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Intellectual Property Law Section

Live Programs

Save the Date: Intellectual Property Law Section Mix and Mingle!

Please join members of the IP Law Section for a Networking Mix & Mingle on Thursday, May 18, 2017, at 6 p.m.!

The mixer will be held simultaneously at six locations around the state! If you are, have been, or are interested in being a member of the IP Section, come meet a broad array of diverse practitioners in a relaxed and inviting venue. IP Law Section Executive Committee members and Interest Group officers will be at each location to answer questions, provide information about the Section, or simply to chat.

The six cities are (details about the venues will be announced soon):

  • Century City/Beverly Hills
  • Sacramento
  • San Diego
  • San Francisco
  • San Jose
  • Santa Monica

Look for additional information and details on Twitter @CalbarIPsection and Facebook, as well as in future editions of Inevitable Disclosures.

Webinars

Webinar: Unpacking the California Supreme Court’s Ruling in Hassell v Bird

Wednesday, April 19, 2017, 12 noon - 1p.m.

Sponsored by the Technology, Internet & Privacy Law Interest Group
This program offers 1 hour participatory MCLE credit.

REGISTER TODAY

The plaintiff in Hassell v. Bird was a lawyer who sued a former client, claiming the client posted a negative review of her on Yelp. The client never responded. The lawyer then asked the court to enter an order requiring Yelp – who was not a party to the suit - to remove the post. Yelp challenged the order. Surprisingly, in June of this year, the California Court of Appeal held that the court could force Yelp to remove the post. The court also held that this order was consistent with § 230 of the Communications Decency Act, which provides Internet service providers immunity for content created by their users (with a couple exceptions). Yelp has since asked the California Supreme Court to review the case, which was granted on Sep. 21, 2016. The court’s opinion in Hassell v Bird has been called wrong, terrible, and even brutally ugly. It touches upon the First Amendment, Section 230, due process, and prior restraint. Get ready for a lively and exciting discussion!

Moderator: Bennet Kelley
Speakers: David Gingras and Karl S. Kronenberger

Webinar: Getting Your Copy Right — Copyright Considerations in Advertising

Thursday, April 20, 2017, 12 noon - 1p.m.

Sponsored by the Copyright Interest Group, and planned by the Patent Interest Group
This program offers 1 hour participatory MCLE credit.

REGISTER TODAY

The use of creative works in advertising presents unique copyright issues. This presentation will discuss the clearance and use of such works in traditional advertising and social media, and enforcement of copyrights, including as a way to prevent false advertising and unfair competition.

Moderator: Sanjesh Sharma More Information

Speakers: Dale M. Cendali More Information
                Bonnie L. Jarrett More Information

Webinar: The 2016 TTAB Year in Review

Tuesday, May 2, 2017, 12 noon - 1 p.m.

Sponsored by the Trademark and In-House Counsel Interest Groups
This program offers 1 hour participatory MCLE credit.

REGISTER TODAY

John L. Welch’s blog, The TTABlog®, is a must-read for all trademark practitioners, and his insightful reviews of TTAB decisions are always informative and entertaining. This is a great opportunity to get caught up on those decisions you may have missed. Q&A will follow the presentation.

Moderator: Mary A. Harris
Speaker: John L. Welch More Information

Webinar: Current Developments in U.S. Patent Law With An Emphasis On Litigation and Licensing

Tuesday, May 16, 2017, 12 noon - 1 p.m.

Sponsored by the Patent Interest Group.
This program offers 1 hour participatory MCLE credit.

REGISTER TODAY

The speakers will discuss new and ongoing developments in the areas of patent litigation and licensing, including  upcoming changes in venue for patent cases in TC Heartland, including important differences for domestic and foreign defendants; the potential impact of Lexmark on patent exhaustion, post-sale use restrictions, and extraterritorial application of the patent law; the impact of the recent decision in Life Technologies and how the law may further develop for liability under §271(f)(1); and the future of the laches defense in view of SCA Hygiene.

