A Seventy-Five Year History of NYIPLA
by Gregory J. Battersby, Pasquale A. Razzano and Arthur S. Tenser
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As we celebrate our seventy-fifth anniversary, we thought it appropriate to reflect back on our history. The project turned out to be a fascinating adventure in not only the history of our Association but also the patent bar as well.
When we think back on the legends of the patent bar, we think of names such as William H. Davis, William Houston Kenyon, Lawrence Langner, Theodore Kenyon, Giles Rich, Alexander Neave, Samuel Darby, John Kelton, David Kane, Morton Adams, Bill Conner, Pauline Newman and Al Nolte. When we recall the history of the legal profession in general, names such as Supreme Court Justices Tom Clark and Arthur Goldberg, Second Circuit Judges Learned Hand, Augustus Hand and William Mulligan, and Federal Circuit Judges Helen Nies and Howard Markey immediately come to mind. It turns out that the careers of these lions of the legal profession are remarkably intertwined with the history of our Association. As their professional reputation grew, so did the reputation of our Association which, at its seventy-fifth anniversary, is arguably the most influential regional bar association in the nation.
The Genesis
"Washington, DC, September 8, 1921"
"Sir: I have the honor to submit herewith the following report of the business of the United States Patent Office for the fiscal year ending June 30, 1921:
The Patent Office is in a deplorable condition..."
So began the 1921 Annual Report of Patent Commissioner Thomas E. Robertson. His concern for the continuous stream of resignations of trained examiners and the resulting increase in backlog led him to solicit the aid of the patent bar in support of an emergency pay raise bill pending before Congress. He knew that such a bill would meet stiff opposition from some economy-minded members of the House of Representatives. From this perennial crisis of inadequate Patent Office salaries, our Association was born.
In response to Commissioner Robertson's pleas for assistance, the Committee on Patents and Trademarks of the New York County Lawyers Association held a meeting on November 29, 1921 in the rooms of that Association at 165 Broadway, New York City to consider how to help induce Congress to pass the Lampert Bill. The meeting was attended by seventy-five local patent lawyers and was chaired by William Houston Kenyon. At the same meeting, a Committee of five was appointed to prepare a plan for a permanent organization. This Committee consisted of the following individuals: William H. Davis, Chairman, William R. Kennedy, Oscar Jeffery, Edward M. Bentley and Albert F. Nathan
After some discussion, a number of resolutions were adopted by the group, including several outlining a course of action. Members of the Bar interested in patent matters would personally call upon or write all New York members of Congress as well as the sponsor of the pay legislation and the House majority leader to urge prompt passage of the bill. They were also to prevail upon their clients to do the same. Each interested person was also asked to contribute five dollars to defray the cost of the committee's activities.
The final, but by no means the least, of the resolutions prompted by Commissioner Robertson and adopted at that meeting called for the appointment of a committee of five to:
"(1) Prepare a plan for a permanent organization of persons of good standing in this city and vicinity professionally engaged as patent lawyers, solicitors of patents, or patent experts;..."
The idea of forming such an organization through which patent lawyers in New York could make their views known in Washington and also have some degree of social meetings with the judiciary was actively espoused by William Houston Kenyon.
An Association is Born
At the next meeting of the group on March 7, 1922, Richard Eyre, Chairman of the Committee on Patent Office Relief, reported the details of his Committee's work and the passage of the pay raise bill. Commissioner Robertson addressed the meeting and personally delivered his thanks for the efforts of the group. He again urged that a permanent organization be formed and explained the possible usefulness of such an organization.
William H. Davis, Chairman of the Committee on Permanent Organization, then presented to those assembled a proposed constitution and bylaws. With some discussion and minor revision, the proposal was adopted at that same meeting and our Association, named The New York Patent Law Association, was born.
A Nominating Committee was formed to propose a slate of officers for vote by the membership at the next meeting. The newly formed Association then issued its first official pronouncement: a resolution recommending passage of the pending Lehlback Bill concerning Civil Service reclassification, which would have the effect of upgrading all Patent Office salaries.
At the subsequent meeting on March 30, 1922, our Association elected its first officers and directors. William Houston Kenyon was elected President along with three Vice-Presidents: Thomas Ewing (a former Commissioner of Patents), William H. Davis and Richard Eyre. Edwin J. Prindle served as Temporary Chairman and Lawrence K. Sager served as Temporary Secretary. Mr. Kenyon held the office of President for three years, after which our Association began the tradition of one-year Presidential terms.
With the efficiency and thoroughness characteristic of the patent bar, our Association immediately launched an ambitious program of activities. President Kenyon announced the appointment of a full slate of standing committees, including a Committee on Professional Ethics, a Committee on Admissions and a Committee on Meetings. Interestingly, all of these Committees continue their responsibilities today. In addition, a number of special Committees were appointed to support passage of the Lehlback Bill, to investigate such matters as the post-war revival of the Patent Treaty with Germany and improvement of the quarters of the federal courts in New York City. The latter had a strong influence in the construction of the Federal Court Building at Foley Square.
In what today could be characterized as an instance of deja vu, the Commissioner of Patents, at this first official meeting, presented our Association with three questions on which he desired our input:
- Should the first Office Action be complete and thorough even if it delays the initial examination?
