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The New York Patent Law Association THE NEW YORK PATENT LAW ASSOCIATION VOLUME 20 MAY-JUNE,1981 NUMBER 8 New York Patent Law Association NYPLA Golf and Dinner Outing Continuing Legal Education a Success Weekend Seminar In The Catskills Our Association held its Annual Golf and Dinner Outing on Friday, May 8, 1981, at the Westchester Coun­ Concord Resort Hotel try Club. Nov. 13,14 and 15,1981 Thirty "golfers" tead off Wlder perfectly blue skies and The Association is planning to hold a Continuing Legal beautiful weather conditions, and nearly one hWldred at­ Education Weekend Seminar in the Catskills at the Con­ tended the dinner during which prizes were awarded to the cord Resort Hotel on Friday, Saturday and SWlday, winners. November 13, 14 and 15, 1981. Bob Pollock won the low gross with a score of 82 fol­ The program will include seminars on the implementa­ lowed by Albert Robin with 83. tion of the new Patent Office Rules, and on Recent The winner of the net score was David Just with a score of I?evelopments in Patent and Trademark Law and Litiga­ 94 for a net of 63. tion. Several lovely ladies were among the golfers and each Since accommodations will be limited, all those in­ was awarded a prize. terested in attending should tear off and return the en­ Everyone had a most enjoyable day. closed registration form with the registration fee as soon as possible. Yearbook Address Changes All members are urged to check their addresses in the Inventor Of The Year - 1981 1980-81 NYPLA Yearbook and if a correction or change is The Inventor of the Year - 1981 award is to be pre­ in order, notify Richard G. Berkley, 30 Rockefeller Plaza, sented at a meeting to be called in the second or third week New York, New York 10112, as soon as possible, forinclu­ of October. Watch for additional annOWlcements for the sion in the next issue. The deadline for submitting changes specific time, date, and principle speaker. is August 1, 1981. A copy of each change should be sent at the same time to the Secretary of the Association, John B. Pegram, Davis Hoxie Faithfull & Hapgood, 45 The President's Corner Rockefeller Plaza, New York, New York 10111. I have asked the Editor of the Bulletin to make space available in each issue to afford me an opportWlity to com­ From Minutes of the Board of municate directly with the membership. As I stated at the Annual Meeting, I believe that the Directors Meeting New York Patent Law Association is an association of all on April 7, 1981 patent, trademark and copyright lawyers within its geographic area, whether in corporate or private practice The Treasurer's Report was presented and Wlanimous­ and whether with a large, medium or small firm. I have Iy accepted. been told that there are patent, trademark and copyright The Minutes from the last meeting were accepted. lawyers who are reluctant to join the Association because Jerry Lee reported on the results of the Judges' Dinner they fear it "belongs" to private practitioners or to the and the correspondence received. large law firms. Itseems to me that the diversity of the of­ By motion duly made and seconded, the Board ficers of the Association, and particularly the fact that Wlanimously approved the formation of the NYPLA Paul Enlow, its president-elect, is irl corporate practice, is Foundation, Inc. evidence that such fears are unfoWlded, and I hope that By motion duly made and seconded, the Board you will help me spread the word. Wlanimously approved a motion in favor of pending I anticipate that the forthcoming year will have more legislation entitled "Patent Term Restoration Act." than its share of challenges for our Association. We need Jerry Lee then reported on the current status of the In­ active committees with full complements of hard working ventor of the Year Dinner to be held in the fall and on the members to recommend to the Board the positions which schedule for receiving a delegation from China. the Association should take on the various issues that will By motion duly made and seconded, the Board confront it. I urge all of you who have not as yet submitted Wlanimously voted to recognize the work and extend a a committee preference form to write or call me and let me special note of thanks to Jim Badie for his outstanding ser­ know the committee or committees on which you would be vices as Editor of the Bulletin. willing to serve. Unless time constraints dictate otherwise, AI Haffner then reported on the Ad Hoc Committee of the Association will not take any action on an important the Patent Office Meeting held on March 23, 1981. He issue unless and Wltil all of the relevant committees have noted that among other topics there was a discussion of had an opportWlity to be heard. By serving on a commit­ changes to the Patent Office procedure