Intellectual Property Law Section
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Upcoming Standing Committee Meetings and MCLE Programs
Other News
Third-Party Programs
- SFIPLA Luncheon with Michelle Lee, new Director, Silicon Valley Office of the USPTO. May 1, 2013 in San Francisco.
- ITechLaw 2013 World Technology Law Conference & Annual Meeting, May 1-3, 2013 in Scottsdale, Arizona.
- SVIPLA Luncheon with Meet Michelle Lee, new Director, Silicon Valley Office of the USPTO, May 6, 2013 in Palo Alto. Click here for more information.
- New! Viva Vegas! will be held Friday, June 7 - Sunday, June 9, 2013, Las Vegas.
- The Intellectual Property Consortium
Upcoming Programs and Meetings
Webinar: ADR for Entertainment Law Issues
Wednesday, May 22, 2013, 12 noon - 1 p.m.
Presented by the Entertainment and Sports Law Interest Group
You must register in advance in order to attend. This program will offer 1 hour participatory MCLE credit.
The purpose of the webinar is to provide information about ADR venues specializing in entertainment law issues that attorneys may not be aware of or familiar with so that they can learn more about them and what they offer so that attorneys are able to determine when these unique venues are appropriate to offer as possible dispute resolution solutions to their clients.
Moderator: Robert Wrede, Mediator, ADR Services, Inc.
Speakers:
- Kim Tommaselli, Independent Film and Television Alliance (IFTA)
- Christina Duran, California Lawyers for the Arts
- Adam Rattray, WIPO Arbitration and Mediation Center
California Solo & Small Firm Summit
The State Bar of California California Solo & Small Firm Summit June 20-22, 2013 Renaissance Long Beach Hotel
May 29 - Hotel Reservation Deadline June 13 - Pre-registration Deadline
The Summit is the Event of the Year for California’s solo and small firm practitioners. The Summit content is geared to California attorneys who are in a solo or small firm practice. One low registration fee gives full choice among 32 workshops and programs, and much more! Group discounts are available.
Earn up to 10 hours of MCLE credit, including credit in Legal Ethics. Select courses also offer legal specialization credit.
For more information, see California Solo & Small Firm Summit.
Intellectual Property in Entertainment & Media
Thursday, June 27, 2013 The Luxe Hotel 11461 Sunset Blvd. Los Angeles, CA 90049 Earn 6.25 Hours MCLE Credit
You can now REGISTER ONLINE for this program!
The Intellectual Property in Entertainment & Media full day conference will be held Thursday, June 27, 2013, at the Luxe Sunset Boulevard in Los Angeles.
The conference will cover a wide range of cutting-edge and compelling topics specific to intellectual property law in entertainment and media, including presentations on theatre and film, gaming, right of publicity, social media, and litigation.
Our speakers are among the best and brightest in their fields, including individuals from large entertainment companies, and noted attorneys from both small and large law firms.
There will also be several opportunities for networking, including a luncheon and cocktail reception.
The full program brochure is now online. See IP in Entertainment and Media.
Copyright Interest Planning Call
The Copyright Interest Group will hold a planning call on June 5 at 12:00 p.m. The call-in number is 1-855-520-7605 and the passcode is 121276419.
During the call we will discuss potential topics for CLE webinars, topical teleconferences, social/networking events, ideas for articles and other potential activities. This is a great opportunity to suggest activities and/or topics you would be interested in learning more about or subjects you would be interested in writing about. It's also a chance for you to get involved with the Copyright Interest Group's activities.
All IP Section members interested in getting more involved with the Copyright Interest Group are invited to participate, as well as those who simply want to provide input.
The call will be moderated by Cydney Tune, Chair of the Copyright Interest Group. If you can't make the call but want to be involved, please feel free to send Cydney an email at cydney.tune@pillsburylaw.com or to our Vice Chairs Chris Lockard at Chris.Lockard@clorox.com or Matt Neco at matthew.neco@gmail.com.
Other News
Photos from The Trademark Office Comes to California
The Trademark Office Comes to California was held in Los Angeles on April 16 and in San Francisco on April 18.
In the top photo, Trademark Commissioner Debra Cohn (in pink) is pictured with Sharon Marsh, Deputy Commissioner for Examination Policy.
In the photo below, IP Section Chair Mark Leonard presents the 2012 Vanguard award for In-House counsel to Twitter's General Counsel, Alexander Macgillivray.