- Should little or no attention be paid to matters of form unless the Examiner finds allowable subject matter in the application? and
- Should the Examiner indicate what subject matter he considers patentable, even if not properly claimed by the applicant?
Upon referendum of the membership, all three questions were answered overwhelmingly in the affirmative.
Although deeply engrossed in matters affecting the profession and the law, the fledgling Association did not forget the need for recreation and conviviality for its members. Not yet three months old, our Association held its first golf outing at Dongan Hills, Staten Island and, still warm from the flow of success at its first social venture, held a second golf day in October of that year at Ardsley. The winners of the respective tournaments, George T. Bean and Marquis H. Lockwood, were presented with cups by Frederick W. Barker of the Meetings Committee, who ran the events, with the admonition that they that they were "never to fill them except with liquid of the same golden hue with which the cups were lined" (ed. note: notwithstanding that Prohibition was in effect). The golf outing has remained a popular event for our Association and a new cup is now held by Fritz Schweitzer, Jr., having rested the cup from former president Albert Robin who had won the previous three tournaments.
The active and productive founding year of our Association was capped by what is still the banner event of our Association year - the Annual Dinner in Honor of the Federal Judiciary (hereinafter the "Judges Dinner"). Held on December 6, 1922 at the Hotel Waldorf Astoria (its situs ever since) the dinner was preceded by a menu printed in the format of a U.S. Patent that pointedly referred to the limiting effects of Prohibition1. That first dinner, starting a custom that continues today, had each honored guest escorted by an Association member. It was a rousing success with 258 members and guests in attendance. Among the distinguished guests were Judges Charles M. Hough, Martin T. Manton and Augustus and Learned Hand. The festivities were hosted by President Kenyon, who characterized both the new Association and the dinner as "experiments."
Our Association's membership included some patent lawyers who had amateur theatrical talents, including at least one with direct ties to the professional theater.2 They produced, for the first Judges Dinner, a play which had a cast of about 16 and put on the boards the trial of an alleged patent infringement case.3 Similar entertainment at succeeding dinners established the Judges Dinner as an event filled with originality and festivity that attracted many federal judges as regular guests.
By 1926, our Association had grown to a membership of 363, with 317 of those being active members. As reported by John P. Bartlett then the Chairman Ex Officio of the Board of Governors our Association's work was largely taken up with discussions on pending legislation: the Vestal Design Registration Bill, the Patent Law Reform Bill, the Trade Mark Registration Bill and the Bill for the increase of salaries of the Federal Judges. Indeed, little has changed in 70 years. A Committee on the Federal Courthouse was also formed to study the then-proposed new federal courthouse at Foley Square which would permit the court to move out of the Downtown Post Office.
The Association Survives the Depression
A Patent Office Celebration Committee was formed in 1932 and chaired by Herbert Van Dyke. This Committee participated in the opening of the new Patent Office in Washington on April 11, 1932.
Membership in our Association continued to grow through the depression years. By 1935, the membership totaled 423. The largest fundraising event remained the Judges Dinner which had more than 500 in attendance. A sketch entitled "No More Patent Attorneys" was presented by Lawrence Langner and W. Houston Kenyon. Mr. Orestes Caldwell, past President of the New York Electrical Society, gave a talk with slides on the development and practical application of the "so-called electric eye" and Samuel E. Darby, Jr. gave "an interesting and amusing impersonation."
During the 1935 Association year, the Committee on the Federal Courthouse reported that although "the granite carvers are now on strike the architect advises that we may reasonably expect to have the Court House completed and ready for occupancy about next February [1936]."
Our Association played a role in President Franklin Roosevelt's New Deal proposal to increase membership in the Supreme Court. After careful consideration and much debate, the Board of Governors adopted a resolution opposing "all suggestions for increasing the number of United States Supreme Court judges, or tending in any way, directly or indirectly, to bring the Supreme Court under the power or influence of any other branch of the Government." Ultimately, the number of seats on the Supreme Court was increased to the present nine.
An Engineers' Court???
In the late 1930's, under the guidance of Merrell E. Clark, Albert G. Davis and Theodore S. Kenyon, our Association considered issues that would remain in the forefront for decades to come. The Board of Governors at that time opposed in principle a proposal to create a single Court of Patent Appeals (which it would later refer to as an "Engineers' Court"). The Committee on Patent Law and Practice, chaired by Alexander C. Neave, offered the following reasons for opposing such Court:
1. The conflict of decisions of various circuit courts of appeals is in fact not serious, and the present practice has certain advantages which the Single Court would not have.
2. There is no necessity for a court of judges with technical training and such a court would have its own disadvantages which would be more serious than those which may now exist.
3. A Single Court would not materially reduce the expense of patent litigation and might well make it more expensive..
4. A specialized Appellate Court would be an undesirable departure from our present judicial system.
5. The problem of obtaining competent judges would be a serious one.
6. The proposed Court would create complications which do not now exist.
7. The Single Court would be an unnecessary expense.An Association sub-committee had earlier reported that:
we need appellate judges who are trained in judicial consideration of problems and who are able to weigh and sift the evidence presented to them. Scientific judges would soon fall behind in their technical knowledge and would undoubtedly develop prejudices and narrow scientific ideas which would result in the case not being decided upon the evidence given in the Court below but upon the technical views of such an Appellate Court, which views litigants could not meet since no evidence is introduced in the appellate court.
