceThe Committee has substantially updated its microsite and has provided ready access to public education materials that have been developed. 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 process of automated distribution with tracking to facilitate survey feedback has recently been implemented. Further, the Committee has undertaken the use of online training sessions introducing the materials to the membership. The Committee also plans to advertise them in daily communications associated with AIPLA meetings and in the AIPLA daily or weekly e-mail communications to the membership and that is our next step, particularly since a link to the recorded version of its recent webinar is available on the Committee’s microsite.

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, 2013 World IP Day, the Committee microsite and the Creativity in Bloom website, and materials developed for use by the AIPLA membership.

Subcommittees:Youth Education- Elexis Jones

Business Education – Dave Carlson

Website Development – Michael Stewart

Special Committee on IP Practice in IsraelCo-Chair: William H. MandirCo-Chair: David R.M. Colb (not pictured)


Special Committee on LegislationCo-Chair: Ann Mueting Co-Chair: Griffith B. Price, Jr. (not pictured)

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 the relevant substantive law committees on legislative proposals.

The Special Committee on Legislation 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 of AIPLA in advocating on the Congress.

The Special Committee on Legislation 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 to the Board and the leadership of the Association commentary and views of the membership on various legislative proposals.

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 the substantive law 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 Special Committee on Legislation is currently monitoring


several issues, including: possible further amendments to the America Invents Act (AIA); intellectual property issues in bankruptcy, trademark issues, including protection of well-known marks and trademark remedies, and trade dress protection; fashion design protection; orphan works; antitrust scrutiny of reverse payments; federal trade secrets protection; and other issues on which the Board has requested assistance from the Committee.

Member ServiceThe Special Committee on Legislation 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.

SubcommitteesThe Special Committee on Legislation addresses issues, in coordination with substantive law committees, in various areas, including:

Copyright Industrial Designs Patents/Litigation PTO/Agency Practice Trademark

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


Trade Secret LawChair: Janet Craycroft (not pictured)Vice Chair: John F. Marsh


Trademark InternetChair: Mark V.B. PartridgeVice Chair: Janet M. Fuhrer (not pictured)


Trademark LawChair: Kristin Jordan Harkins (not pictured)Vice Chair: Jennifer L. Kovalcik

Vision, Mission and ValuesThe mission of the Trademark Committee includes educating its members about changes in trademark law in the US and abroad; providing educational content and resources for AIPLA members; serving as a resource for other Committees in areas of trademark law; providing opportunities for meaningful volunteer work and being a training ground for


future leaders of the organization.

AdvocacyThe Trademark Committee works through its Amicus liaison and the Special Committee on Legislation on judicial and legislative advocacy matters. We also concentrate this work with our Legislation Subcommittee.

Public EducationThe Trademark Committee participated last year in educational efforts with the USPTO. We have prepared annual CLEs for Trademark Examining Attorneys. We also work with the Rapid Response Team through our rapid response liaison. We have sponsored annual Trademark Boot Camps.

Member ServicesIncreasing its membership is one of the Trademark Committee’s areas of focus. We are continuing to work on an evaluation of our existing membership roster and Subcommittee roster, planning on a survey of the membership on how to provide content and service our members’ wants and needs, and also a campaign to increase active involvement of existing members as well as recruiting efforts for new members.

Global OutreachThrough the Trademark Treaties and International Law Committee, the Trademark Committee engages with other Committees focused on international law matters. Trademark Committee members also engage in professional programming and reinforce the importance of considering international trademark issues.

We are always open to volunteers, so if you are interested in getting involved, please contact Kristin Jordan Harkins or Jennifer L. Kovalcik.

Subcommittees:Membership

Communications

Sports & Entertainment: Lou Perry, Chair; Mike Ballard, Vice Chair

TM Boot Camp 2013: Jennifer Kovalcik, Chair; Mike Ballard, Vice Chair

Social Media

On-Line Programs Liaison

Legislation

False Advertising

Technology/Microsite: Lou Perry, Chair; Beth Wolfson, Vice Chair

Rapid Response Liaison

Amicus Liaison

Professional Programs Liaison

Trademark LitigationChair: Stephanie H. BaldVice Chair: John Crosetto (not pictured)


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



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


US Bar – European Patent Office Liaison CouncilAIPLA Delegates: Michael K. Kirk John B. Pegram

The purpose of the US Bar – EPO Liaison Council is for delegates from US IP organizations to meet annually with EPO officials as users of the EPO system.