Moderator: Sanjesh Sharma More Information

Speakers: Robert Benson More Information
                Christina Von der Ahe More Information

Webinar: Hot Off the Press: 2017 Trademark Trial and Appeal Board (TTAB) Rule Changes

Tuesday, June 13, 2017, 12 noon - 1 p.m.

Sponsored by the Trademark Interest Group and In-House Interest Group.
This program offers 1 hour participatory MCLE credit.

REGISTER TODAY

In January 2017, the Trademark Trial and Appeal Board (TTAB) issued the broadest revision of its rules in a decade. Gain insight into the practical application of the new rules in inter partes and ex parte cases through a discussion of the changes with Administrative Trademark Judge Cindy Greenbaum and Interlocutory Attorney Benjamin Okeke. Topics will include mandatory electronic filing, changes to service of the initial complaint, discovery matters, and introduction of evidence during the trial period. Learn how to navigate the new rules and avoid the pitfalls that may plague those relying on old forms and practices. This presentation is a great opportunity to get caught up on the changes to the TTAB rules and will benefit attorneys with various levels of experience practicing before the TTAB.

Moderator: Carole Barrett
Speakers: Benjamin Okeke More Information
                Cindy Greenbaum More Information

Interest Group Calls

Licensing Interest Group Call

Friday, April 14, 2017
12 noon – 1 p.m.

Dial-in number 855-520-7605, passcode 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.

In-House Counsel Interest Group Call

Tuesday, April 25, 2017
12 noon – 1 p.m.

Dial-in number 855-520-7605, passcode 1211276419#.

Calling all in-house counsels! On this complimentary member call, we will discuss topics of interest to the group and share practice tips and resources "from the trenches." We especially want to hear from YOU about topics you want us to cover in webinars, and how this Interest Group can best serve you. We will also discuss opportunities to write articles, coordinate webinars, speak on webinars, and participate in the IP section in other ways. For questions or input, please contact Interest Group Chair Mark Leonard or Vice-Chair Sophie Cohen.

Trade Secret Interest Group Call

Quarterly Trade Secret Interest Group Open Call

Wednesday, April 26, 2017
12 noon - 1p.m.

Dial-in number 855-520-7605, passcode 1211276419#.

Please join us on Wednesday April 26, 2016 at 12:00 p.m. (Pacific) for our next Trade Secrets interest group conference call. We’ll discuss ideas for upcoming webinars and opportunities for members to get involved. All IP Section members are invited to participate. For more information about the call or the Trade Secrets Interest Group, contact ​Chair Angelique Kaounis or Vice-Chair Robert Milligan.

Copyright Interest Group Call

Wednesday, May 3, 2017
12 noon

Dial-in number 855-520-7605, passcode 1211276419#.

Join the Copyright IG for its monthly conference call. This month we welcome Joshua Simmons, partner with Kirkland & Ellis LLP. Josh will lead the discussion on fair use, with a focus on theOracle America v. Google infringement case. The case is set for further review this year and is a case for copyright practitioners to watch. Join us this month and every month for current copyright-related cases and developments. Please note: Our monthly calls are the 1st Wednesday of every month at 12 noon.

News

Vanguard Award Nominations Now Open

IP Vanguard Awards

Nominations sought for the IP Vanguard Awards. Start thinking about your nominations for the 2017 Vanguard Awards! Achievements are honored in the following categories: 

  • In-House Counsel 
  • Private Practice 
  • Academic/Public Policy 
  • Judicial

The full criteria and information about past honorees are available at IP Vanguard Awards. Please submit your nominations for the 2017 IP Vanguard Awards by June 30, 2017, using the  2017 Nomination Form (.pdf). The 2017 Vanguard Awards will be presented at the always fun Vanguard Awards ceremonial luncheon during the IP Section's Annual Meeting at the 42nd Annual IP Institute occurring November 1 - 3, 2017.

