IP/IT Specialty Group and the Life Sciences Specialty Group Conference Session Summary

Following is a summary report of the IP/IT Specialty Group and the Life Sciences Specialty Group joint session on May 11, 2010, at TAGLaw's international conference in Amsterdam, submitted by Mark Thomas of Williams Mullen.

Broadly speaking, we discussed the following three subjects:

1. Recent and upcoming n networking opportunities for Group members:

a.) The firm of Blake Lapthorn hosted a regional conference for the IP/IT Specialty Group in Southampton, England, March 19-20. It was attended by a dozen IP/IT members, including an attorney from the Duncan Cotterill firm in New Zealand. The conference included an opening dinner on March 19 and a day-long program on the 20th. A highlight of that program was a well-engaged discussion based on a case study. This conference provides both of our groups a good model for other meetings in other global regions, to increase the opportunities for direct networking contacts.

b.) On Tuesday, May 25, 2010, at 5:00 p.m., the firm of Duncan Cotterill (represented by attorney Scott Moran) will host a cocktail function for all TAGLaw attorneys attending this year's annual meeting of the International Trade Mark Association (INTA), in Boston, Massachusetts. The event will be hosted at the Top of the Hub Restaurant in the Prudential Tower, 800 Boylston Street, Boston. Our session last week acknowledged the support TAGLaw has provided for several years for functions of this type at INTA's annual meetings, where the paths of a significant number of TAGLaw IP/IT attorneys cross each year. Both the IP/IT Specialty Group and the Life Sciences Specialty Group will be looking for other annual events of this type where TAGLaw attorneys might come together.

2. A legal topic of current interest

We discussed the Bilski v. Kappos case arising under U.S. patent law, and reviewed the decision of the U.S. Court of Appeals for the Federal Circuit which is now pending before the U.S. Supreme Court. The Supreme Court's decision is expected by June 30, 2010, and could be a very significant ruling on the scope of U.S. patent protection for business processes or methods. We noted that the submitted "invention" in Bilski did not involve or require software or any specific machine (such as a particular computer) to function, and that the absence of such features was a basis for the Federal Circuit's conclusion that the "invention" was not subject matter eligible for U.S. patent protection. We also noted the large number of parties that have filed "amicus" briefs in the U.S. Supreme Court, arguing that the outcome of the Bilski case could greatly affect the scope of U.S. patent protection for new software, medical diagnostic processes, and other new technologies. Our members outside the U. S. noted the potential impact of a U.S. decision on such patent questions globally, and, of course, the Bilski decision would affect those non-U.S. businesses who seek to protect their own business processes or methods in the U.S. market.

3. Exchange of some practical information

To facilitate the exchange of useful information, we discussed the following question: what steps could a U.S. law firm take to help companies outside the U. S. better understand both the legal factors and social/cultural matters in the U.S., such that those companies could participate more successfully in the U.S. business environment?  Some examples of the topics mentioned by our members were:

Explaining the U.S. law governing the confidentiality of attorney-client communications, and the exceptions to that protection; and

For those companies seeking a better understanding of how U.S. litigation might affect their operations, and how they might better prepare for that impact, we noted the current U.S. law regulating the pre-trial discovery of electronic documents, especially e-mails.

We will probably include a topic of that kind in future sessions at the international conferences, but change the perspective of the question. For example, the next time we might ask the members to suggest what a U.K. lawyer could explain to companies entering the U.K. business environment. Considering the number of countries represented in our Groups, the number of variations on this topic is almost endless.

We look forward to the next opportunities to meet and talk with each of you, and welcome your ideas for new initiatives that promote closer working ties among our members.

Best regards,
Mark Thomas
Co-Chair, IP/IT Specialty Group

Mark S. Thomas
Williams Mullen
301 Fayetteville Street, Suite 1700
Raleigh, North Carolina 27601
(919)-981-4300 (fax)
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