This year, the Council has accepted an invitation from EPO President Battistelli to attend the EPO 40th Anniversary on October 17, 2013, with the Council’s meeting at the EPO on the following day.

The AIPLA delegates coordinate their work with AIPLA leadership and the IP Practice in Europe Committee. John Pegram joined that committee’s European trip on March 11-15, 2013, including a meeting at the EPO.

US Bar – Japan Patent Office Liaison CouncilAIPLA Delegates: Christopher Chalsen Paik Saber

An internal meeting of US delegates to the JPO Liaison Council was conducted during the AIPLA Mid-Winter Meeting in Tampa. AIPLA delegate Chris Chalsen was in attendance as well as AIPLA Deputy Executive Director for International and Regulatory Affairs Albert Tramposch, Board member Chen Wang and other distinguished AIPLA members. The agenda for the meeting was developed by Liaison Council Chair Uwe Szipl and included: (1) Liaison Council membership issues; (2) advanced planning for the upcoming June, 2013 meeting with the Japan Patent Office in Tokyo (including proposed meeting logistics and discussion topics); and (3) discussion regarding a potential meeting in June with the IP High Court in Tokyo, which hears appeals from JPO as well as from the Tokyo area district courts in IP cases. Volunteers were solicited to work on certain discussion topics. Another meeting of the Liaison Council is expected to take place around the time of the AIPLA Spring Meeting.

USPTO Inter Partes Patent ProceedingsChair: Brad PedersenVice Chair: Steven M. Auvil

Vision, Mission and ValuesThe areas of responsibility of the USPTO Inter Partes Patent Proceedings Committee include all aspects of post-grant patent practice in the US, including interferences, post-grant review, inter partes review, inter partes reexamination, ex parte reexamination, supplemental examination, derivation proceedings, transitional program for covered business method patents, and reissue proceedings.


The Committee plans to continue to study issues raised by the Final Rules and Practice Guidelines for the Trial Division of the Patent Trial and Appeal Board, and by the members of the Committee, related to post-grant proceedings in the USPTO. The Committee will consider Trial Division decisions and orders, Federal Circuit opinions, possible legislation relating to post-grant proceedings and potential additional rule changes concerning formal and substantive issues concerning such proceedings. After receiving approval from the Board, the Committee will report any approved recommendations to the USPTO and the Trial Division, as appropriate, on behalf of the AIPLA.

AdvocacyThe Committee continues to provide comments and advice to the AIPLA Board as requested, particularly pertaining to rule making under the America Invents Act.

Public Education & Member ServiceThe Committee continues to seek out opportunities to share its expertise with AIPLA as a whole by means of CLE programs. Further, the Committee continues to maintain and cultivate open communications with the PTAB Trial Division concerning issues pertaining to the Committee’s activities.

The Committee is continuing coordination with other AIPLA Committees on education and advocacy related to post grant and other contested cases, including interferences, inter partes review, post-grant review, derivation proceedings, covered business method patent proceedings, supplemental examination, ex parte reexamination, and inter partes reexaminations that are now winding down.

The Committee will present a 90-minute CLE panel discussion as part of the Committee meeting for the Spring Meeting. Lead Judge Michael Tierney of the Trial Division, along with practitioners Greg Gardella, Bruce Stoner and Steven Auvil will present information on the new review proceedings and what has been learned from the initial proceedings so far. The Committee is also working with the Planning Committee on coordinating one of the main sessions focused on the new review proceedings as part of the 2013 Annual Meeting.

The Committee continues to work on encouraging broader participation and communication on the Committee during this period of changes brought about by the new review proceedings, including more extensive use of the electronic communications with the Committee membership and possible sharing our monthly telephone call with the companion Committee of the IPO.

The Committee expects to continue with an active and expanding year, particularly as initial experiences with the new post-grant proceedings by the Trial Division are reported.

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

Vision, Mission and ValuesThe Women in IP Law Committee is focused on developing substantive and relevant programming that focuses on and promotes women in IP law. In addition, the Committee seeks to develop leadership opportunities within AIPLA for female members.