Our Association also opposed a proposal that patents would expire twenty years from the date of application, "believing that the real root of evil lies in delays in the prosecution of applications in the Patent Office."
Who Said Patent Attorneys Can't Have a Good Time?
The Judges Dinners during the 1930's included live demonstrations of leading edge technologies. For example, the 1939 Judges Dinner featured demonstrations of the Polaroid principle by the Polaroid Corporation with Dr. Martin Grabau as the speaker and of television by the Radio Corporation of America with Mr. Otto S. Schairer as the principal speaker. The dinner was attended by 244 members and 430 guests - approximately one-fourth the size of the Judges Dinner today.
Social interaction was not lost on the founding members of our Association, most notably in their golf games. The "early years" of the then New York Patent Law Association included an annual golf tournament alternately held at the Pelham, Scarsdale and Sleepy Hollow Country Clubs. These tournaments and dinners that followed were quite well attended drawing almost twenty percent of the membership at that time.
By 1940, our Association membership had exceeded 500 and there was a serious discussion among the Board of Governors about establishing a working library and headquarters for our Association. It was believed that this could serve as a meeting place for the Governors, committees and Association members as well as a headquarters for out-of-town members. The most serious question presented, however, was where to locate the library - uptown or downtown. It was reported by the Secretary that in January, 1940, 176 members of our Association had their offices uptown, while 206 were downtown. It was noted, however, that the proportion had perhaps been reversed by the movement uptown of the firm of Pennie, Davis, Marvin & Edmonds. A library committee was formed under the guidance of C.P. Goepel, who proceeded to appeal for old law books and pamphlets on "Patents, Designs, Trade-Marks and Copyrights."
The highlight of the 1941 Judges Dinner was a skit put on by Mr. Langner, Theodore S. Kenyon and R. Morton Adams entitled "The Incandescent Spark," which followed the travails of a patent from the initial writing of the patent application through appeal at the U.S. Supreme Court. (All taking place in a matter of five days!). Perhaps as a comment on the judiciary's view of patents at the time, Mr. Langner has the Chief Justice explaining to the newest justice not to be frightened of patent cases, saying "Just remember that our rule is never to sustain a patent." The play, supplying a long-felt want, was written by Curt von Boetticher and directed by Lucious Cook.
Efforts had been made to obtain the British Ambassador, Lord Halifax, as the guest speaker but he had declined because of the pendency of the "Lease-Lend Bill" before Congress.
That same year, the ongoing Committee on the Federal Court House, chaired by Henry D. Williams, reported that the Court House was now complete but it noted one lingering problem - its subway connection. The Committee report stated:
Nevertheless, the subway connection is solely to the B.M.T. Line, and at a comparatively slight expense could be a free underground connection with a passageway from the I.R.T. subway station at Brooklyn Bridge. This is regarded by the Committee as of great importance.
Further, when the connection has been made with this station, it will be possible to use the subway station and passages to proceed underground, thus escaping the street traffic from City Hall Park to the Federal Court House. Under present arrangements, it will cost a 5 cent fare to cross the underground bridge over the subway tracks, and access may only be had thereby to the Municipal Building, but your committee proposes to bring about a free passageway over a bridge above the subway tracks which will enable one to enter the Municipal Building and the Federal Court House beneath the street traffic.
The War Years
During World War II, our Association turned its attention to various administrative measures relating directly to the prosecution of the "War," new legislation proposed and considered in Congress, the trend of court decisions in patent litigation and the recommendations of a National Patents Planning Commission. Of particular concern was proposed legislation that affected the patent rights of alien enemies or citizens of countries held by enemies. As a show of patriotism, the Association decided to invest its funds in Defense War Bonds.
When it was decided that the Patent Office should be moved from Washington, D.C. to afford working and living space for people engaged in work more directly connected with the war, our Association sought to have the Patent Office moved to New York. An official announcement was actually made that the Patent Office would relocate to New York although it was subsequently decided that portions of the office would remain in Washington with the examining corps moved to Richmond, Virginia.
Due to the stress of the war, the only member meeting held in 1942 was the Judges Dinner at the Waldorf, which enjoyed the largest attendance of any similar function in the history of our Association. Travel restrictions, particularly those that involved the use of gasoline, caused our Association to cancel its annual golf outings. Nevertheless, our Association continued to work with the Alien Property Custodian on questions of patent rights as well as with the National Planning Commission on new legislation.
A Significant Role in Writing the
Lanham and Patent Acts
Throughout the 1940s, our Association actively supported various legislative proposals to provide improved protection for trademarks which culminated in the passage of the Lanham Act in 1946. Several members of our Committee on Trademarks, led by Chairman Sylvester J. Liddy, testified before Congress in support of the Act.
The success in passage of the Lanham Act and the discontent among the patent bar, as reflected in Mr. Langner's "Incandescent Spark" play, induced an effort to revise the patent laws which had last been given major legislative attention in 1870. Our Association played an active and major role in that effort. In 1948, at the direction of then President Robert W. Byerly, our Committee on Patent Law and Practice, chaired by Alexander C. Neave, and including Giles Rich, drafted and had introduced a bill to overturn the Mercoid Cases, 320 U.S. 661 (1944) and 320 U.S. 680 (1944), which had virtually eliminated the doctrine of contributory infringement and expanded the misuse doctrine. The 80th Congress adjourned without acting on that bill, but similar bills were introduced in the 81st Congress.
