Intellectual Property News, Fall 2011
Reporting of minutes from Sept. 17, 2011, council meeting:
1. Call to order.
The meeting was brought to order by section Chair Beth Ferrier promptly at 10
a.m. Those attending: Mike Stith, Steve Grant,
Jonathan Hollingsworth, Patrica Murphy, Barbara J. Varone, Howard S. Robbins,
Bruce Wilson, Ralph Jocke, Patricia A. Walker and Beth Ferrier.
Jonathan Hollingsworth, OSBA president-elect candidate, provided section
members with information on his candidacy, noting that members are what makes
OSBA great, and if elected he wants to assure that members receive value for
The meeting progressed as follows:
2. Approval of January minutes.
Approval of minutes. Howard Robbins moved that the minutes of the May 5, 2011
section meeting be approved as submitted, seconded by Steve
Grant. The minutes were approved.
3. Treasurer’s report.
Beth Ferrier presented the report supplied by OSBA. The report
does not show any section expenditures for 2011 to date, but there were expenses
for the Ohio Academy of Science/IP Section Patent Awards. Beth
Ferrier will check with Jessica on payment of any outstanding invoices from the
Ohio Academy of Science related to the awards. The current balance
is $10,768.72. Steve Grant moved that the Section continue the
practice of providing food and beverage funds not to exceed $100 for law school
IP group meetings, and otherwise maintain the budget figures from
2010-2011. Motion seconded by Barb Varone and approved.
4. Appoint section work Ggoups.
Legislative: Steve Grant, Barbara Varone, Bruce Wilson and Pat
Section Web page: Matt Schonauer, Beth Ferrier and Mike Stith.
(OSBA Annual Convention): Barb Varone and Patrica Murphy (co-chairs), Mary True
(initial planning form due Oct. 21, 2011).
Ohio Academy of Science/IP Section
Patent Awards: Patrica Murphy, Bret Hrivnak (alternates include Bill Richards or
5. Action plan for section (2011-2012).
The section discussed the Action Plan for 2011-2012, and voted
to maintain the same areas of focus as set forth in the 2010-2011 plan, with
emphasis on improving the Ohio Academy of Science/IP Section Patent Awards and
improving law student interaction and membership.
6. Legislative issues update.
Steve Stover reported that Steve Grant was a star in obtaining passage of the
Truth in Music Advertising Act sponsored by the section and passed as Senate
Bill 84, and signed by Governor Kasich on June 30, 2011.
Steve Grant suggested that the section next consider whether to propose
legislation eliminating state trademark registration. Following
more extended discussion by the section, the next step would be to meet with the
Secretary of State’s Office to determine if there might be some unforeseen
impediment to proposing such legislation. Steve agreed to prepare a
white paper for the January meeting for the sction to consider and further
Pat Walker led a discussion regarding concerns with Ohio Revised Code Section
1302.25, expressing concern that for transactions covered by the UCC, the UCC
Implied Warranty of Title could be construed to mean that a seller is giving a
warranty that a product does not infringe any third-party patent rights.
Most sellers would not be knowledgeable about the warranty or how to
disclaim such a warranty in the sale. Walker suggested that perhaps
Ohio law could be clarified to prevent infringers from raising the UCC warranty
agains the sellers. Steve Stover indicated that he would be meeting
with UCC commissioners and would find out whether other states have dealt with
this issue under UCC2-312 and provide that feedback to the
Section. Pat Walker volunteered to provide a summary of the issue
to the section executive Committee, who would then forward it to Steve Stover.
The next step would then be preparing a description of the issue and providing
it to other OSBA committees for review/comments.
7. Ohio Academy of Science/IP Section Patent Award.
Howard Robbins raised concerns with the Academy’s decision to grant an award
to the attorney of the recipient of the Legacy award. This award
was not provided for in the process as approved by the section, was not approved
by the section members on the decision-making committee, and the recipient was
not the attorney for the patents being recognized by the award. The
section has previously noted problems with communications and logistics for the
awards in both this year and the initial year. Following extended
discussion, it was determined that the section, with the assistance of the
executive committee and chair, needs to communicate these concerns to the
Academy far enough in advance of any announcement and application process, to
ensure that only the Impact Award inventor’s attorney is recognized with an
award, and also that the attorney is an Ohio attorney.
8. IP Newsletter: Pat Walker.
Articles for the newsletter are posted on the website. Pat
suggested that an article on the America Invents Act would be particularly
timely. Deadline is Oct. 28 for
submissions. Pat expressed thanks to all authors from the previous
9. Request for Law You Can Use columns and other
Debby Cooper, OSBA Public Information Manager, is seeking authors for Law
You Can Use columns and other publications on IP topics. Any
members interested in contributing can contact either Debby Cooper or Beth
Ferrier for more information.
10. Comments on America Invents Act.
There was a general discussion among members on the impact of the America
Invents Act which was signed into law on Sept. 16, and steps that members would
be taking with clients regarding various aspects of the Act.
Barbara Varone and Steve Grant noted that the University of Akron would
be presenting a seminar on the Act on October 14.
11. Old or Any Other Business.
New Business: Ralph Jocke noted that patent fees will be
increasing substantially Sept. 26, and members should note the new fee
12. Next Meeting Date.
The next Section meeting is January 21, 2012 at OSBA.
The meeting adjourned at 11:50 a.m.
Prepared by Beth B. Ferrier, OSBA IP Law Section Council chair.