The Intellectual Property Law Section!/calbaripsection

Live Programs

Patent Disputes for Our Time: New Realities, New Approaches

Wednesday, March 23, 2016

The State Bar of California
180 Howard Street
San Francisco, CA 94105

Earn 5 Hours MCLE Credit!

Click here to register online. The deadline to register online is March 16, 2016.

Program Description | Sponsors | Program Schedule | Essential Information |
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Patent litigation and management of patent disputes have undergone seismic changes in recent years. Patent trolls, PTAB administrative proceedings, Alice, patentability issues, changing business finances, new Federal rules – they all play a part. Nowhere does patent protection play a more vital part, and nowhere are the players more sophisticated, than here in California. Come hear the latest from those who know. Read more!


Webinar: EU/US Privacy Law: With the "Safe Harbor” Closed, What Next?

Tuesday, February 9, 2016, 12 noon - 1 p.m.


This program offers 1 hour participatory of MCLE credit.
Presented by the Licensing Interest Group and the Technology, Internet and Privacy Interest Group

When the Court of Justice of The European Union struck down the EU/US Privacy “Safe Harbor” they sent shockwaves through the US privacy community.  Thousands of US companies affected by the decision were faced with the challenge of finding an alternative basis for sharing data between the EU and the US. In this webinar you’ll have a chance to learn about the Court of Justice of The European Union’s decision. You’ll also walk away with practical tips on how to structure your clients cross border data sharing in lieu of safe harbors. Speaker: Francoise Gilbert.

Webinar: Slaying the Dragon: Understanding and Effectively Managing the Use of the Model Order on E-Discovery in Patent Cases

Thursday, February 11, 2016, 12 noon - 1 p.m.


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

Many times parties stipulate to the Model Order on e-discovery in patent cases only to discover later on that they now need to negotiate a multitude of unanticipated issues. This program will discuss how to best utilize the Model Order, including areas of continuing concern, and will provide some practice pointers on how to evaluate e-discovery issues early on, in conjunction with other available tools, in order to cost-effectively and judiciously manage e-discovery in patent cases. Speaker: Mieke K. Malmberg.

Webinar: U.S. Post-Grant Review of Patents v. EPO & JPO Opposition Proceedings

Wednesday, February 17, 2016 12 noon - 1 p.m.


This program offers 1 hour participatory MCLE credit.
Presented by the International IP Interest Group.

This webinar will provide an overview of the key similarities and differences between post-grant review of patents at the PTAB and oppositions at the EPO and JPO, including the scope of review, timing/deadlines, costs, filing requirements, applicable standards, estoppel issues, discovery, appeals, and other aspects.

Moderator: David Tseng

Speaker: Ali Shalchi

Doing Business in China – How to Navigate the Perilous Waters of the Chinese Intellectual Property Enforcement System

Wednesday, March 9, 2016, 12 noon - 1 p.m.


This program offers 1 hour participatory MCLE credit.
Presented by the In-House Counsel Interest Group.

Does your company work, sell or manufacture in China? Do you provide intellectual property protection for your company’s products and trade secrets? Have your business executives reached out to you and asked if the expanding and lucrative Chinese market is an attractive teaming partner? STOP! Before you sign a contact, shift manufacturing facilities, or joint venture in the Far East spend an hour getting an overview of the state of IP protection in China. This presentation will focus on China’s intellectual property system, and the available means to enforce patents and trademarks in China. Additionally we will focus on the present IP climate in China, and how IP owners can take proactive steps to protect their IP at the outset in attempt to avoid issues later on. We will also cover some of the challenges and opportunities available for an IP owner in China. With a little bit of foresight, it IS actually possible to protect and enforce intellectual property rights in China.

Moderator: Derrick Brent

Speaker: Aaron D. Hurvitz

Inventor Compensation in Japan: Reducing Litigation Risk in Japan

Wednesday, March 30, 2016, 12 noon - 1 p.m.


This program offers 1 hour participatory MCLE credit.
Presented by the International IP Law Interest Group.