PTO Solicits Ideas and Feedback About RCEs
The USPTO currently has a backlog of applications awaiting examination after a Request for Continued Examination (RCE) has been filed, and is actively pursuing efforts to address this backlog. But as it addresses that backlog it is also testing initiatives that may reduce the number of RCEs that need to be filed.
To further assist and help shape future RCE backlog reduction efforts, the USPTO desires to learn more about the root causes for RCE filings and related pressure points experienced by the stakeholder community. In close collaboration with the Patent Public Advisory Committee (PPAC), the Patent Office recently initiated an RCE Outreach program which seeks to gather input from stakeholders about RCEs.
The purpose of this effort is not to eliminate RCE practice or in any way disadvantage it, but rather enable applicants to use RCE practice when needed and avoid it when equal or better options may be available. The RCE Outreach program web page has a wealth of data about RCE filing and prosecution behaviors, an online collaboration tool for submitting comments, and a series of questions about RCE practice. Patent practitioners nationwide are invited to become part of the conversation and future solutions.
The RCE Outreach initiative will also feature a series of roundtables and smaller focus sessions in Silicon Valley, Dallas, New York, Chicago, and at USPTO headquarters in Alexandria, Va. As they become available, the details on how to participate will be listed on the Office’s RCE Outreach Web page. http://www.uspto.gov/patents/init_events/rce_outreach.jsp
USPTO Announces TTAB Dashboard
The USPTO has added the TTAB Dashboard to its Data Visualization Center. The dashboard provides easy access to the average pendency of contested motions; the average pendency of appeal and trial cases being decided on the merits; and additional data that tracks new filings and inventory. The data will be updated every quarter and will provide comparisons with prior quarters.
There are 3 main sections in which the data is presented: first, key pendency measures, information on new filings with the board, and pending inventory; second, information about the docket of ex parte appeals, which is the source of approximately 3/4 of the final decisions on the merits issued each year by the TTAB; and third, information on oppositions and cancellations, and the Board's trial cases, including contested motions.Users will be able to identify trends, and track, by age, various types of motions.
Here is the link to the dashboard: http://1.usa.gov/Y75v24 The USPTO welcomes feedback on this resource, which can be sent to TTABdashboard@uspto.gov.
Meet your Executive Committee Members -- This Month: Elizabeth Rest
Elizabeth is an attorney at Hiaring + Smith in San Rafael. Elizabeth’s practice is focused on representing clients in trademark prosecution and enforcement, copyright, entertainment, rights of publicity, domain name disputes, business entity formation and maintenance, and the licensing of intellectual property. Elizabeth is a member of the State Bar of California Intellectual Property Law Section Executive Committee, and serves as Chair of the IP Section’s Entertainment and Sports Law Interest Group.
Elizabeth is also a member of the American Bar Association’s section on Intellectual Property, and its Forum Committee on the Entertainment and Sports Industries, the Bar Association of San Francisco, and the Marin County Bar. Elizabeth is a regular writer and speaker on intellectual property and entertainment law issues. When she isn’t working, Elizabeth enjoys live theatre and music, hiking, and trying to learn to dance ballet.
Update from the Legislation Interest Group
The USPTO has requested comments from the public on a Notice of Proposed Rulemaking (NPRM) on the recently enacted Patent Law Treaty, the Hague Treaty on Industrial Designs. Some provisions of the PLT are:
- A claim is not required for a non-provisional application (other than for a design patent) to be entitled to a filing date (a claim is currently not required for a provisional application to be entitled to a filing date).
- A non-provisional application may be filed ‘‘by reference’’ to a previously filed application in lieu of filing the specification and drawings. The applicant will be given a period of time within which to supply a claim and/or claims or a copy of the specification and drawings of the previously filed application.
- Revival of abandoned applications and acceptance of delayed maintenance fee payments may be based solely on ‘‘unintentional’’ delay. The PLT eliminates the provisions of the patent statutes relating to revival of abandoned applications or acceptance of delayed maintenance fee payments on the basis of a showing of ‘‘unavoidable’’ delay.
- If a subsequent application is filed after the expiration of the twelve-month period (six-month period in the case of a design application) set forth in 35 U.S.C. 119(a), but within two months from the expiration of the twelve-month period (six-month period in the case of a design application), the right of priority in the subsequent application may be restored upon petition and payment of the applicable fee if the delay in filing the subsequent application within the twelve- or six-month period was unintentional.
- If the subsequent application is filed after the expiration of the twelve-month period set forth in 35 U.S.C. 119(e), but within two months from the expiration of the twelve-month period, the benefit of the provisional application may be restored upon petition and payment of the applicable fee if the delay in filing the subsequent application within the twelve-month period was unintentional.