The Subcommittee on Patents, Trademarks and Copyrights asked Pasquale J. Federico of the Patent Office to draft "an overall patent revision bill." Mr. Federico consulted with prominent members of the patent bar and this Association, including Giles Rich and Henry R. Ashton (then also President of the American Patent Law Association). At a meeting on February 8, 1950 of seventeen patent law associations, Giles Rich and Paul Rose were appointed as a two-man drafting committee on behalf of the National Council of Patent Law Associations. Over the next two years, after multiple meetings with Associations around the country and many revisions thereof, the bill was submitted to the House and ultimately became the law.
The activity leading to the 1952 Patent Law began in the twenty-fifth year of our Association when Giles Rich was our First Vice President. After the 1952 Patent Act was passed, our Association devoted its efforts toward having the President and Congress appoint a patent attorney to the Court of Customs and Patent Appeals in an effort to strengthen the patent system. In 1956, Giles Rich, one of the moving forces behind the 1952 Act, was appointed to the Court of Customs and Patent Appeals, the predecessor of the Court of Appeals for the Federal Circuit, on which he still sits. Judge Rich became the first member of our Association and, it is believed, the first registered patent attorney ever appointed to the federal bench.
The Post-War Years
The Post-War years brought about a relaxation of the wartime restrictions and a reinvigoration of our Association. By 1947, the annual golf outing was restored at Tamarack Country Club and it was noted that "some 88 members and guests played golf, turning in scores which averaged substantially in excess of 100 but which in no way detracted from the enjoyment of the game or from the appreciation of the 33 prizes which were distributed."
At the 1948 Judges Dinner, our Association celebrated its Silver Jubilee with cocktails, souvenir programs and anniversary cakes impressively served by the Waldorf with a candlelight parade. The 740 attendees heard Mr. William H. Davis speak of the founding of our Association twenty-five years ago and Judge Harold R. Medina recount the foibles of an infringement trial.
In 1951, our Association authorized the publication of the Bulletin to expand services to the membership despite economic "risks" of expanding such services. The purpose of the Bulletin was to foster "a sense of fellowship amongst the members ... to strengthen the usefulness and prestige of The New York Patent Law Association." Unfortunately, however, despite such laudable plans, it would be another ten years before the Bulletin was actually published, and then largely due to the efforts of editor, Henry E. Sharpe. Subsequent editors, including Jim Badie, Howard Barnaby and Greg Battersby, have ably carried on the tradition.
Association membership climbed rapidly in the 1950's, passing the 850 mark by 1955 when a record 95 new members joined. That same year, a number of different types of meetings were adopted, including shop-talk meetings without charge for admission, medium-priced dinners with shop-talk, a medium priced dinner with a general interest program for spouses, a Christmas dinner dance and the customary Judges Dinner. United States Attorney General Herbert Brownell, Jr. was the guest speaker at the Judges Dinner that year, speaking on the subject "Liberty and Law are Inseparable."
The Patent Crisis of the 1950's
The 1950's proved to be a difficult time for patents and the Patent Office. The Supreme Court appeared to be anti-patent. This attitude found expression in a statement by Mr. Justice Jackson in his dissenting opinion in the Jungersen case in 1949, that, "the only patent that is valid is one which this Court has not been able to get its hands on" (335 U.S. 560, 572) and was reflected in lower Court decisions. By 1954, the Patent Office situation was desperate - the backlog of pending applications had reached alarming proportions, morale was low, personnel was leaving faster than replacements could be found.
Our Association, under the presidencies of Norman Holland and Floyd Crews, came to the rescue. It pressed for increased appropriations from Congress. Association members regularly appeared before the House Subcommittee in charge of Patent Office appropriations. Our Association printed and mailed to each member of Congress and the Senate a statement setting forth the plight of the Patent Office due to inadequate funds. It worked with other associations to help recruit qualified examiners from the colleges. Our Association, at its own expense, placed advertisements in major magazines and newspapers to seek men with scientific training to work as examiners
Poised for Growth
The year 1957 was a milestone year for our Association. It marked the first time in Association history that more than a thousand members and guests attended the Judges Dinner. The speaker that year was the Hon. John J. Parker, Chief Judge of the United States Court of Appeals for the Fourth Circuit. It also was the year when the annual golf outing was replaced by a charter boat trip up the Hudson River to Bear Mountain State Park, dinner at the Bear Mountain Inn and a softball game.
By the late 1950's, our Association began to establish itself as one of the leading regional law associations in the United States. In 1958, the Bylaws were amended to limit membership only to those admitted to practice law (thereby excluding patent agents). Such an amendment was made to permit our Association to qualify as a "legal society" within the definition of the American Bar Association guidelines. It also allowed our Association to be able to rent space at the Association of the Bar of the City of New York to use as headquarters. With a membership of 950, our Association established for the first times its own telephone line.
The magical thousand member mark was reached by 1959 under President David S. Kane. For the first time, members of our Association could list their membership in the New York Patent Law Association as part of biographical data in any approved Law List. The Judges Dinner included, for the first time, complimentary cocktails at the reception before the Dinner - all at a cost of $17 for members and $19 for non-members.
