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Intellectual Property Law Section


Intellectual Property Law Section

IP Section...

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Upcoming Standing Committee Meetings and MCLE Programs

Other News

Upcoming MCLE Programs and Interest Group Meetings

Licensing Interest Group Conference Call

Friday, July 10, 2015, 12 noon - 1 p.m.

Call in number: 855-520-7605, Conference Code 1211276419#

Monthly "All Hands" Licensing IG conference call. We'll discuss upcoming webinars and conferences, opportunities for members to get involved and Hot Topics.

Please note: Our monthly calls are the 2nd Friday of every month.

Trademark Interest Group Roundtable Meeting, July 15, 12 Noon - 1 p.m.

Call in number: 855-520-7605, Conference Code 1211276419#

The Trademark Interest Group will hold a free roundtable call on July 15 at noon to discuss ideas for future program topics as well as share tips and experiences with managing foreign associates and the scope and depth of initial trademark clearances and watch services. Whether you are a new trademark attorney or have been practicing for years we are certain you'll learn some valuable practice tips from these discussions, so please join us!

Webinar: Hot Topics in Trade Secret Law

Tuesday, July 14, 2015, 12 noon - 1 p.m.

Presented by the Trade Secrets Interest Group

This program offers 1 hour participatory MCLE credit. You must register in advance in order to participate.

The editors of the IP Section’s Trade Secret Treatise will discuss some of the latest developments in trade secret law in California, including a discussion of recent cases regarding preemption, damages, bad faith, non-compete and no ”re hire” agreements. They will also discuss practical tips for protecting trade secrets, conducting trade secret theft investigations, drafting enforceable trade secret protection covenants, and litigating trade secret cases.

Speakers Randy Kay, Rebecca Edelson, and Robert Milligan specialize in trade secret litigation and counseling. Randy is a partner at Jones Day in San Diego. Rebecca is a partner at Steptoe in Los Angeles. Robert is a partner at Seyfarth Shaw in Los Angeles. They are former State Bar IP Section Executive Committee members and the editors of the Section’s Trade Secret Treatise.

People who sign up for the program may receive $10 off the price of the Treatise. Purchase the Treatise HERE, and use this code: IPInstitute2015

Webinar: Effective Communication Skills, Techniques, and Recommendations for In House Counsel - with Special Focus on International Firms and Foreign Counsel

Wednesday, July 22, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, In-House Interest Group

This program offers 1 hour participatory MCLE credit. You must register in advance in order to participate.

Communicating effectively, and working closely with foreign counsel is a critical skill for in-house counsel in today's international marketplace. This program will feature a discussion of best practices and tips on how to manage and facilitate your experiences with foreign counsel, particularly those based in Asia. In her role as "foreign counsel liaison," Rebecca Chen, specializes in comparative law, and facilitates communication between her firm's Japanese attorneys and clients throughout the world. Much of this communication is based upon explanations in the differences in law. She will extrapolate from her years of experience, providing advice and recommendations for improved and enhanced communication with foreign counsel in general.

Speaker: Rebecca Chen, SUGIMURA International Patent & Trademark Attorneys Foreign Counsel Liaison/US Attorney Ms. Chen leads her firm's business development and client relations within North America, South America, and Europe. Ms. Chen is active in the IP community, serving as the Chair of the IP Section's International Interest group and as the Section's delegate on the JPO/US Bar Liaison Council. She is also a Vice Chair of the ABA YLD IP Law Committee, and the Co-Chair of the Corporate Patent Seminar. Prior to joining Sugimura, Ms. Chen worked in-house, in the legal department of an international software company in Minneapolis. She has also worked in law firms in New York, and Beijing. Ms. Chen has her JD from the University of Minnesota Law School, and a BA in Economics, and a BA in Psychology, both from UC-Davis.


  • Derrick Brent
  • Georgann Grunebach

Webinar: Export Controls and the In-House Counsel - What You Don't Know Can Certainly Hurt Your Client

Wednesday, August 5, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, In-House Interest Group

This program offers 1 hour participatory MCLE credit. You must register in advance in order to participate

Does your in-house client ever work with people outside the United States? Do they communicate, ship, or sell outside our borders? Did you know that certain intellectual property can't be shared with non-US persons without first securing Government permission? Did you know that failure to secure those critical licenses could expose your clients to criminal charges, penalties and contractual sanctions? Join the In-House Interest Group to hear a presentation as the speaker provides a general overview of export controls. The obligations of In-House counsel as they support their companies' contracts in military, dual-use or commercial programs will be described. The following questions will be answered: "When does an export occur, and when do I need a license? When and how will I encounter export issues on a day to day basis? Will I encounter issues, even if my company is only providing services, training and education? Who and what are the prohibited individuals and countries that my company cannot provide technical data, without risking sanctions? What you don't know can indeed hurt you and your client!

