11 PTC Newsl. 1 (1992-1993)

handle is hein.journals/iprolane11 and id is 1 raw text is: 





Ne8wSLOTTOeR
                    Published by the
                    Section of Patent, Trademark and Copyright Law
                    of the American Bar Association
                    Volume 11, Number 1, Fall 1992


chair's letter


  The 1991-92 Association
year was a year of tremen-
dous activity for the intellec-
tual property field and for this
Section. Outgoing Section
Chair Bill Pravel has ad-
dressed these activities in past
issues of the PTC Newsletter
and a complete listing of the
resolutions acted upon dur-
ing the 1992 Annual Meeting
appears elsewhere in this is-    Jack C.Goldstein
sue. However, before reporting on plans for 1992-93,
I do want to mention one or two of the more signif-
icant developments that occurred during the 1992 An-
nual Meeting.
  After considerable debate at our Business Sessions
on Saturday, August 8, 1992, the Section reaffirmed
its support for 1991 Resolution 102-1, which reads:
  RESOLVED, that the Section of Patent, Trademark
  and Copyright Law favors in principle an amendment
  of the United States patent laws to provide that, except
  in cases of derivation, the first-to-file a patent appli-
  cation among rival applicants for the same invention
  is the applicant entitled to a patent if, but only if, the
  foregoing be part of a patent harmonization treaty
  wherein other countries agree to changes in their sys-
  tems sufficiently beneficial to United States applicants
  and their assignees.
  The Section further directed not only the submis-
sion of the above resolution to the ABA House of
Delegates to secure an Association position but also
an effort to rescind prior Association positions,
adopted in 1967, opposing (1) first-to-file and (2)
changes in the United States patent statutes made to
increase uniformity with foreign patent systems, un-
less it be shown that such changes will favorably affect
the domestic operation and effectiveness of the U.S.
patent system.
  Although the first-to-file versus first-to-invent con-
troversy within our Section seems to have reached a
conclusion until the patent harmonization treaty has
been signed, there are still significant issues that need
to be addressed in connection with the proposed treaty.
A recommendation was presented and adopted in San


Francisco authorizing me to call a Special Meeting of
the membership to consider additional resolutions as
may be necessary in order to develop Section posi-
tions prior to the Diplomatic Conference, which is
expected to take place in July 1993.
  Another significant development that took place at
the 1992 Annual Meeting was approval by our mem-
bership of a bylaw amendment to implement a change
in the name of the Section to the Section of Intellec-
tual Property Law. Since this requires a change in the
ABA Bylaws as well, it must be acted upon by the
House of Delegates at the February 1993 Midyear
Meeting and, if approved, will become effective for
the 1993-94 Association year, commencing in August
1993 (on the eve of the Section's 100th birthday!).
  I am especially pleased to report that the Section
has been successful in securing ABA approval of an
ABA amicus curiae brief in support of the petition for
writ of certiorari in Cardinal Chemical Co. v. Morton
International, Inc. The question presented in that case
is whether the Court of Appeals for the Federal Circuit
errs when it vacates a declaratory judgment holding
an asserted patent invalid merely because it deter-
mines that the patent is not infringed. Our Section
has had a great deal of difficulty in meeting the some-
what stringent requirements for the filing of an ABA


Copyright © 1992 American Bar Association                                     Produced by the ABA Press


Copyright @ 1 992 American a -a(r Association


r oduced by the AB Press

What Is HeinOnline?

HeinOnline is a subscription-based resource containing nearly 2,700 academic and legal journals from inception; complete coverage of government documents such as U.S. Statutes at Large, U.S. Code, Federal Register, Code of Federal Regulations, U.S. Reports, and much more. Documents are image-based, fully searchable PDFs with the authority of print combined with the accessibility of a user-friendly and powerful database. For more information, request a quote or trial for your organization below.



Short-term subscription options include 24 hours, 48 hours, or 1 week to HeinOnline with pricing starting as low as $29.95

Access to this content requires a subscription. Please visit the following page to request a quote or trial:

Already a HeinOnline Subscriber?