The Association Flourishes in the Space Age
The 1960's marked a special time for the now expanding New York Patent Law Association. A permanent office was established for the first time on March 8, 1960 in the City Bar Building at 36 W. 44th Street. The offices housed the "Carl P. Goepel Library of the New York Patent Law Association." Unfortunately, C.P. Goepel, who had been collecting patent books on behalf of the Association for more than fifteen years, never got to observe the library in his name, having passed away the previous November.
The purpose of the permanent office was to centralize all Association records and make them readily available to incoming officers and chairmen. The Library Committee was authorized to assemble photographs of all past presidents to display them appropriately in the new office. Consideration was also given to retaining the services of a professional public relations firm to increase the degree of publicity given our Association's activities and especially its Judges Dinner.
That same year, the Committee on Professional Ethics and Grievances was particularly active since it was the first full year that our Association functioned as an accredited local bar association. The Committee, under Chairman W. Houston Kenyon, took action against attorney advertising by obtaining the agreement of each member that they would not list their name in bold face type under "Patent Attorneys & Agents" in the Manhattan Classified Telephone Directory. More than 1100 attended the Judges Dinner that year, including 25 judges and many other distinguished guests.
Our Association established an Annual Judicial Conference in 1962 where Chief Judge Sylvester Ryan of the Southern District of New York and Senior District Judge Moritmer W. Byers of the Eastern District of New York met with a large gathering of Association members and guests to discuss the problems of the Federal District Courts of New York City.
The Committee structure of our Association expanded significantly in the early 1960's with the addition of such new committees as publications, antitrust, economic matters affecting the profession, and public information and education. A special subcommittee was established to create a speaker's bureau to address various groups on subjects of concern to our Association.
The employment committee was particularly active in the early 1960's, placing more than 14 members in 1963 alone. A special committee was formed in 1963 to consider the change of our Association's name to a name similar to "The New York Patent, Trademark and Copyright Association." After much study, the committee recommended that the name remain unchanged.
Association Achieves National Status
The 1963 Judges Dinner marked the first time that a United States Supreme Court Justice was the featured speaker. Over 1200 attendees had the good fortune to hear the address by Mr. Justice Arthur J. Goldberg.
In the mid-1960's, our Association became increasingly more active in national issues. At the request of the American Bar Association, our Association prepared and filed an amicus brief in the Supreme Court in the Graham v. John Deere case. The brief took no position on the merits but urged that the standard of patentability should be established by statute and that there should be no constitutional standard of invention. Officers of our Association regularly met with the Commissioner of Patents on such issues as a mandatory duty of disclosure by inventors and the Patent Office's refusal to give a filing date to an application which contained informal drawings. Our Association was repeatedly represented at hearings involving Patent Office fees and the relocation of the Patent Office from Washington. It opposed a proposed move of the Office to Maryland, stating that such a location would seriously disrupt the efficient operation of the Office.
Due, in large measure, to its emerging national reputation, our Association moved its offices in 1965 from the Bar Building to larger and more adequate quarters in the Columbia University Club at 4 West 43rd Street. Consideration was given to the establishment of a permanent secretary, although financial considerations caused the question to be tabled for three years.
In August, 1965, the Chairman of President Lyndon Johnson's Commission on the Patent System requested suggestions and recommendations from our Association for its consideration in evaluating what changes should be made to the patent system. A Special Committee was formed headed by Albert Johnson (our Association's First Vice-President) and President W. Houston Kenyon. The Committee produced a report that was heavily relied upon by the Commission in revamping the patent system.
Having a Good & Profitable Time
Throughout the 1960's, the social and educational sides of our Association remained strong. In addition to the Judges Dinner, each year the Meetings Committee planned and ran a Commissioner's Dinner where the Commissioner of Patents was honored, a Christmas Dinner Dance (usually at the Roof Garden of the Hotel Pierre), an annual spring golf outing (frequently at the Knollwood Country Club in Elmsford, New York), a Judicial Conference, and a series of forums on pertinent topics.
In addition, committees were formed to study and implement health, accident and professional liability insurance programs. In 1967, our Association offered Association members a special liability insurance policy underwritten by Travelers Insurance in amounts up to $500,000 as well as group life insurance policies up to $50,000. The Employment Committee broadened its charter to include placements for non-professional personnel as well as office space referrals.
More than 1200 attended the 1967 Judges Dinner to hear U.S. Supreme Court Justice Tom C. Clark speak on patents in our present world.
Economic Hard-Times
Economic hard times began to befall our Association in the late 1960's. John Kelton's annual report at the conclusion of the 1968-1969 Association year expressed serious concerns relative to Association finances. He noted that for the first time in many years, our Association had shown a net loss from the prior year, and he began to question the wisdom of maintaining a full time office at the Columbia University Club at a cost to our Association of $1,650 per year.