involving time for t~e, 'you ":i!1 be able to have direct impact on the Associa­ response and the payment of fees. He also noted that the 'bon s pOSItIOn. Continued on Page 2 1 Minutes ofthe Board-Continued from Page 1 missioner will be sought. Another possibility was Judge Patent and Trademark Office has moved the site for its Neis. Hearings on the Re-examination and Protest Rules to the Subsequent letterheads will include the listing of our im­ Crystal City Marriott. mediate past president. Honorary membership will not be extended to the Ex­ From the Minutes of the Board of ecutive Director of the U.S.T.A. This was the last meeting of the 1980-81 Board of Directors' Meeting Governors. Jerry Lee thanked the Board members and of­ on May 18, 1981 ficers for their assistance during the year and those present expressed their appreciation for Jerry's leadership. In addition, Al Haffner and Charles McKenney attend­ ed as guests. The Treasurer's Report was presented and accepted. John P. Sinnott AnalyzeS The list of delinquent members was reviewed and Board Paris Convention History members were asked to contact delinquent members. The reinstatement of Philip Young was approved. John P. Sinnott, Assistant Chief Patent and Trademark No further word has been received from the I.R.S. Counsel for American Standard, Inc. was the featured regarding our tax status. speaker at the April 23, 1981 luncheon meeting of the The minutes of our last meeting were accepted. NYPLA. Mr. Sinnott is the Board of Director's liaison for John Reilly's letter regarding the membership of the the Committee on Patent Law and Practice. Foundation was raised. It was decided to proceed with the Mr. Sinnott began his speech by noting that anumber of Foundation in accordance with the previous-action of the widely divergent proposals have been made for amending Board. ­ the Paris Convention {Convention of Paris for ProteCtion Charles McKenney reported on a proposal to provide of Industrial Property of 20th March, 1883) and the Acts legislation on the enforcement of arbitration agreements. which have modified it. These proposals, which will be The rollowing resolution was proposed: under consideration in Nairobi in the Fall, concern the status of inventors' certificates, preferential treatment for HESOLVED that the New York Patent Law Developing Countries, diselosure of search results in other Association approves in principle court enforcement countries, and general administrative provisions. Mr. Sin­ of agn!Cmentll ealling for compulsory, binding ar­ nott emphasized the value of precedent in judging the hitmtioll of di~J)UwlI. including specifically disputes future and accordingly focused his remarks on the reillting to Infrmgtmumt and/or validity of patents, modifications of the orginal Convention of 1883 and of the oopyn,h •• ur trademark!!. provided that the results six subsequent Acts. or ~uch arbltratitln ~hnll not adversely affect the Mr. Sinnott praised the Paris Convention as having r....ta flf lholle who ftN' nut partieK to the agreement "contributed more to the well-being of mankind than any .rid. _JItMUr. d... A~oc:iadon favors amendment other single international agreement." He noted that the 14 . (} V,S. {:.MW. t., irwludt' a proviilion expressly Convention has been the main legal vehicle helping to '. MftCltitm'Dff (lUIlrt ~llf(JtOOmt'flt (Jf ilUdl lIgretlmenta. bring the world from an age of steel and steam to the D­ modern era of gene splicing and satellite communication. ;}~L /~" ­ ;(1:,<:'"' •.•.. ' A tfwt.i09 to ,ftMlnd tlw ...mudun to limit it to th~ en­ The Convention has adapted to the change in countries' ~i;;~:c'fOlM."t M.rWlRtJm, .~fmtJj on f.ilnlng disputes political structures from monarchical-colonial systems to ~~'i/(" .... (U~. to fUluftf flLiput.,... ddoatcd by a vot(! of 5 con!ltitutionallocal self·government. Ithas also adapted to "'''Ii a general world-wide acceptance of the industrial research -.,..., !."'nw ffItOIuUull .. rWU,Xl8OO WII8 f'Illl8{xi by It vote of 6 to .... laboratory and the American idea that some patent prac­ . Jurd"" DiMnlaO l"'iPOftlld on hiil h\!ltimony regarding tices are unfair. I'aumt omc~ n!~"llminatloJl and inter-partes prote~t pro­ Before analyzing the effect of amendments to the Paris c..'OOdingll. It il! tlx(){!(!led that the rules on re-examination Convention and subsequent Acts, Mr. Sinnott presented a will be forthcoming shortly but that further consideration body of raw numerical data on ratification and termina­ will be given-to the inter-partes protest proceedings. tion.-The following datawas tabulated for tlieTreaYY- arid" Jerry Lee presented a report on the committee hosting amending Acts: The ratio of countries ratifying on the first the delegation from the Peoples Republic of China.
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