USPTO announces the Patent Pro Bono Program

For years legal professionals have offered pro bono services in many other areas of law, such as domestic relations, tax, and immigration. Now, patent practitioners can donate their time to help inventors who cannot afford to obtain legal advice on the filing and prosecution of patent applications. Because only patent practitioners are registered to represent inventors before the USPTO, they are in a unique position among legal professionals to offer pro bono patent services to under-resourced inventors and small businesses. The program provides opportunities for patent practitioners to work with the regional program in their area to find a commitment that is suitable for them, while providing under-resourced inventors across the U.S. opportunities to secure legal assistance for their patent needs.

Those who provide at least 50 hours of patent pro bono service to their local pro bono program during calendar year 2017 will receive a certificate of recognition. The personalized certificates will be signed by Commissioner of Patents Andrew Hirshfeld and William Covey, Director for the Office of Enrollment and Discipline. In addition, the names of the practitioners will be posted on the USPTO website. We hope that our membership will take advantage of this opportunity. READ MORE

Call for Applications for New Matter Editors

Application deadline: June 2, 2017

New Matter is the quarterly official publication of the Intellectual Property Law Section. It is a journal of current comment and analysis of cases and issues vital to the use of intellectual property. The journal is sent free to members of the Intellectual Property Law Section. IP Section members volunteer for a variety of editor positions for a term of 1 year subject to reappointment. This is an opportunity to contribute to the legal profession and the public and a great opportunity to get more involved with the Section, network with colleagues, and work on an excellent publication.

If you are currently a member of the IP Section and are interested in being considered for an editorial position, please provide the following information to Section Coordinator John Buelter at John.Buelter@calbar.ca.gov no later than June 2, 2017;

  1. a statement of interest setting forth the reason you want the position and why you should be selected for it;
  2. a resume providing general information about your legal and publishing background;
  3. a work product /writing sample;
  4. letter(s) of recommendation (optional).

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

Self-Study CLE Tests One 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 Policing the Boundaries of Copyright: Is It Time for the Supreme Court to Step In? by William J. O'Brien. 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.

Did You Know You Can Track Your CLE Through Your State Bar Profile?

Log into your profile and click on CLE Summary and Tracking Tool. This summary reflects all in person and online participatory classes completed through the State Bar of California.

Note: Future releases will allow you to manually add courses completed through other providers.

Even if this summary reflects you have completed the required 25 hours of MCLE within your compliance period, you must still formally report compliance by submitting your MCLE compliance declaration through My State Bar Profile.

The Trade Secret Treatise Is Available for Order

Members $115/Non-Members $155. Go HERE for a description, and HERE to order. You will need to click on Intellectual Property.

Writers Wanted for New Matter

Inquiries about writing for New Matter, please contact newmatterjournal@yahoo.com.

Third-Party Programs

Consumer Messaging in Connection with Online Transactions Involving Copyrighted Works

The U.S. Department of Commerce’s Internet Policy Task Force will host a public meeting on Consumer Messaging in Connection with Online Transactions Involving Copyrighted Works from 1 p.m. - 5 p.m. ET on April 18, 2017 at the U.S. Patent and Trademark Offices headquarters in Alexandria, Virginia. The meeting will be webcast, and members of the public will have opportunities to participate.

In its January 2016 White Paper on Remix, First Sale, and Statutory Damages, the Task Force concluded that when consumers download copies of works (such as eBooks, music, and motion pictures), they do not appear to have a clear understanding of what they can legally do with those copies. It also determined that consumers may benefit from having more information about the nature of their transactions related to copyrighted works delivered online including whether they are paying for access to content or for ownership of a copy to instill greater confidence and enhance participation in the online marketplace. The Task Force is therefore convening this meeting to facilitate a dialogue about ways to improve consumers understanding of license terms and restrictions in connection with online transactions involving copyrighted works. The goal is to explore issues and facilitate a discussion, and to determine in what ways government can be of assistance.

Visit the USPTO's event page for more details and webcast information. For non-press inquiries, please contact Linda Quigley, Attorney-Adviser, Office of Policy and International Affairs (Copyright), USPTO, at linda.quigley@uspto.gov.