Incoming President Hugh Chapin solved the pending financial crisis by closing the office at the Columbia University Club which had housed our Association Library, increasing dues by $5.00 (to $30.00), and decreasing committee expenses by decreasing the number of luncheon meetings. Our Association was beginning to experience growing pains. Outgoing treasurer Al Nolte noted the following:
In preparing this, my last report as Treasurer, I succumbed to a mood of nostalgia and decided to compare this report with the one I had made in 1949 at the end of my first year as Treasurer. I was astonished at the enormity of the growth of our Association in the 20 years since then. We were then a much smaller association with only one-half of our present membership, i.e., 668 members as against 1226 members now. At that time, we held only 4 membership meetings a year; we now hold a total of 9 such meetings and forums. We were then able to carry on the work of our Association with the help of only 11 committees; now we require the help of some 30 committees and sub-committees to carry on the vastly increased burden of work. We then published no Bulletin or any publication of a similar nature; now we do so at a cost of close to $5,000 per year. We then required the collection of only $18,000 per year to carry on the activities of our Association; now we need more than $60,000 per annum for this purpose. We then had a net worth of $15,436.36; now our net worth is over $27,000.
I think you will agree with me that our Association has grown with the times and thus adapted itself to the demands of the advances in our profession.
The late 1960's also brought about a number of changes to our Association. Pauline Newman (now Federal Circuit Judge) was the first woman in the history of our Association elected to the Board of Governors.
By 1970, our Association's reputation and influence had spread to the international front. Association members participated in discussions and Congressional hearings on the Patent Cooperation Treaty.
In 1971, a special committee chaired by Ed Halle prepared and filed on behalf of our Association an amicus brief in connection with the appeal taken to the Second Circuit in the Painton v. Bourns case. Based in part on the position taken by our Association, the Second Circuit spoke out on the question of preemption of trade secrets claims, reaffirming the continued propriety of trade secrets agreements in all respects.
Golden Anniversary
Our Association celebrated its golden anniversary in 1972, highlighted by the Judges Dinner that year. The guest speaker that evening was Senator James Buckley of New York who expressed serious concerns about the patent system. He stated that he felt that appointing a patent attorney to the federal trial bench would help strengthen patents and bring uniformity to the treatment of patents by the courts.
The gala evening was presided over by Frank Ford, Jr. and four charter members of our Association were present: Abraham Engel, Harry Jacobson, Ted Kenyon and Willis Taylor. Each was presented with a suitably inscribed Revere bowl. The remaining nine charter members were also sent inscribed bowls who advised Frank Ford that their grandchildren were dazzled by the mementos. The evening produced the first press conference ever given by our Association on behalf of Senator Buckley under the oversight of Stan Amberg, chairman of the Committee on Public Information and Education.
The 50th Judges Dinner was highlighted by the issuance of Reissue Patent No. 00,001 entitled "An Improved Composition of Matter and Method of Using Same" in the names of William A. Cook and Alphonse A. Chef. The '001 Reissue Patent included six (6) independent claims and served as the menu for the evening.
Our Association's golden anniversary year included a number of significant events. It also saw the inauguration of a new column in the Bulletin entitled "President's Corner" in which our Association's president had an opportunity to express his views to the membership. In honor of the golden anniversary, the annual Yearbook took on a gold cover.
The Next Twenty Five Years
Our Association's 51st year was under the tutelage of William C. Conner who made it his goal to increase the attendance of the judges at the Judges Dinner. He had remarked that in previous years the Judges Dinner had attracted such an embarrassingly small number of judges that it had even been suggested that the name of the dinner would have to be changed if the trend continued. With the help of Chief Judge David Edelstein of the Southern District of New York and with an unusually attractive speaker in the person of Judge William H. Mulligan of the Second Circuit, he succeeded in trebling the average number of local judges that attended the 1973 Judges Dinner. He noted that Judge Mulligan lived up to his reputation as the greatest public speaker on the bench.
That same year, at the urging of Senator Buckley, President Nixon appointed Bill Conner a District Judge in the United States District Court for the Southern District of New York. He is believed to be the first patent lawyer ever appointed to the federal trial bench.
Our Association received permission in 1974 to file an amicus brief with the Supreme Court in the Kewanee Oil Company v. Bicron Corporation case. Under the guidance of Charles Bradley, an Association committee prepared and filed an excellent brief that was an instrumental part of a reversal of the Sixth Circuit decision. That same year, our Association took a position against ratification of the Patent Cooperation Treaty (PCT) and gave its views and recommendations to the Commissioner of Patents at the WIPO and OAS meetings.
Featured speakers at the 1975 and 1976 Judges Dinners were the Hon. Howard Markey of the Court of Customs and Patent Appeals and Dean Joseph M. McLaughlin of Fordham Law School, respectively. Dean McLaughlin was recommended by former Dean and then Second Circuit Judge Mulligan who sent the following note to Larry Brooks which was read at the Dinner:
I am delighted that you have selected Joe McLaughlin, Dean of the Fordham Law School, to be your speaker. Although his vocabulary is limited and he has a noticeable speech impediment I am sure that he will do a good job so long as you keep an eye on the wine bottles. As a matter of fact, I have been helping Joe with the humorous content of his speech and I am sure it will pass muster. His address will trace the impact of common law pleading rules upon the New York Civil Practice Act as well as the New York Civil Rules of Procedure. Although it is rather lengthy, I am sure it will be of great interest to members of the Patent bar.
Discretion being the better part of valor, Larry Brooks elected not to read Dean McLaughlin's reply to Judge Mulligan.
