AIPLA Electronic and Computer Law Committee Report and Workplan. COMMITTEE NAME: Electronic and Computer Law Committee

Transcription

1 AIPLA Electronic and Computer Law Committee Report and Workplan DATE: January 12, 2015 MEETING: 2015 Mid-Winter Meeting Orlando, FL COMMITTEE NAME: Electronic and Computer Law Committee COMMITTEE LEADERSHIP: Michael Dunnam, Chair; John Salazar, Vice-Chair SUBCOMMITTEES: See appended subcommittee listing VISION, MISSION, and VALUES: The 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 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 by 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 committee s commitment to education, outreach, member service, and advocacy by way of our annual Electronic and Computer Patent Law Summit and annual Partnering in Patents Program with the USPTO. Further, the registration fee for the Electronic and Computer Patent Law Summit, thanks to our efforts to obtain financial support from law firms and community-focused patent law associations throughout the country, is a very low cost when compared to comparable programs. By obtaining the financial support from law firms and communityfocused patent law associations, we are not only able to keep the registration fee low, we are also gaining buy-in from the sponsoring firms and associations thereby expanding our reach and building a stronger, more cooperative IP community. As also detailed below, the ECLC has partnered with the New 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. Thus, for at least these reasons, it is respectfully submitted that the ECLC actively and successfully seeks to fulfill the missions of both the AIPLA and the committee while meeting the vision and adhering the values of AIPLA.

2 PROJECTS: Past Efforts and Plans for upcoming meetings: 2014 Mid-Winter Meeting Participant in the Committee Expo 2014 Spring Meeting Networking Reception with the New Lawyers, Biotechnology, Diversity in IP Law, Education, and Mentoring Committees Committee Leadership Meeting 2014 Annual Meeting 21 st Annual Partnering in Patents program held at the USPTO on October 22, 2014 Annual Committee Leadership and USPTO Tech Center Directors Luncheon held at the USPTO on October 24, 2014 Joint Committee Session with USPTO Inter Partes Patent Proceedings Committee o Presentation on Trial Section of PTAB and practice tips on new review proceedings Committee Leadership Meeting held on October 24, 2014 Plans for coordination between stated meetings: The ECLC utilizes the Lyris list to stay in touch with the membership between meetings and to distribute newsletters (with links to the ECLC microsite). The ECLC leadership has teleconferences as needed and exchanges amongst the leadership group and subsets thereof on a frequent basis. The ECLC also conducts the annual Electronic and Computer Patent Law Summit each year as well as a teleconference in late spring with the USPTO technology center directors as discussed elsewhere herein. The last teleconference was held on May 21, Plans for communication with the committee clusters/board liaisons: The ECLC stays in contact with certain other committees, such as for partnering in committee programming at stated meetings. This is an ongoing effort. ADVOCACY: The ECLC continues to monitor major case law and legislation. The ECLC will advise AIPLA and request AIPLA participation as relevant issues arise, particular as to the scope of patentable subject matter. In the recent past the ECLC surveyed our committee on AIPLA positions relating to the scope of patentable subject matter 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. The ECLC maintains a subcommittee that is ready to respond when requested or when the Committee otherwise identifies an issue in need of attention. For example, the ECLC recently drafted and presented to the leadership of the AIPLA a Software White Paper to address the state of patent protection for software upon issuance of the CLS Bank v. Alice case by the Supreme Court in June Additionally, the ECLC has provided input in response to USPTO Federal Register Notices, drafted letters in response thereto, and represented AIPLA at Software Partnership Roundtable events. In this regard, our committee is currently soliciting comments regarding the 101 Guidelines issued on December 16,

3 2014 for submission to the leadership by January 23, Our committee will also be represented by our vice-chair, John Salazar, at the USPTO s Software Partnership meeting on January 21, In addition, our committee is working with the Biotech committee to present a webinar on February 12 and 19, 2015, on the 101 guidelines that were released December 16, We also plan to revise the Software White Paper once we get feedback from the AIPLA leadership. PUBLIC EDUCATION: The ECLC organized the 2014 Electronic and Computer Patent Law Summit held in Chicago in June The Summit included nationally recognized speakers including Professor Shubha Ghosh, University of Wisconsin Law School; Caroline Dennison, USPTO; Professor Daryl Lim, John Marshall Law School; Valentina Boyet, SAP; Walt Karnstein, Hewlett-Packard; Matthew Weinstein, Accenture; and Professor David Schwartz, IIT Chicago-Kent College of Law. The event had over 70 participants in attendance. The ECLC has also started planning the 2015 Electronic and Computer Patent Law Summit to be held in Dallas, Texas at the SMU Law School. In recent years, the ECLC has been active in hosting webinars on topics of interest to the ECLC. As noted above, our committee has engaged with the Biotech Committee to prepare a webinar for presentation on February 12 and 19, 2015, to discuss the 101 Guidelines issued on December 16, 2015 but the USPTO. The ECLC will continue the annual Partnering in Patents program hosted jointly with the USPTO. Planning for the program in 2015 will begin at the Spring 2015 AIPLA meeting. The ECLC will continue to maintain its long standing a dialog with group directors in technology centers corresponding to electronics and computer related inventions. Our most recent roundtable lunch discussion, held last October during the 2014 AIPLA Annual meeting, was the best attended and most productive meeting to date. New initiatives were planned by the USPTO in which the ECLC will actively participate. Our annual teleconference was held on May 21, In particular, our committee has engaged the USPTO to cooperate in helping the USPTO develop the 101 Guidelines and appropriate examples under those guidelines as the case law develops. The ECLC will continue to work cooperatively with the New Lawyers, Women in IP Law, Diversity, and Corporate Committees. For example, the New 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 SERVICE: The ECLC will continue to procure track and committee sessions at upcoming stated meetings. At the 2012 Annual Meeting, the ECLC partnered with the IP Practice in Latin America and IP Practice in Japan Committees. The topics covered included preparation and prosecution of software implemented inventions in the US, Japan, and Latin America. The speakers provided insights in preparation of,