Speaker: Kathleen C. Little, Ms. Little concentrates her practice in export controls and government contracts. She counsels on a wide variety of international issues, including compliance with the International Traffic in Arms Regulations (ITAR), the Export Administration Regulations (EAR), sanctions regulations administered by the Office of Foreign Assets Control (OFAC), and the Foreign Corrupt Practices Act (FCPA). A graduate of George Washington University Law School and The University of Maryland. Ms. Little brings thirty years of experience to the field of providing intellectual property to foreign persons or across borders.


  • Derrick Brent
  • Georgann Grunebach

Webinar: Trademark Application Challenges in Greater China

Tuesday, August 11, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, Trademake Interest Group

This program offers 1 hour participatory MCLE credit. You must register in advance in order to participate.

Category: Intellectual Property Law The intricacies and importance of the "who, what, when and how" of trademark registration in China in view of changes in the law will be discussed. Discussion will include contested procedures, and registration tips for Hong Kong, Macau, and Taiwan.

Speaker: Chloe Lee is a partner at J. S. Gale & Co in Hong Kong and is the head of the IP group. Chloe has more than 20 years of experience in a wide spectrum of IP-related matters covering non-contentious, contentious, anti-counterfeiting, merchandising, portfolio management, licensing, franchising, and domain names in Asia and other parts of the world. Chloe advises clients on drafting IP-related contracts and has litigated for multi-national corporations including toy manufacturers, vehicle makers, retail chain stores, and fashion brand names.

Moderator: Carole Barrett, Barrett IP Law

Webinar: Depression, Mental Health, and Ethics: An Unspoken Stigma in Law: Causes, Prophylactics, and Cures?

Wednesday, August 12, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, In-House Interest Group

This program offers 1 hour participatory MCLE credit; 0.5 hours in Competency Issues (formerly Detection/Prevention of Substance Abuse) and 0.5 hours in Legal Ethics . You must register in advance in order to participate.

Category: Intellectual Property Law Sex, drugs, and alcohol are often merely the symptoms, and not the underlying causes of career killing, self-destructive behavior by intelligent, trained legal professionals. In this unique presentation, specially tailored for California in-house counsel, the oft ignored issue of mental health challenges for intellectual property counsel will be addressed. Statistical analysis, descriptive definitions, and the impact on the IP practitioner, with opportunities for career saving support are described in detail. Depression, anxiety disorders, work and familial stressors, as they impact lawyers at each stage of their career will be discussed. Myths related to mental illness, and the legal professional will also be addressed as well as self-reporting issues within a corporation and with the State Bar. Finally, tools for self-evaluation, recognition, and resources for care are provided. This one hour webinar could change your career, and your life!

Speaker: Mercedes K. Meyer, Ph.D., JD Drinker Biddle & Reath LLP is a partner in the Intellectual Property Practice Group of Drinker Biddle & Reath, LLP where she drafts, prosecutes, and opines on U.S and foreign biotech patents. She also manages domestic and foreign patent portfolios for international chemical and biotech companies throughout the world. Mercedes co-authored Patent Ethics - Prosecution (2009) with David Hricik for Oxford University Press. She speaks and provides expert opinions on ethics issues arising from patent prosecution. Mercedes received her bachelor's degree in chemistry from Bryn Mawr College, and her Ph.D. in virology from the University of Texas Graduate School of Biomedical Sciences at Houston and The University of Texas M.D. Anderson Cancer Center. She earned her J.D. from the University of Houston Law Center


  • Derrick Brent
  • Georgann Grunebach

Intellectual Property in Entertainment and Media

SAVE THE DATE!  The Intellectual Property Law Section of the State Bar of California is presenting the Intellectual Property in Entertainment and Media conference on Thursday, September 10, 2015, at the Hyatt Regency Century Plaza 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 branding in the digital age, merchandising, music licensing, right of publicity, social media, and litigation. Our speakers are among the best and brightest in their fields, including individuals from large companies and studios, and noted attorneys from both small and large law firms.

There will also be several opportunities for networking.

Other News

Copyright Office Releases Report on Orphan Works and Mass Digitization

On June 4th, the U.S. Copyright Office released Orphan Works and Mass Digitization: A Report of the Register of Copyrights. The Report documents the legal and business challenges faced by good faith users who seek to use orphan works and/or engage in mass digitization projects. It provides a series of legislative recommendations that offer users a way forward out of gridlock, but also take into account the concerns and exclusive rights of authors and other copyright owners.
With respect to orphan works, the Report provides draft legislation that draws upon the Shawn Bentley Orphan Works Act passed by the Senate seven years ago, albeit with some updates and changes that reflect intervening developments and public discussions.

With respect to mass digitization, the Report recommends a more incremental approach that would allow the United States to gain experience with an extended collective licensing framework that is in use or under consideration elsewhere in the world. The Office suggests a “pilot program” that would enable users to digitize and provide access to certain works for research and education purposes under conditions to be agreed upon between rightsholder and user representatives. To assist it in developing appropriate legislation, the Office is issuing a Notice of Inquiry contemporaneously with the Report, inviting public comment on various issues concerning the scope and administration of such a program.