- Patent term adjustment rules provide for a reduction of any patent term adjustment if an application is not in condition for examination within eight months of its filing date (or date of commencement of national stage in an international application).
The Notice can be found in the Federal Register at http://1.usa.gov/13tp5nw
Important Dates from the US Copyright Office
The Copyright Office has announced several important deadlines for comments on a variety of issues. More information can be found on the Copyright Office's website, http://1.usa.gov/VtwnT9.
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May 6, 2013: “Copyright Matters” event, “Nimmer on Copyright” in the Coolidge Auditorium, Library of Congress
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May 21, 2013: Due date for comments on technological upgrades to registration and recordation functions
Did You Know You Can Beef Up Your Member Record on the State Bar's Website?
Were you aware of the feature on the State Bar's website that allows you to add a photo and otherwise expand your State Bar profile?
Using a secure link within My State Bar Profile, attorneys may add information to their public record to include area(s) of practice, any additional language(s) spoken, their law firm’s website address and a photo.
To get started, log in to My State Bar Profile, and click on the “Expanded Profile” link.
One Hour MCLE Is Available in the Latest Issue of New Matter
One hour of MCLE is available in the current issue of New Matter, the State Bar IP Section's quarterly magazine. For the Spring 2013 issue, you can earn credit for the article Willfully Blind: The Causation Anomaly in Patent Lost Profits Awards. One hour of MCLE credit can be obtained by answering a set of True/False questions.
See all of the self-study articles available in our catalog at www.calbar.org/self-study. Watch for other MCLE credit available in future issues of New Matter.
India Joins the Madrid Protocol
On April 8, 2013 India joined the Madrid Protocol for the International Registration of Marks at WIPO, bringing the total number of members of the international trademark system to 90. The treaty will take effect with respect to India on July 8, 2013. From this date, trademark owners can designate India as part of a new Madrid Protocol international application or extend existing Madrid Protocol applications/registrations to subsequently designate India.
Now Available! 2011 Supplement to Trade Secret Litigation and Protection in California (Second Edition)
The IP Section proudly announces publication of its 2011 Supplement to the practice guide "Trade Secret Litigation and Protection in California (Second Edition)" published by the State Bar of California in 2009. Written by California practitioners, this treatise explains the fundamentals and intricacies of California trade secret law. The treatise is a resource for anyone working with trade secrets prior to or during litigation.
The 2011 Supplement updates the statutory and case law in the Second Edition of the Trade Secret Protection and Litigation in California practice guide. The updates include additional practical tips for protecting trade secrets and for handling trade secret disputes.
Recent developments addressed in this supplement include:
- Discussion and analysis of more than fifty new cases on topics including misappropriation, preemption, identification of trade secrets, injunctions, damages, and attorneys fees;
- New content regarding social media policies and measures to protect against trade secret theft;
- New and updated jury instructions from the Judicial Council's official California Civil Instructions (CACI) for use in use in trade secret misappropriation cases applying California law.
The cost of the treatise and supplement together is $105.00 and the supplement alone is $10.00. You can order online now (click on "Order Sections Products," then "Intellectual Property") or use the publications mail order form.
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Photos from the IP Interest Group April 10 Multi-City Mixer
On Wednesday, April 10, the IP Section Interest Groups held a multi-city Networking Mix & Mingle. Sponsoring groups were the In-House Counsel Interest Group, in cooperation with the Licensing; Patent; Copyright; Trade Secrets; Technology, Internet, and Privacy; Entertainment & Sports, International Law, and; Litigation Interest Groups.
IP attorneys, young lawyers and other interested persons simultaneously gathered at Wokcano in Santa Monica, Sens Restaurant in San Francisco, The X Bar in Century City, The LumberYard in Laguna Beach, and McGregor's in San Diego.
Photos have begun to trickle in, and here's the first batch. Larger versions of the photos can be found on our Facebook page: www.facebook.com/calbaripsection.
The IP Section's Annual Washington D.C. Delegation
IP Section’s annual delegation from the Executive Committee recently went to Washington DC to meet and greet with federal agencies, judges and officials at the USPTO, the ITC, and the U.S. Copyright Office to discuss IP related issues important to our members.
Cydney Tune, Mark Leonard, George Borkowski, Karen Canady, Anthony Craig, and Deborah Greaves
Meet Your New Secretary-Elect Deborah Greaves
Deborah Greaves is the newly elected Secretary of the State Bar’s IP Section. Her term will begin this Fall at the close of the Bar’s Annual Meeting. She is also chairing the Section’s conference on International IP law this Fall.