4 procedures for, and special considerations necessary with regard to applications filed in Japan, Mexico, Brazil, and Europe with a brief overview of US practice. At the 2013 Spring Meeting, the ECLC held a joint session with the Patent Law Committee. The topics included presentations and discussions regarding litigation, prosecution, post-grant practice, and intersections there between. At the 2013 Annual Meeting, the ECLC again partnered with the Patent Law Committee to conduct a CLE committee educational session regarding patent eligible subject matter following the CLS Bank v. Alice and Myriad decisions. The moderator was Robert Wilkes of Magna International and the speakers were Bruce Sunstein, Courtenay Brinkerhoff, and Jerry Selinger. The large, allotted room was standing room only. At the 2014 Spring meeting, the ECLC joined in a joint networking reception with the New Lawyer, Biotechnology, Diversity in IP Law, Education, and Mentoring Committees. This event fostered new relationships between our committees and encouraged more people to become involved in the ECLC while enabling participation of all and facilitating greater collaboration within the organization. At the 2014 Annual meeting, the ECLC held a joint committee session with the USPTO Inter Partes Patent Proceedings Committee to discuss recent activities of the Trial Section of the PTAB and practice tips on the new review proceedings. We expect to expand the relationships between our committees in areas of interest to both committees. New for the ECLC in 2013 was 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. Three editions of the newsletter have been published and it has been well received. The ECLC has actually provided information to several committees on how to start a newsletter and has shared templates used in formatting the ECLC newsletter. We will look to increase the publication to at least three times over the next year while also helping other committees to achieve their newsletter goals. The last issue published in early April, The next issue is targeted for publication in January, 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. We expect to modify these committees for 2015 to reflect current areas of activity, such as 101 jurisprudence. 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

5 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 and in AIPLA sponsored trips to Japan and Europe. Additionally, ECLC subcommittees include leaders from outside the US and in-house attorneys from non-us entities.

6 SUBCOMMITTEES: ECLC Leadership and Subcommittees ( ) Chair: Michael Dunnam Vice Chair: John Salazar Secretary: Steve Weed Immediate Past Chair: James Hallenbeck Board Liaison: Nicholas Godici Chairs Emeritus: Jacques Etkowitz Manny Schecter Brad Forrest Mike Stein, David Clark, George H. Gates, Kenneth N. Nigon; Pryor A. Garnett; John P. Sumner; TSC Subcommittee - Liaison to Young Lawyers Chair: Frank Bruno fbruno@gibbonslaw.com Coordinates interactions between ECLC and Young Lawyers Liaison to Women in IP Law Committee Chair: Connie Masters cmasters@outlook.com Coordinates interactions between ECLC and Women Lawyers Committee Liaison to the Diversity Committee Chair: OPEN Coordinates interactions between ECLC and Diversity Committee Liaison to Corporate Practice Committee Chair: OPEN Coordinates interactions between ECLC and Corporate Practice Committee Copyright Subcommittee Chair: David Einhorn deinhorn@bakerlaw.com Addresses issues related to securing copyright protection for computer software. Liaison with the Copyright Committee. Also, make or coordinate at least one presentation during a webinar as coordinated by the Webinar Subcommittee. International Affairs Subcommittee Chairs: Ed Round eround@marks-clerk.com; Jennifer Jannuska jjannuska@dww.com; Tracks changes in the laws of other countries and informs the committee of these changes. Also, make or coordinate at least one presentation during a webinar as coordinated by the Webinar Subcommittee.

7 Patents, Legislative Affairs, and Advocacy Subcommittee Chairs:Jeff Ranck Robert O Connell roconnel@qualcomm.com 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 lynneandersonesq@gmail.com; Mike Stein mstein@bakerlaw.com; 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 wenjieli@us.ibm.com; Addresses issues concerning licensing, transaction, and monetization of electronic and computer technologies. Also, make or coordinate at least one presentation during a webinar as coordinated by the Webinar Subcommittee. Professional Programs Subcommittee Chair: Vice-Chair: Tim Christman tchristman@slwip.com; Vice-Chair: Eamon Wall ewall@walltong.com; Responsible for the educational programs presented by the ECLC during stated meetings and the Electronic and Computer Patent Law Summit. Webinars Subcommittee Chairs: Bea Koempel-Thomas bea@leehayes.com Responsible for on-line education programs presented by the ECLC. Partner with the other subcommittees to develop content. Technology and Business Subcommittee Chair: Sandy Godsey sgodsey@ebay.com 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, make or coordinate at least one presentation during a webinar as coordinated by the Webinar Subcommittee. ECLC Website Subcommittee Chair: Steve Weed sjweed@ratnerprestia.com Maintains ECLC website and dissemination of information to the membership. Electronic and Computer Patent Prosecution Subcommittee Chairs: Tim Bianchi tbianchi@slwip.com<mailto:tbianchi@slwip.com>; 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 shigdon@middletonlaw.com; Francisco Castro Francisco.Castro@arentfox.com; Per Larsen PHLarsen@hollandhart.com; Paul Schramm PMSchramm@hollandhart.com; 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.