In the early 2000s, a string of inventors, to include Shuji Nakamura the winner of the 2014 Nobel Prize in Physics for inventing the blue LED, sued their former employers, arguing that they were not fairly compensated for their patent contributions. In many cases, the courts ruled in favor of the employee-inventors, which gave rise to employers’ concern that they would be dragged into costly litigation and forced to provide large sums of remuneration.

 Over a decade later, the Japanese Patent Act has now been amended, aiming to protect inventors’ rights under new “business-friendly” regulations. With the amended Act, patent rights can now belong to employers under certain circumstances. In turn, an inventor is entitled to receive “reasonable remuneration or other economic profit.” The Japan Patent Office recently released guidelines to determine the criteria for such “reasonable remuneration or other economic profits.”

 US corporations with R&D facilities in Japan must familiarize themselves with these guidelines. This webinar will provide insight as to the procedures corporations should follow in light of these new rules to minimize litigation risk from employee inventors.

Moderator: Rebecca Chen

Speaker: Tatsuya Sawada

Webinar: Mediating Trade Secret Disputes: A Mediator’s Perspective

Friday, May 6. 2016, 12 noon - 1 p.m.


This program offers 1 hour participatory MCLE credit.
Presented by the Litigation Interest Group

Trade secret litigation often involves deep levels of distrust, heated emotional exchanges, suspicion, and anger on the part of parties and counsel. One source of the problem lies at the heart of a trade secret misappropriation claim: the allegation that a ‘theft’ has occurred, and each party’s perception of the other party resulting from that allegation. The plaintiff alleges its property has been stolen by the defendant. If the plaintiff desires to avoid the time and expense of trial, the victim must now negotiate with the thief, adding insult to injury. The defendant, on the other hand, may express outrage at being accused of theft, and suspect the litigation is merely a “fishing expedition” by the plaintiff to uncover the defendant’s own trade secrets.

The allegation of theft sets the parties on a difficult path from the very outset, which can affect the likelihood of reaching a settlement during the mediation session. How then can the parties overcome these issues and reach agreement during mediation?  This webinar provides helpful tips for counsel, from knowing the definition of ‘trade secret’ in the relevant jurisdiction, communicating with opposing counsel and developing trust and cooperation if possible, to conducting thorough discovery and investigations the first time round, moderating use of expert reports and knowing when to ‘stop,’ all with the goal of assisting clients in successfully mediating trade secret disputes.

Moderator: Anne-Marie Dao

Speaker: Erica Bristol

Interest Group Meetings

Licensing Interest Group Meeting

Friday, February 12, 2016, 12 noon

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.

To participate in the meeting, the dial-in number is 855-520-7605, passcode 1211276419#.


Call for Applications: Join the IP Section Executive Committee

Application deadline: February 8, 2016 

Each year the IP Section offers attorneys in California an opportunity to contribute to the legal profession and the public by volunteering to serve on its Executive Committee. This gives IP Section members a great opportunity to get more involved with the Section, to network with colleagues, and to work on programs and other projects of interest. Our Executive Committee:

  • communicates recent developments and current issues in IP law and practice to its section membership and facilitates interaction among its members;
  • presents MCLE-accredited programs throughout the year;
  • holds retreats and networking receptions, among other exciting activities;
  • publishes New Matter.

For more information and details on how to apply, click here.

Input Requested in Copyright Studies

The Copyright Office has announced several new policy studies and is requesting input on each.  More information is available on the Copyright Office website. Studies are on the following topics:

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 Winter issue, you can earn credit for the article Ethics and Cyber Exploitation: Privacy and Copyright Law Considerations by Thomas Ward and Karin Peterka. One hour of MCLE credit can be obtained by answering a set of True/False questions.

Log on to the webiste 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.


Inquiries about writing for New Matter, please contact

MCLE Catalog

Featured CLE Program from Our Catalog!

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

Tips for Effectively Searching the USPTO Database Using TESS

A multi-part series on TESS searching skills will be discussed.  The three forms of search options available, followed by an exploration of free-form searching, field operators, and truncation will be explained.

1 hour participatory MCLE credit
More Information 

For other Intellectual Property Law Section programs, see 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 Aurelia Schultz.

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