AdvocacyThe Committee has a number of programs planned that advocate for women in the profession. In particular, the Committee hosts programs at the three major meetings, in addition to free webinars between the meetings and the National Networking dinners that take place each May. At the 2013 Annual Meeting, the Committee will be presenting the findings of Dr. Annette Kahler related to the last two AIPLA membership surveys, and the Committee will lead a discussion that will result in the development of an action plan to increase engagement of women in leadership positions in the profession.

Public EducationAs noted above, the Committee hosts a number of free webinars on topics of interest to female members and hosts the National Networking events to help educate the public about AIPLA and the benefits of membership.

Member ServiceIn addition to the webinars, programs at the major meetings, and National Networking events, the Committee produces a quarterly newsletter, has an active LinkedIn group, and also administers a blog and Facebook page to keep our members engaged and informed.

Global OutreachIn recent years the National Networking receptions have expanded to include international locations including events in Canada and Hong Kong.

Subcommittees: Advancement and Retention (Meg Boulware),Electronics and Communications (Randi Karpinia), and the National Networking Dinners (Carine Doyle).



New MembersREGULAR

Franklin AbramsQueensbury, NY

Bing AiSan Diego, CA

Benjamin AlleyAnderson, SC

Seth AppelChicago, IL

Joel ArdSeattle, WA

Eric BabychChicago, IL

Jennifer BallBellevue, WA

Daniel BarskyWest Palm Beach, FL

James BellParis, France

Lisa BenadoBellevue, WA

Kelly BenderBridgewater, NJ

Donna BestMemphis, TN

David BirSouthfield, MI

Mike BoeveShakopee, MN

Alice BonnenRaleigh, NC

Mark BooksBridgeton, MO

R. BrittianKnoxville, TN

Margaret BrivanlouNew York, NY

Brian BrownLanham, MD

Joshua BrownOrlando, FL

Elizabeth BurkhardBoston, MA

Alexandra CapachiettiBoston, MA

Todd CasonDallas, TX

Jeffrey CastellanoWilmington, DE

Talivaldis CepuritisChicago, IL

Sabrina ChangRedwood City, CA

Jade ChaoPalo Alto, CA

Steve ChoMountlake Terrace, WA

Catherine ClaytonNew York, NY

Chad CoberlyEast Grand Rapids, MI

Hilde CoeckxSherwood, OR

Roy ColemanWaltham, MA

Sean ConnollyOmaha, NE

Brian CowanShreveport, LA

Mary CritharisWashington, DC

Michael CroninMadison, WI

Jeffrey CutlerAnderson, SC

Roberto de LeonCypress, TX

Lisa DejacoLouisville, KY

Charles DeMartinoWhite Plains, NY

Anthony DovaleRoswell, GA

Katherine DrakosRedmond, WA

Jeffery DuncanWoodridge, IL

Joshua DurhamCharlotte, NC

Edward ErgenzingerRaleigh, NC

Carson C. FinchamRidgefield, CT

Benjamin FinkAtlanta, GA

Christopher FrancisRoyal Oak, MI

Russell GacheBirmingham, AL

Sarah GaganBoston, MA

Darin GibbyDenver, CO

Keith GilmanWestfield, NJ

Sandra GodseySan Diego, CA

Paul GosnellIndianapolis, IN

Neelakshi GovindSan Francisco, CA

Howard GreenwaldRochester, NY

Mason GrossAustin, TX

C. HamburgNew York, NY

George HarrisFort Worth, TX

Thomas HedemannHartford, CT

John HermanAtlanta, GA

Krista HosmerSouthfield, MI

Clayton JamesDenver, CO

Thomas JenkinsChicago, IL

Tracy JohnsonCleveland, OH

Robert KapalkaWilmington, DE

Brian KearnsPlano, TX

The following applications for membership are being published as of May 22, 2013 in accordance with Article II of the By-Laws. We welcome all of our new members.