Deborah serves as Secretary and General Counsel to True Religion Brand Jeans, a premium apparel company that trades on NASDAQ. She has worked as an attorney representing premium apparel brands for the past sixteen years. Her key practice areas include intellectual property, brand enforcement, corporate governance (public and private, domestic and international) commercial/business transactions, employment matters, litigation and compliance.
She is licensed to practice in the State of California, the U.S. District Court (Central Dist. of California) and U.S. Supreme Court. In addition to her work with the Bar, Deborah sits on the Board of Directors of the International Anti-Counterfeiting Coalition. She has been a member of INTA’s North American Committee Against Counterfeiting, including its Public Education and Awareness Task Force and has served as a co-chair of the IACC’s Public Education and Awareness Task Force, and now chairs its China Task Force.
Featured CLE Program from Our Catalog!
Listen to Intellectual Property Law Section programs over the internet for participatory MCLE credit. Choose from more than a hundred hours of IP-related programs, and hundreds of other official State Bar of California MCLE programs. For more information, see www.calbar.org/online-cle and select Intellectual Property Law Section.
Did you miss this program? It's available in our online catalog for participatory CLE credit!
Ethical Lawyering in a Bad Economy
Trademark, International IP and Licensing Interest Groups teleseminar originally held December 13, 2011 1 hour participatory CLE; $35 Online Seminar (Audio Only): More Information CLEtoGo (Pod Casts): More Information
Faculty: Noah Rosenthal, Howard Rice
Congratulations to the Winners of the 2012 IP Vanguard Awards!
The Executive Committee of the IP Law Section is pleased to honor outstanding legal professionals who are spearheading new developments in the world of intellectual property. The IP Vanguard Awards were presented during a special awards luncheon on Friday, November 9, 2012 at the Omni Hotel in San Diego during the IP Institute. Photos of the event are posted on the IP Section's Facebook page. The 2012 honorees are:
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In-House Counsel
Alexander Macgillivray  General Counsel, Twitter
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Judiciary
Honorable William Alsup  United States District Court, Northern District of California
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Academic or Public Policy
Pamela Samuelson  Faculty Director, Berkeley Center for Law & Technology
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Private Practice
Kate H. Murashige  Morrison Foerster
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Save Money with CEB
Continuing Education of the Bar, California (CEB) is extending some special discount offers to our section. As a member of the Intellectual Property Law Section, you're eligible for:
- 10% off selected CEB print or online books
- A rebate on your section dues that can be applied to the cost of a CEB Gold CLE Passport or a CLE program ticket
A complete list of the products eligible for a discount is available on a CEB web page accessible through our Members Only Area. Information about the section dues rebate program can be found on the CEB Web site.
Third-Party Programs
San Francisco Intellectual Property Law Association’s Luncheon for Michelle Lee, Director, Silicon Valley Office of the USPTO
Tomorrow! May 1, 2013
LOCATION: Bingham McCutchen LLP, Three Embarcadero Center, Twenty-Eighth Floor, San Francisco, CA 94111
TIME: 12 noon - 1 p.m. -- lunch will be served
COST: $35 members; $40 non-members; $15 students
Ms. Lee will discuss the vision, goals and plans for the new Silicon Valley office of the USPTO. Among other topics, Ms. Lee will share with the audience the services to be offered, updates on, and opportunities for local companies, law firms, entrepreneurs and inventors to interact with, the Silicon Valley USPTO. Beginning in May 2013, the administrative law judges and support staff for the Silicon Valley office will be temporarily based out of a U.S. Geological Survey facility on Middlefield Road in Menlo Park.
Ms. Lee was previously Deputy General Counsel and Head of Patents and Patent Strategy at Google Inc. Â Joining Google in 2003, she built the company’s patent team of 70+ professionals from scratch. In 2011, she led Google’s $12.5 billion acquisition of Motorola Mobility and its patent assets. Prior to Google, Ms. Lee was a partner in the intellectual property group at Fenwick & West. She also worked as a judicial clerk at both the Federal Circuit and the Northern District of California.
Ms. Lee holds an M.S. and a B.S. in Electrical Engineering and Computer Science from the Massachusetts Institute of Technology, and a J.D. from Stanford.
Registration is required, as space is limited. To RSVP, contact the SFIPLA Administrator at info@sfipla.com. Please include name, firm/company, state bar number, telephone number and e-mail address. Or you can use PayPal via the website (www.sfipla.com, click on "Monthly Programs" link).