In 1977, our Association finally incorporated and became the New York Patent Law Association, Inc. The heretofore "Board of Governors" became a "Board of Directors." That same year, the NYPLA assisted CBS News in connection with a television program on inventions and inventors and President Morris Relson appeared briefly on national television. Former President and now Judge Bill Conner was the speaker at the 1977 Judges Dinner which attracted a record number of attendees (1200) and Federal Judges (25). The subject of Judge Conner's talk was "Can a Patent Attorney Find Happiness on the Federal Bench?" Looking back, we suspect that the answer is yes.
The 1979 Judges Dinner was one of the more memorable ones in the history of our Association, due in large measure to the guest speaker and his choice of topics. Admiral Hyman G. Rickover, the architect of the nuclear navy, took the opportunity to share with those in attendance his experiences with and opinion of the legal profession. To say that his speech was controversial would be an understatement.
Under the leadership of Stanley Lieberstein, our Association held its first National Inventors Day Dinner in May, 1979. We presented a plaque to Dr. Samuel Ruben for his many inventions and contributions to the battery and elctrochemical and electronics arts. That same year, our Association prepared and filed amicus briefs in the United States Supreme Court in both the Diamond v. Chakrabarty and Dawson et al. V. Rohm & Haas cases.
Our Association entered the 1980's with the same high spirit and vitality shown in earlier years. Commencing in 1980, our Association created the Giles S. Rich Award to be awarded at appropriate intervals to that lawyer, judge or statesman who has made a conspicuous contribution of the highest order to the progress of the law of intellectual property over the course of his professional life.
Reaganomics and the Federal Circuit
Reaganomics consumed the attention of our Association during the early 1980's as the Patent & Trademark Office ("PTO") dramatically increased its fees under the philosophy that those who benefit from government services should pay for them. The administration proposed a 500% increase in existing PTO application and issue fees, an anticipated $2,400 in patent annuity fees, and a 12-fold increase in the trademark renewal fee, just to name a few. Our Association was a leader in the fight against increases of this magnitude and against the failure of the administration to recognize the public benefits provided by the patent and trademark system. Unfortunately, the fight was unsuccessful although it did cast certain doubts on the ability of independent inventors, small businessmen and universities to afford such fees.
One lobbying effort undertaken by our Association, however, was successful. John Pegram testified on behalf of our Association before the PTO on its proposal for amendment of rules pertaining to reissue and reexamination and the amendments as approved for the most part reflected our Association's position.
Growing concerns for a need to strengthen and bring uniformity to the application of the patent laws spread through the patent bar leading several professional organizations, including ours, to support the creation of a single appellate court to hear patent appeals from the federal district courts. This led to the creation of the Court of Appeals for the Federal Circuit in 1982, as the successor to the C.C.P.A. Shortly after its formation, in 1984, one of our distinguished board members, Pauline Newman, was appointed by President Reagan to that Court.
A Voice Throughout the 1980's
Throughout the 1980's, our Association held annual CLE fall weekend programs. The initial program was held at the Concord Hotel in the Catskills and was moderated by Doug Wyatt. It gave the more than 200 in attendance an opportunity to brush up on the law as well as socialize with other Association members. This became a tradition for the next decade with subsequent fall weekend programs being held at other weekend resort locations including the Pocono Manor, the Sky Top Lodge and Mohonk Mountain House.
Our Association was also beginning to play a more active role abroad. For example, we joined in the World Intellectual Property Organization's efforts to harmonize patent, trademark and copyright laws throughout the world. We were honored to be the only regional professional Association to be an invited participant to its meetings and negotiations. On behalf of our Association, Doug Wyatt presented a painting to WIPO in honor of the 100th Anniversary of the Paris Convention.
In recognition of the growing number of trademark and copyright specialists among our membership, the name of our Association was changed in 1983 to "The New York Patent, Trademark and Copyright Law Association." The name was subsequently changed in 1993 to the present "New York Intellectual Property Law Association."
Along with the new name came a new look for the Yearbook. The current Greenbook actually took on its present format beginning with the 1983-1984 issue under editor Jim Badie and associate editor, Mary-Ellen Timbers. Although our Association had published an annual Yearbook going back to its first year, the color and style of each edition varied widely. Beginning with the 1983-1984, the Yearbook assumed a distinctive dark green color. Due in large measure to this color, the book became known as the "Greenbook." Initial issues of the Greenbook included with it a handbook on the United States Court of Appeals for the Federal Circuit.
In the mid-1980's and working in conjunction with the Connecticut, New Jersey and Philadelphia Patent Law Associations, our Association began running an annual, one-day, joint CLE program aimed principally at young members of the profession. This program continues today with great success.
Our Association experienced another first in the 1984-1985 year when it elected Mary-Ellen Timbers as its treasurer. Mary-Ellen became our Association's first female officer. Another first was accomplished the following year when the Bureau of National Affairs published A Guide to Patent Arbitration written by our Association's Arbitration Committee chaired by Tom Creel. It was the first professional publication made available to the bar under our Association's auspices.