Alison KesslerParsippany, NJ

Pam KilBellevue, WA

Michael KingSeattle, WA

Michelle KnightTroy, MI

Brian KramerSan Diego, CA

Raj KrishnanCoppell, TX

Jennifer KurczChicago, IL

Bruce LathropMonrovia, CA

Marylou LavoieSimsbury, CT

Brandon LeeGrand Prairie, TX

Benjamin LehbergerStamford, CT

David LeichtmanNew York, NY

James LennonWilmington, DE

Andrew LeonSeattle, WA

Chen LiangBellevue, WA

James LilesCincinnati, OH

Ronald LiuPlano, TX

Iman LordgooeiPalo Alto, CA

Adrienne LoveTallahassee, FL

Michelle MacartneyBellevue, WA

Brian MalmDulles, VA

C. MartinBoonville, IN

Robert McAlhanyNashville, TN

Paul McAndrewsChicago, IL

Mitchell McCarthyEdmond, OK

Mark McDougallCleveland, OH

Edward MeagherMelville, NY

Alejandro MenchacaChciago, IL

Blaine MerrittReston, VA

Andrew MichaelsWashington, DC

Kent ModesittDenver, CO

Steven MorganDhahran, Saudi Arabia

Ryan MorrisonBellevue, WA

Indranil MukerjiWashington, DC

Jason MurataHartford, CT

Justin MurrayHouston, TX

Kristin NeumanLarchmont, NY

Michael NewmanBoston, MA

Tiep NguyenAlexandria, VA

Neil NydeggerSan Diego, CA

Deanna OkunWashington, DC

Ragnar OlsonLincolnwood, IL

Tricia OlsonMinneapolis, MN

Jeffrey ParryBoise, ID

Dennis PrahlNew York, NY

Frederick PriceSyracuse, NY

Vesna RafatyRichardson, TX

David RandallLos Angeles, CA

Kevin RobbCarmel, IN

Jason RockmanWashington, DC

Antonia RodgersFort Gratiot, MI

Thomas RosselliMelville, NY

Jeremy SandersBellevue, WA

William SartorOrlando, FL

J. Bruce SchelkopfZionsville, IN

William SchmidtWashington, DC

Kenneth SeamanCharlotte, NC

James SfekasRedmond, WA

Alicia ShahChicago, IL

Charulata ShahDeerfield, IL

Tim ShattuckSioux Falls, SD

Stephen SlusherCranbuy, NJ

James SmithPeoria, IL

Michael SmithFalls Church, VA

Paul SmithWashington, DC

Eric SollerPittsburgn, PA

Todd SpaldingPennington, NJ

Thomas SpeissSanta Monica, CA

Byron SpringerBellevue, WA

John StrandBoston, MA

Sushupta SudarshanCincinnati, OH

Paul TaskierWashington, DC


Robert ThomasRaleigh, NC

Kyriacos TsircouLos Angeles, CA

Kenneth VankoWheaton, IL

Lance WalkerPortland, ME

Edmund WalshBoston, MA

Eric WardRochester, NY

Ronald WardPlano, TX

Damian WasserbauerMiddletown, CT

Robert WassonVancouver, WA

Nathan WeberMelville, NY

Neal WeinrichAtlanta, GA

Michael WierschTokyo, Japan

Jason WietjesDallas, TX

Patricia Wilczynski BrozekHuntington, NY

Joseph WilliamsMinneapolis, MN

Lisa WillisNew York, NY

Gregory WinskyHaddonfield, NJ

Thomas WongRedmond, WA

Jill WoodburnPortage, IN

Douglas YerkesonIndianapolis, IN

Jennifer YokoyamaBeaverston, OR

Steven YovitsChicago, IL

Arthur ZorioReno, NV

ACADEMIC Johanna DennisBaton Rouge, LA

Vicenc FeliuVillanova, PA

Roger FordChicago, IL

Christi GuerriniChicago, IL

Ryan VaccaAkron, OH

FOREIGN Nidhi AnandNew Delhi, India

Timothy BourneOttawa, ON, Canada

Vadim ChaginSt. Petersburg, Russia

Faisal DaudpotaDubai, United Arab Emirates

Gerard DossmannParis, France

Martin EarleySydney, Australia

Felix EinselTokyo, Chiyoda-ku, Japan

Luis Fernandez NovoaMadrid, Spain

Vianney GutierrezMexico City, Mexico

Chloe HollowayMexico City, Mexico

Elana KondakovaMoscow, Russian

Koji MuraiOsaka, Japan

Jonathan PalmerLondon, United Kingdom

Dhalia Maria RajãoRio de Janeiro, Brazil

David ReadLiverpool, United Kingdom

Tony SimbolonJakarta, India

Fiona StevensLondon, United Kingdom

Jie WangShanghai, China

