Outgoing AIPLA President Bill Barber on the AIA, IP advocacy and amicus briefs
Patent reform, a new committee for judges and the public backlash against SOPA and PIPA made 2012 an eventful year for outgoing AIPLA President Bill Barber
Last year, you mentioned one of your top priorities was monitoring the implementation of the AIA. What have you achieved in relation to this and what still needs to be done?
The implementation of the AIA has been a major effort for us over the past year. I think we have had a lot of success on that. We created a task force and we participated on a committee of experts. That task force was extremely busy preparing and responding to proposed rules packages over the last year. There were around 20 proposals that we responded to, and many were quite voluminous. I think some of our comments had an impact and affected the final rules.
In particular, there was a set of rules relating to the statute of limitations for disciplinary action for attorneys practicing before the USPTO. Those were very problematic. In the final rules, the Office largely agreed with us and changed the rules accordingly.
"The implementation of the AIA has been a major effort for us over the past year"
There were also proposed rules on the AIA provisions relating to filing an inventor’s oath or declaration that we believed were inconsistent with the reforms permitting filing by assignees. We made proposals relating to those and in the final rules our provisions were largely followed.
In some of the others we didn’t get everything we wanted, but we are still very active in advocating our views. We drafted extensive proposals relating to the post-grant review proceedings and that’s still a work in progress. There has also been a lot of concern in the patent community about how high some of the proposed fees are and we are still responding to that.
Another priority you defined was raising public awareness of IP. SOPA and PIPA achieved this, but created a lot of anti-IP sentiment. Do you think the IP community can learn anything from that reaction?
One thing we have learned is how powerful the internet community can be when it gets mobilized. Online counterfeiting certainly is a big issue. We are generally supportive of legislation against counterfeiting. SOPA and PIPA are on hold and I think some of the backlash raised some valid concerns about certain provisions in the bills. We are interested in working with Congress to develop balanced legislation to deal with these issues.
We are still working on improving public perception of IP generally. It’s still in a formative stage, but we have a website called Creativity in Bloom. We also created a Rapid Response Team so that if an article comes out that’s negative with respect to IP we have a team of very talented writers that can respond.
Have you been working on any notable amicus briefs?
I think some of the amicus briefs we have submitted were quite influential. There were two cases that raised similar issues and were decided by the Federal Circuit in a single consolidated decision: Akamai Technologies v. Limelight Networks and McKesson Technologies v. Epic Systems. We submitted an amicus brief relating to divided infringement, where more than one entity is involved in steps of the patent claim. We had argued that infringement doesn’t require that a single entity performs all the steps, and the decision agreed in the context of induced infringement. The decision didn’t go as far as we would have liked but some of our views were taken into account.
We also submitted an amicus brief in the Kappos v. Hyatt case, dealing with appeals of Patent Office decisions to district courts. The Supreme Court’s decision was consistent with our views.
What other initiatives have you been working on?
We have been very active in the international arena over the last year. We are in the process of taking on a new role related to the U.S. national group for AIPPI (the International Association for the Protection of Intellectual Property). AIPPI-US is now a division of AIPLA. That’s a major development and I think it will be mutually beneficial.
There’s a group called the IP5. It’s comprised of the European Patent Office, the Japan Patent Office, the Korean Intellectual Property Office, the State Intellectual Property Office of the People’s Republic of China and the United States Patent and Trademark Office. We had our first meeting with the IP5 offices in France in June. The IP5 has an industry advisory group, and AIPLA is a major player.
"AIPPI-US is now a division of AIPLA. That’s a major development and I think it will be mutually beneficial"
We also participated in the talks surrounding the Beijing Treaty on Audiovisual Performances, which will require performers to give their permission before their work can be exploited in recordings. After 12 years of negotiation, the Treaty was finalized and signed by WIPO member states, which is something we consider a great success for IP owners.
Domestically, we are working on a number of amendments we would like to see to the trademark statute. We have also been involved in a national pro bono patent initiative, which is intended to benefit individual inventors and small businesses that just can’t afford patent attorneys.
In our strategic plan we are still looking at all facets of AIPLA to see what else we can do to improve the organization. We are looking at our education programs, our governance structure and our promotional and educational materials for members.
Another new thing we are just starting to implement now is that we have created a new membership category and committee for judges. We are now trying to encourage judges to join that committee.
Are there any criteria for the judges you are hoping to join the committee?
The committee is open to both federal judges and administrative judges, such as those from the USPTO. As long as they are a full time judge, they are eligible to join.
As a practical matter I think judges who are involved in IP are going to be most interested. We will be focusing on judges who are involved in patent pilot programs around the country. I think they are good candidates to join. The committee is going to be chaired by Chief Judge Randall Rader from the Federal Circuit and Judge Lorelei Ritchie from the USPTO.
Which of the Annual Meeting sessions are you most looking forward to?
The initial programs on Thursday morning will be amongst the highlights of the AIPLA conference. USPTO Director David Kappos is going to be there to talk. The luncheons are also a highlight. On Friday, Judge Kathleen O’Malley of the Federal Circuit is going to be speaking and it will be a pleasure to have her there.
Now that you’re passing on the presidency to Jeff Lewis, what’s next for you?
I am going to stay active in AIPLA, and will be on the Executive Committee for one more year. We have a number of trademark initiatives we are working on, so, as a trademark specialist, I will stay involved with those and work to get them through Congress
This interview was first published in the AIPLA Daily Report. Download the AIPLA Daily Report, published by Managing IP from Washington, DC from our conference newspapers page.