Banging on Doors to Ensure Our IP System Fulfills Its Promise for the Future

• Author: Scott F. Partridge
• Position: Scott F. Partridge is chair of the ABA Section of Intellectual Property Law. He is a partner at Baker Botts LLP in Houston, Texas. He specializes in patent, trade secret, and licensing litigation and client counseling in all areas of intellectual property law. He can be reached at scott.partridge@bakerbotts.com.
• Pages: 3-7

Perspective

Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

A

t the start of each new Congress,

politicians return to our nation’s

capital to chart the nation’s

agenda, and policy wonks and regula-

tors contemplate their game plans for

executive, congressional, and regulatory

action. So too does the ABA-IPL Section

spring into action. We analyze and pri-

oritize key issues and, where warranted,

begin making plans to appear before

and/or submit written comments—to

the US Patent and Trademark Ofce

(USPTO), the US Copyright Ofce, the

International Trade Commission and

other federal and international agen-

cies, Congress, and the executive branch.

Even before a new president takes ofce,

the Section typically has submitted a list

of priorities to the presidential transition

team, as we did last December.

How does our Section establish pol-

icy, and then implement it? We start at

the grassroots—our committees and sub-

committees, and sometimes specialized

task forces. They and the ofcers identify

issues, but the work of analyzing issues

and drafting a proposed Section position

begins at the grassroots. We often work

with many interest groups inside and out-

side the ABA to achieve broad support

for our positions—which then enables

us to speak with an inuential, power-

ful, and balanced voice. We frequently

collaborate with other ABA Sections,

including Antitrust, International Law,

Litigation, and Business Law. At times,

the process toward development of policy

may also require approval by all 500 or

so members of the ABA House of Del-

egates (HOD), which is a representative

body comprised of lawyers from virtually

every type of practice and interest group

in the United States. The HOD is respon-

sible for approving ABA-wide policy at

its biannual meetings.

Of course, while we endeavor to

reach a consensus position, it is rare that

we achieve unanimous agreement—not

from our Section’s policy-making par-

ticipants, our membership, or the HOD.

Such a requirement would be an unwork-

able straitjacket. But as we formulate a

position, we consistently aim to stay true

to a couple of fundamental principles:

identifying policy that supports the long-

term health of the intellectual property

(IP) system and what constitutes objec-

tive, conict-free, and helpful positions

that best advance the more immediate

issues we have an opportunity to address.

Also, as the reality of the IP marketplace

and its legal structure change, we some-

times opt to change previous policies and

adapt to the times. But we always remain

cognizant that, when the ABA-IPL Sec-

tion speaks for the ABA, our use of the

ABA moniker gives us both a special seat

at the table and immense credibility. As a

result, we do not speak on every issue; we

choose when our voice will matter most.

And we are careful to make our views

known with a measured frequency that

helps underscore, instead of dilute, the

importance of the ABA voice.

How we go about ensuring that

we remain true to our fundamental

principles and implement policy and

regulatory positions on critical IP issues

is sometimes a lengthy but always care-

ful and measured process. A couple of

examples illustrate how this works.

This past August, the United States

Trade Representative (USTR) announced

its launch of an investigation under Sec-

tion 301 of potential abuses of IP rights by

China titled “China’s Acts, Policies, and

Practices Related to Technology Trans-

fer, Intellectual Property, and Innovation.”

The USTR sought comments from the

public on a wide range of issues, such as

the forced transfer of technology (includ-

ing IP rights) in return for market access,

compulsory licensing, piracy, and coun-

terfeit goods, among other issues. Given

a very short turnaround time for com-

ments, the ABA-IPL Section immediately

went to work with a team of volunteer

experts from our patent, trademark, copy-

right, and IP practice divisions to develop

a position for consideration by Section

Council. Because our China issues and

antitrust committees had been working

extensively with the ABA’s Antitrust Sec-

tion for several years on comments to the

Chinese government on its Anti-Monop-

oly Guidelines on IP Abuses, we were well

positioned to speak from an informed per-

spective. Intensive work by our experts

resulted in draft comments and an impres-

sive 10-page recommendation prepared for

Council’s urgent consideration. A draft let-

ter was then submitted to other Sections of

the ABA, including the Antitrust and Inter-

national Law Sections. As is customary for

this kind of commentary, the other ABA

Sections then had the option of suggesting

changes and objections to the letter before

it could be sent to the USTR. With this part

of the process complete, our Section was

able to submit comments by letter1 and to

testify2 before the USTR and other depart-

ments of the executive branch.

In preparing comments for the USTR,

many volunteer members, including those

on the task force, committees, leaders,

and ofcers, had the benet of review-

ing a rich history of past Section policy to

ensure consistency and develop content.

We spoke to the USTR about forced IP

transfers, compulsory licensing, bad faith

trademark registrations, piracy-enabling

practices, and counterfeiting. As it turned

out, the ABA-IPL Section was the only

major IP law association that appeared.

And because most American entities with

ScottF. Partridge is chair of the ABA

Section of Intellectual Property Law. He is a

partner at Baker Botts LLP in Houston, Texas.

He specializes in patent, trade secret, and

licensing litigation and client counseling in all

areas of intellectual property law. He can be

reached at scott.partridge@bakerbotts.com.

By Scott F. Partridge

Banging on Doors to Ensure Our IP System Fullls Its

Promise for the Future

Continued on page 5