Simon WrightLondon, United Kingdom

GOVERNMENT Daniel BaumBerkeley, CA

Jonathan CarrSalt Lake City, UT

June CohanAnnandale, VA

Lalita HamiltonThe Woodlands, TX

Kermit JonesWashington, DC

Scott KellyWashington, DC

Richard LambertWright Patterson AFB, OH

Paul SavereideMinneapolis, MN

JUNIOR Juliet AlcobaMiami, FL

Amanda BakerWashington, DC

John BaldiniHackettstown, NJ

Sarah BassettSalt Lake City, UT

Matthew BerntsenCos Cob, CT

Jamie BerthaWashington, DC

Katherine BorunBellevue, WA

Samuel BreezeSpokane, WA

Marlena BurtAtlanta, GA

Caroline CampNew York, NY

Derek CasperPlano, TX

Jillian CentanniNewark, NJ

Eric ChadMinneapolis, MN

Sangeeta CheemaHouston, TX

Jeremy ClayJackson, MS

Donald ColeChicago, IL


Jennifer CornelyWashington, DC

Shana CyrWashington, DC

Eryn DebloisBohemia, NY

Pier DeRooWashington, DC

Michael FaganFort Worth, TX

Katherine FrancoAustin, TX

Eugene GoryunovChicago, IL

Charles GrayCleveland, OH

Michael HayekSterling Heights, MI

Daniel HegnerTroy, MI

Michelle Iwamoto-FanWhitestone, NY

Eric JanssonRacine, WI

Benjamin JohnsonAustin, TX

Brad JohnsonPlano, TX

Laura JohnsonBoston, MA

Morgan JonesNewark, NJ

Michael KentDes Moines, IA

Dimitry KheyfitsNew York, NY

Paul KimWashington, DC

Kenneth KnoxAtlanta, GA

Gary KooOsaka,

Jason LambrightDayton, OH

Bryant LeeBethesda, MD

Jessica LewisMadison, WI

Amanda LutzWashington, DC

John LyonAtlanta, GA

Robert MacKichanWashington, DC

Kathryn McDonaldMinneapolis, MN

Vid Mohan-RamBoise, ID

Clint MorinSalt Lake City, UT

Hala MouradWashington, DC

Jeffrey MulrooneyPittsburgh, PA

Aparna NemlekarPittsburgh, PA

Daniel O’BoyleNew York, NY

Jonathan OlingerAtlanta, GA

Chad PahnkeChicago, IL

Shea PalavanHouston, TX

Christopher PavlowBoston, MA

Julie PengWashington, DC

Adam Poulin-KerstienSanta Monica, CA

John RebmanSaint Louis, MO

Joseph RichinsAnthem, AZ

Allison RichmondGreenville, SC

William RothwellHouston, TX

Elina SaviharjuNew York, NY

Joshua SchillerNew York, NY

Bryan SchomerTroy, MI

Nancy SchroederLos Angeles, CA

Cameron SneddonRosharon, TX

Jacob SongIrvine, CA

Julia TanaseNew York, NY

Mark TisonAustin, TX

Royden TullAlexandria, VA

Ellen WeiSan Jose, CA

Sara WhitakerWoodland Hills, CA

Renee WilkersonHouston, TX

Jessica WinchesterAlexandria, VA

Ellen WongBoston, MA

Sarah WongMilwaukie, WI

Stephen WurthChicago, IL

Xiaoxiao XueWashington, DC

Jun YeAlexandria, VA

Matthew YorkManchester, NH

Travis YribarrenCoarsegold, CA

Justin ZahrtSan Jose, CA

Christiana ZhangWaltham, MA

Juan ZhengBoston, MA

PATENT AGENT Jack FijolekNaperville, IL

John GuayWashington, DC

Carl NapolitanoOrlando, FL

John PivnichnyEndicott, NY

Janet SayreChicago, IL


Daniel WhittleBellingham, WA

Christopher YellickChicago, IL

PATENT AGENT - JUNIOR Gregg BanningerIndianapolis, IN

Katrina BergbauerDecatur, GA

Punita BhasinPittsburg, CA

Anne BohanGroton, MA

Matthew ChavezLos Angeles, CA

Henry KeenIowa City, IA

Edmund KoundakjianBoston, MA

Drew PalmerOklahoma City, OK

Lee PhamNew York, NY

Tan Mau WuSeattle, WA

USPTO PROFESSIONALNeil MikeskaAlexandria, VA

STUDENTJames AlexChicago-Kent College of LawBay Village, OH

Darren AltidorPace University School of LawHollis, NY

Colleen BarzykUniversity of Baltimore School of LawLutherville, MD

Bryan BaysingerFlorida State University College of LawCharleston, SC