ITechLaw 2013 World Technology Law Conference & Annual Meeting
Scottsdale, Arizona, May 1-3, 2013
ITechLaw invites you to the ITechLaw 2013 World Technology Law Conference & Annual Meeting, to be held in Scottsdale, Arizona, on May 1-3, 2013. As an Affiliate Sponsor of this event, State Bar of California IP Section members are eligible to register at the ITechLaw Member & Affiliate level for this conference.
To register, visit http://www.itechlaw.org/scottsdale2013/register.html and click Register Now. Please choose the ITechLaw Member & Affiliate registration level, and enter CALBAR13 as the affiliate code at the prompt during the registration process. Early Bird Registration savings end March 22, 2013, so we encourage you to register early.
During the 2013 World Technology Law Conference & Annual Meeting, you can expect a high-level, professional exchange of knowledge and skills related to technology law, including:
- More than 225 industry professionals from over 40 countries;
- 35+ renowned speakers providing in-depth presentations and contributed papers; and
- One-on-one discussions with your colleagues from around the globe during the many networking opportunities throughout the conference.
Industry leaders from around the globe will discuss the most critical issues in technology law, including:
- E-Commerce, including Crowd-Funding and Mobile Payments;
- Privacy and Big Data;
- Data Security;
- Advanced IT Drafting;
- Hi-Tech Patents;
- Agile & Open Source;
- Technology & Healthcare; and
- Interactive Workshops on Arbitration & Mediation and Social Media & Gaming
Grow your global referral network through the conferences many social events, including a Welcome Reception at the Westin Kierland, a formal, black tie encouraged Gala Dinner at the Musical Instrument Museum (ticketed event) on Thursday, May 2, and our Closing Reception at local restaurant El Santo on Friday, May 3.
Visit http://www.itechlaw.org/scottsdale2013/index.html for more information and to register. Contact ITechLaw Member Services (memberservices@itechlaw.org) or call 1-781-876-6299 for additional information.
Silicon Valley Intellectual Property Law Association's Luncheon to Meet Michelle Lee, New Silicon Valley USPTO Director
May 6, 2013
LOCATION: Perkins Coie LLP, 3150 Porter Drive, Palo Alto
TIME: Noon - 2:00 p.m.
COST: $10 (SVIPLA member); $15 (SVIPLA non-member)
REGISTER: Click here.
Meet Michelle Lee, who will be leading a conversation on such topics as: an update on the new office and role, and opportunities for local companies to interact.
She is best known for her role as deputy general counsel and head of patents at Google. She joined the technology giant in 2003 and built the company’s IP legal team from the ground up.
She also spent time at Fenwick & West LLP, where she was a member of the IP and patent group and represented clients including Cisco Systems Inc., Logitech, Apple, Sun Microsystems and others.
Viva Vegas!
Friday, June 7 - Sunday, June 9, 2013, Las Vegas
The IP Section is Co-Sponsor of "Viva Vegas!" -- an exciting educational and social event at the beautiful Four Seasons Hotel in Las Vegas, June 7-9, 2013. The seminar features nine hours of panel discussions and presentations on the latest developments in intellectual property law, provides excellent networking opportunities, cocktail receptions and dinners, and allows time for relaxation and enjoyable outdoor activities. Speakers and panelists include federal judges, leading practitioners (including in-house attorneys), academics, and the highest-level official at the US Patent Office. Bring the whole family to one of the great IP events of the year. IP Section members can register at the same discounted rate as members of the Los Angeles Intellectual Property Law Association. For a brochure and registration, visit http://www.laipla.net/event/spring-seminar-2013/ or www.laipla.net.
The Intellectual Property Colloquium
We believe IP Section members may be interested in this message from the IP Colloquium:
The Intellectual Property Colloquium is an online audio program devoted to intellectual property topics. We aspire to be something like an NPR talk show, but focused on copyrights and patents, and aimed primarily at a legal audience. The programs are neither lectures nor debates. They are conversations, with high-profile guests drawn from academia, the entertainment community, and the various technology industries.
Each program lasts one hour: is downloadable; and any lawyer who listens can earn free CLE credit in California, New York, Texas, Illinois, Washington, and soon over a dozen more states.
The programs are hosted by UCLA Law Professor Doug Lichtman. Our current show, an archive of previous programs, a schedule of upcoming audios, and various subscription methods are all available at www.ipcolloquium.com. Questions: Email Professor Lichtman at lichtman@law.ucla.edu.
Contact Us
Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105-1639
415-538-2375
415-538-2368 fax