AIPLA 2017 Spring Meeting

May 17 – 19
San Diego, California

Make plans now to join more than 500 IP practitioners from around the globe for the second of AIPLA's three annual meetings. This year's Spring Meeting offers three days—each one comprised of three comprehensive CLE program tracks and network building. AIPLA makes earning the CLE minutes you need to maintain your credentials convenient, affordable, and professionally rewarding! In all, this year's Spring Meeting offers IP law professionals a total of 885 CLE minutes, including 1.0 hour of legal ethics. For more information, click here: http://www.aipla.org/learningcenter/SM17/Pages/default.aspx

The Silicon Valley Branch of the Patent and Trademark Office Announces Free Upcoming Events

  • April 20, 2017, 12 PM – 1 PM PT
    Patent Brown Bag “Lunch and Learn”
    Silicon Valley USPTO
    Supervisory patent examiner helps inventors and entrepreneurs during live information session.

  • April 25, 2017, 8 AM – 2 PM PT
    2017 Design Day – Live Stream
    Silicon Valley USPTO
    Join us for a lively discussion about all aspects of design patents.

  • April 25, 2017, 5 PM - 7 PM PT
    World IP Day--Silicon Valley
    Silicon Valley USPTO
    The Bay Area intellectual property (IP) community is invited to a reception celebrating World Intellectual Property Day, Innovation--Improving Lives.

  • April 27, 2017, 12 PM - 2 PM PT
    Hands-on Patent Search Workshop
    Silicon Valley USPTO
    Supervisory patent examiner will provide hands-on training on patent searching and using USPTO search tools.

  • April 29, 2017, 10 AM – 4 PM PT
    STEM Central
    Santa Clara Central Park Library
    Stop by the Silicon Valley USPTO station for information and activities.

  • May 5, 2017, 12 PM - 1 PM PT
    Silicon Valley USPTO Public Tour
    Silicon Valley USPTO
    Tour of the Silicon Valley regional office and its available resources to entrepreneurs and innovators.

  • May 9, 2017, 12 PM PT - 1 PM PT
    Trademark Tuesday
    Silicon Valley USPTO
    The Trademark Assistance Center provides trademark basics and answers questions via video conference.

  • May 18, 2017, 12 PM - 1 PM PT 
    Patent Brown Bag "Lunch and Learn"
    Silicon Valley USPTO
    Supervisory patent examiner helps inventors and entrepreneurs during live information session.

  • May 23, 2017, 12 PM - 2 PM PT
    Hands-on Patent Search Workshop
    Silicon Valley USPTO
    Supervisory patent examiner will provide hands-on training on patent searching and using USPTO search tools.

The Silicon Valley, known as one of the most prodigious and innovative entrepreneurial communities in the country, was selected as our West Coast presence to assist the USPTO in fostering and protecting innovation.  Looking for information focused on startups? Visit our Startup Resources page.

MCLE Catalog

Featured CLE Program from Our Catalog!

Online
CLE

Did you miss it? It's available in our online catalog for CLE credit!

Cryptocurrencies - Evolving Regulatory Issues and Prospects for a Cashless Society

This presentation traces the origin and development of cryptocurrencies such as Bitcoin, including emergence of cryptocurrency exchanges, virtual “wallets” and other kinds of supporting businesses. It describes the increasing flow of venture capital into the field and goes on to survey initiatives seeking to regulate cryptocurrencies, the opposition to such regulation, and how cryptocurrencies relate to the ongoing evolution of a new kind of cashless society.

1 participatory MCLE credit
More Information

For other Intellectual Property Law Section programs, see www.calbar.org/online-cle and select Intellectual Property Law Section.

Contact Us

We invite you to contact a member of the Executive Committee, or an Interest Group Officer. The IP Section has Interest Groups on:

Or contact the Editors of Inevitable Disclosure, Barbara Friedman and Matthew Neco.

The Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105
415-538-2375
IP@calbar.ca.gov