Jake BerdineGeorge Washington University National Law CenterWashington, DC

Daniel BernardGeorge Washington University National Law CenterWashington, DC

Bianca BlackGeorge Washington University National Law CenterArlington, VA

Djenane BlainDePaul University College of LawChigago, IL

Adam BobelUniversity of San Diego School of LawLake Forest, IL

Bejeir BrooksThomas M. Cooley Law SchoolTroy, MI

Laura BuddUniversity of Oregon School of LawEugene, OR

Tenisha CallenderSuffolk University Law SchoolQuincy, MA

Nathan CamutiChapman University School of LawLake Forest, CA

Francesca CardilloIndiana University School of Law, BloomingtonBloomington, IN

Steve ChaoSanta Clara University School of LawSanta Clara, CA

David CheekYeshiva University, Benjamin N. Cardozo School of LawBrooklyn, NY

Sophie ChenNotre Dame Law SchoolOmaha, NE

Elliott ChoDePaul University College of LawChicago, IL

John ChudobaVermont Law SchoolSouth Royalton, VT

Peter CirrinicioneAve Maria School of LawCape May, NJ

Derek ConstantineGeorgia State University College of LawDecatur, GA

Charles CoxCollege of William and Mary, Marshall-Wythe School of LawWilliamsburg, VA

Daniel DayYeshiva University, Benjamin N. Cardozo School of LawNew York, NY

Frank DeLucciaSyracuse University College of LawNorth Wales, PA

Matthew DryLouis D. Brandeis School of LawLouisville, KY

Cynthia DuncanStetson University College of LawTampa, FL

Paige ElbeSaint Louis University School of LawBelleville, IL

Khouloud ElmasriThomas Jefferson School of LawSan Diego, CA

Dewight FlinchHoward University School of LawSilver Spring, MD

Yumi FurukawaUniversity of Washington School of LawSeattle, WA

Toshiya FurushoUniversity of Washington School of LawNew York, NY

Andrew GoldbergCornell Law SchoolBoston, MA

Victoria GroffDrexel University School of LawPhiladelphia, PA

Clement HayesSt. Mary’s University of San Antonio School of LawSan Antonio, TX

Kurtis HendricksLewis and Clark Law SchoolHillsboro, OR

Austin HoltHamline University School of LawWyoming, MN


Stamford HwangGeorge Washington University National Law CenterAlexandria, VA

Bruce JohnsonUniversity of Washington School of LawWoodinville, WA

Erik JohnsonUniversity of Pittsburgh School of LawSt Louis, MO

Shawn JohnsonUniversity of California, Hastings College of LawSan Francisco, CA

Aaron JonesJohn Marshall Law SchoolAtlanta, GA

Molly JonesUniversity of California, Hastings College of LawOakland, CA

Jason KalkirtzJohn Marshall Law SchoolElk Grove Village, IL

James KangRutgers, State University of New Jersey School of LawCliffside Park, NJ

Bassam KareemRutgers, S.I. Newhouse Center for Law & JusticePhiladelphia, PA

Will KaufmannVillanova University School of LawArdmore, PA

Jessica KeirSamford University, Cumberland School of LawHampton Cove, AL

William KudukGeorge Washington University National Law CenterWashington, DC

Tara LayThomas M. Cooley Law SchoolCalgary, AB, Canada

Won LeeHarvard University Law SchoolNewton, MA

Joseph LinaresRutgers, State University of New Jersey School of LawWest Caldwell, NJ

Kassity LiuHarvard University Law SchoolWashington, DC

Sahar MahmoudianSouthwestern University School of LawEncino, CA

Barnwell MarksSanta Clara University School of LawSanta Clara, CA

Bradford MastersMcGeorge School of Law, University of the PacificSacramento, CA

Grant McAdamsUniversity of California at Los Angeles School of LawLos Angeles, CA