The full report is available at http://1.usa.gov/1dd1W02. The Notice of Inquiry is available http://1.usa.gov/1cXjGie. Written comments are due on or before August 10, 2015.

IP Sections Visits Washington, DC

See larger versions of the photos on the IP Section's Facebook page.

From left to right, delegation members Derrick L. Brent, Christopher R. Lockard, Anne-Marie D. Dao, Delegation Chair Elizabeth J. Rest, Charles A. Pearson, Director, International Patent Legal Administration, Peggy Focarino, Commissioner for Patents, Valencia Martin Wallace, Deputy Commissioner for Patent Quality, Section Chair Sophie Cohen, Andrew Faile, Deputy Commissioner for Patent Operations, Drew Hirshfeld, Deputy Commissioner for Patent Examination Policy, and delegation member Thomas Hassing.

From left to right, DC delegation members Derrick L. Brent, Thomas Hassing, Anne-Marie D. Dao, Christopher R. Lockard, Delegation Chair Elizabeth J. Rest, Section Chair Sophie Cohen, Sharon Marsh, USPTO Deputy Commissioner for Trademark Examination Policy, Mary Boney Denison, USPTO Commissioner for Trademarks, and Steven R. Berk, Trademarks Chief of Staff.

From left to right, DC delegation members Anne-Marie D. Dao, Derrick L. Brent, Thomas Hassing, Section Chair Sophie Cohen, and delegate Christopher R. Lockard.

From left to right, DC delegation members Derrick L. Brent, Thomas Hassing, Christopher R. Lockard, Trademark Trial & Appeal Board Chief Judge Gerard Rogers, Delegation Chair Elizabeth J. Rest, and Section Chair Sophie Cohen.

From left to right, DC delegation members Thomas Hassing, Anne-Marie D. Dao, Christopher R. Lockard, Jose R. Silva, Program Manager Homeland Security Investigations, National IPR Coordination Center, and Delegation Chair Elizabeth J. Rest.

Counterfeit goods display at National IPR Coordination Center, Arlington, Virginia.

Delegation Chair Elizabeth J. Rest, and Section Chair Sophie Cohen at IPR Center display at the National Museum of Crime & Punishment, Washington, D.C.

From left to right, DC delegation member Christopher R. Lockard, Section Chair Sophie Cohen, Delegation Chair Elizabeth J. Rest, delegation members Anne-Marie D. Dao, Thomas Hassing, and Derrick L. Brent at National IPR Coordination Center, Arlington, Virginia.

The New Trade Secret Treatise Is Available for Order

The new Trade Secret Treatise is available for order!  The IP Section proudly announces publication of the Third Edition of its practice guide “Trade Secret Litigation and Protection in California.”  This twenty-seven chapter treatise provides a comprehensive review and analysis of California trade secret law.  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 in litigation or providing counsel on trade secret issues.  The Third Edition includes two new chapters on digital forensics and the pursuit of trade secret claims at the International Trade Commission, as well as a model non-disclosure agreement and protective order.  The new edition also provides updates of the recent case developments in the trade secret law since the 2nd Edition.

Members $115/Non-Members $155. Order here: http://bit.ly/1HDi20P. If you have any trouble with that link, go HERE and click on Intellectual Property.

 WRITERS WANTED for New Matter

New Matter invites you to write and submit original articles on current issues relating to intellectual property, such as reasoned opinion, practice tips, or scholarly analysis.

New Matter is looking for articles between 1500-6000 words.  Please contact the Acquisitions Editor, Amanda Nye at anye@lawyersatlargellc.com for more details.

For more information, please contact our editorial staff at newmatterjournal@yahoo.com.

One Hour MCLE Is Available in the Latest Issue of New Matter

Self-Study CLE TestsOne hour of MCLE is available in the current issue of New Matter, the State Bar IP Section's quarterly magazine.

For the Spring issue, you can earn credit for the article Software Patent after Alice v. CLS Bank International by Jaideep Venkatesan. One hour of MCLE credit can be obtained by answering a set of True/False questions.

Log on to the webiste www.calbar.org/self-study for details. Watch for other MCLE credit available in future issues of New Matter.

Featured Program in 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.

Online CLEDid you miss this program? It's available in our online catalog for CLE credit!

Representing a Corporate Victim of Trade Secrets Misappropriation in Dealing with Criminal Prosecutors

This program will cover the following topics:

  • the pros and cons of making a criminal referral of a trade secrets misappropriation
  • when and how to make a criminal referral
  • working with the government to develop evidence, including witness testimony
  • effect of a criminal proceeding on related civil proceedings
  • issues of privilege
  • protecting the trade secrets during the investigation
  • protecting the trade secrets during trial (including issues re closing a courtroom)

1 hour participatory MCLE credit
More Information 

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.Featured CLE Program from Our Catalog!

Save Money with CEB

CEB Discount Program for Section MembersContinuing 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.

Contact Us

Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105-1639
415-538-2368 fax