The 1988 Judges Dinner set yet another milestone - the 2000 attendee mark. The speaker was Chief Judge Brieant of the Southern District of New York and his remarks on the attorney/client privilege were well-received by the audience. That same year, our Association placed a special exhibit at the Federal Court House at Foley Square to celebrate the bicentennial of the United States Constitution and the Patent System. The exhibit was opened at a wine and cheese reception and the principal speaker was PTO Commissioner Donald J Quigg. The committee was chaired by Doug Wyatt and included a book on the patent system authored by Frank Scheck. The bicentennial exhibit went on the road in subsequent years, appearing in Washington as part of the Bicentennial Celebration and at the Federal Circuit courthouse.
Explosive Growth
By the 1990's, our Association was poised for explosive growth. Under the watchful eye of Frank Scheck, membership reached an all-time high of 975 in 1991 and attendance at the Judges Dinner that year topped the 2400 mark. Attendees at the Judges Dinner had the unforgettable opportunity to hear the now late Hon. Helen Nies, Chief Judge of the Federal Circuit, recount the story about how she became a judge and conclude with her own rendition of "New York, New York." That same year, our Association elected retiring Judge Howard Markey of the Federal Circuit to Honorary Life Member status. He is only the second person to be so honored in the history of our Association.
Under the leadership of Howard Barnaby, an expedition was organized to Washington, D.C. in 1992 with the object of admitting a coterie of Association members to the United States Supreme Court. In addition to the swearing-in ceremony, the weekend also featured a reception and dinner at a Washington restaurant.
Our Association continued to take a leading role on matters relating to pending intellectual property legislation. Association President Peter Saxon testified at a public hearing held at the PTO on the materiality standard for new PTO Rule 56 and Roger Smith provided a response to the Copyright Office on their request for comments concerning the registrability of costume designs. Our Association, under the guidance of Bill Brunet and John Murnane, also prepared and submitted a comprehensive report to the Bush Administration's Advisory Committee on Patent Law Reform.
Our Association continued to participate at WIPO and other international meetings involving intellectual property issues. Virginia Richard and John Olsen attended a Working Group Meeting in 1991 in Geneva and, in concert with the PTO and the USTA, succeeded in advancing the U.S. position on many key issues. John Pegram represented our Association at the U.S. Bar/JPO Liaison meeting in Tokyo, Japan while Mike Meller represented our Association at the Trilateral Users Group Meeting in Japan in 1991.
In 1992, our Association elected Andrea Ryan as its first female president and the following year again changed its name to the New York Intellectual Property Law Association. 1993 brought about a revamping of the CLE program under Ed Vassallo. The fall CLE weekends were replaced by one-day, mid-week programs in the city. Our Association also joined forces with Fordham Law School to sponsor an excellent CLE program which attracted more than 200 attendees. That same year, the Foreign Trademark Committee spearheaded by Howard Barnaby, Sue Progoff and Virginia Richard, co-hosted with Fordham Law School an excellent program on the Madrid Protocol. Our Association served as the host for the Intellectual Property Law section of the American Bar Association in conjunction with their summer meeting in New York.
The NYIPLA's Intellectual Property Law Annual, edited by Publications Committee chairman, Greg Battersby, was launched in 1994. The Annual is written by Association members and provides a concise summary of the highlights of the major areas of intellectual property law during the previous year. Copies of the Annual are distributed at no cost to each Association member and are sold to non-members.
Our Association also created a writing competition for law students and appropriately named it after its former president and now District Judge, William C. Conner. The award winning article each year was originally printed in the Greenbook and, more recently, in the Annual.
Under the leadership of Pat Razzano, our Association participated with Patent and Trademark Institute of Canada in a joint CLE Program held in the fall of 1994 at the Sagamore Hotel in Lake George.
The 1995-1996 Association year under Tom Creel saw a number of significant changes in the way our Association did business. The membership procedure was simplified and the membership roles were open to any lawyer or a student with an interest in intellectual property. In addition, a review of the entire committee structure was undertaken in conjunction with the Past President's Committee. Attendance at the 1996 Judges Dinner broke another all-time record as more than 2,700 attendees came to hear Mayor Giuliani. The new concern of future administrations became whether there was enough room at the Waldorf to house all of those interested in attending the Judges Dinner. The success of this Dinner attests to the recognition our Association and intellectual property law in general has received in the broader context of society.
Our Association has begun to revamp the committee structure under the leadership of our current president, Marty Goldstein, in order to position the Association for future growth.
A Retrospective
The continuing growth and health of the NYIPLA are eloquent testimony to the fact that the "experiments" William Houston Kenyon spoke of in 1922 have been an exceptional success in supporting the profession and the judiciary. By no means the oldest patent law association in the United States, we can nevertheless point to a history of notable accomplishments in the improvement of the intellectual property laws and protection available in this country and abroad as well as advancement of the profession. Completing its 75th year, our Association is as strong as ever and poised to welcome in the new millennium and celebrate its centennial in 2022.
1Written by Lawrence Langner, this "patent" was "reissued" by Arthur Tenser for a different menu, with deleted parts in brackets and new matter in italics, as required by Patent Office Rules, for the 50th Anniversary dinner in 1972.
2Lawrence Langner, a charter member of our Association, was a director of The Theater Guild and in later years producer of "Oklahoma".
3"The Famous Case of National Kink Safety Pin Co. v. International Bump Co. et al"; plaintiff's counsel played by Samuel Darby, defendant's counsel by Theodore C. Kenyon.