Spencer MeadUniversity of Richmond, T. C. Williams School of LawHenrico, VA

Benjamin MerrittUniversity of the PacificSacramento, CA

Michael MontgomeryUniversity of Pittsburgh School of LawMt. Lebanon, PA

Christina MullenDuke University School of LawDurham, NC

Edward NazzaroSt. Thomas University School of LawWest Palm Beach, FL

Necois PennAmerican University, Washington College of LawVienna, VA

Bart PerkinsGeorgia State University College of LawCummings, GA

Daniel PerrySanta Clara University School of LawSanta Clara, CA

Emily PooleUniversity of San Francisco School of LawSan Francisco, CA

Emily PuchalskiUniversity of Minnesota Law SchoolMinnetonka, MN

Christopher QuirkRutgers, State University of New Jersey School of LawSewell, NJ

Nate RamanathanWhittier Law SchoolVista, CA

Chelsea RatcliffStetson University College of LawTampa, FL

Jeffrey RoeserUniversity of Houston Law CenterHouston, TX

Bradley RybaJohn Marshall Law SchoolRound Lake Beach, IL

Uriel SantiestebanUniversity of Maryland School of LawBaltimore, MD

Giancarlo ScacciaYeshiva University, Benjamin N. Cardozo School of LawWestbury, NY

Cory SchugQuinnipiac College School of LawMelville, NY

Calvin ShankHarvard University Law SchoolSomerville, MA

Alexander SheiSanta Clara University School of LawCupertino, CA

Jayson SohiUniversity of San Francisco School of LawSan Francisco, CA

Robert SoveskyDuquesne University School of LawSharon, PA

James StewartSeattle University School of LawShoreline, WA

Maria StubbingsUniversity of Maryland School of LawBaltimore, MD


Cory SzczepanikThe University of Michigan Law SchoolAnn Arbor, MI

Daniel TaskalosUniversity of San Diego School of LawSan Diego, CA

Koji TauchiUniversity of Washington School of LawSeattle, WA

Ryan TeelThe University of Michigan Law SchoolSalisbury, NC

Ali TehraniGeorge Washington University National Law CenterWashington, DC

Ehrin TendrickJohn Marshall Law SchoolOak Park, IL

Ashish ThomasEmory University School of LawDecatur, GA

Garrett TozierUniversity of Florida College of LawTampa, FL

Anthony VassilevNew York University School of LawNew York, NY

Christine VicariStetson University College of LawTampa, FL

Christopher WehrlyYeshiva University, Benjamin N. Cardozo School of LawNew York, NY

Andrew WellmanStetson University College of LawGulfport, FL

Michael WidzinskiJohn Marshall Law SchoolEvanston, IL

Joseph WolfeVillanova University School of LawBryn Mawr, PA

Andrew WuUniversity of California at Berkeley School of LawBeverly Hills, CA

Lei XuUniversity of Connecticut School of LawCheshire, CT

Linjun XuUniversity of Chicago Law SchoolChicago, IL

Ying-Zi YangFordham University School of LawForest Hills, NY

Zelin YangUniversity of California at Berkeley School of LawFremont, CA

Denis YanishevskiyVillanova University School of LawWarminster, PA

Dominic YeeSuffolk University Law SchoolCambridge, MA

Announces The:

2013RobeRt C. Watson Competition

How to Enter:Law students are encouraged to submit an article on

an IP topic, written on or before June 30, 2013. 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, 2012.

The winner will receive reasonable expense

reimbursement to attend the AIPLA Annual Meeting,

October 24-26, 2013 in Washington, DC, to receive

their award.

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, 2013.

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.

Submit articles to:

American Intellectual Property Law AssociationWatson Award Competition

[email protected]

Award: $2,000Submission Deadline: June 30, 2013

The award will be presented Friday, October 25, 2013 during the AIPLA Annual Meeting Luncheon in Washington, DC.

For More Information, Visit www.aipla.org/resources

recognizing law students for outstanding articles on IP law


Mark Your Calendar...

2013

October 24–26, 2013 Marriott Wardman Park Hotel Washington, DC

Here’s a sneak peek at topics: » AIA & Patent Litigation & Prosecution » Trademark Fair Use » IP Issues Facing Government R&D Contractors » Evolving IP Rights in China » Trade Secret Litigation » International IP Specialty Courts

Plan now to attend!


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

Documents

AIPLA 2013 Mid-Winter Institute eBulletin