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Intellectual Property Law Section

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Intellectual Property Law Section

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Upcoming MCLE Programs and Inerest Group Meetings

Other News

Third-Party Programs

Upcoming MCLE Programs and Meetings

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 In-House Counsel 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, Esq., Foreign Counsel Liaison/US Attorney,SUGIMURA Intellectual Property Services, Inc., Palo Alto. 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.

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

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

Presented by the In-House Counsel 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 by Ms. Kathleen C. Little of Vinson and Elkins, as she provides a general overview of export controls. She will describe in clear terms the obligations of In-House counsel as they support their companies’ contracts in military, dual-use or commercial programs. Ms. Little will answer questions like, “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, Washington, DC. 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.

Webinar: Trademark Application Challenges in Greater China

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

Presented by the Trademark Interest Group

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

Chloe Lee will discuss the intricacies and importance of the “who, what, when and how” of trademark registration in China in view of changes in the law. Discussion will include contested procedures, and registration tips for Hong Kong, Macau, and Taiwan.

Moderator: Carole Barrett

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.

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 In-House Counsel Interest Group

This program includes .5 hours of Ethics and .5 hours of Substance Abuse CLE credit. You must register in advance in order to participate.

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, Mercedes Meyer, PhD., JD addresses the oft ignored issue of mental health challenges for intellectual property counsel. 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, PhD., JD 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.

Webinar: What's the Deal? What In-House Counsel Need to Know About Intellectual Property Transactions

Wednesday, August 19, 2015, 12 noon - 1 p.m.

Presented by the In-House Counsel Interest Group

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

Category: Intellectual Property Law Your client spends millions of dollars developing IP, or it may need to license critical third-party IP to keep its doors open and products flying off the shelves. Not fully and effectively identifying and addressing transactional issues could be financially disastrous. This presentation will provide an overview of general IP transaction issues, including non-disclosure agreements, licensing agreements, joint development agreements, and supply agreements.

Speaker: Charlie O'Brien is the Chair of Cantor Colburn's intellectual property transactional group, concentrating this practice on the exploitation, transfer, and licensing of technology, and IP rights through various IP related transactions. He has extensive experience in all aspects of complex IP licensing, including the preparation and negotiation of patent license agreements, software license agreements, joint development agreements, trademark license agreements, material transfer agreements, joint marketing and promotion agreements, and the like. He is admitted to the U.S. Court of Appeals for the Ninth Circuit, Federal Circuit, and registered to practice before the USPTO.

Webinar: Trademark Application Challenges in Greater China

Tuesday, August 25, 2015, 12 noon - 1 p.m.

Presented by the Technology, Internet & Privacy Interest Group

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

In the last year, numerous laws have been proposed or enacted, and cases have come through the courts, placing new restraints on online speech. Laws that regulate advertising for prostitution, restrict revenge porn, or establish a "right to be forgotten" may have admirable goals, but they have a significant impact on the intermediaries that host online content. Intermediaries are protected by the safe harbor of 47 USC § 230, but these new regulations affect § 230's immunity in interesting and potentially dangerous ways.

Speaker: Eric Goldman

Moderator: Hannah Poteat is an IAPP-certified privacy, internet, and IP attorney in San Francisco, CA. She is a solo practitioner at Poteat Law, and works closely with start-ups and app developers.

Licensing Interest Group

Friday, August 14, 2015, 12 noon - 1 p.m.

To participate in the meeting, the dial-in number is (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.

Speaker: John Pavolotsky, Vice-Chair

Intellectual Property in Entertainment and Media

IP in Entertainment and MediaJoin us at the IP in Entertainment & Media full day conference, Thursday, September 10, 2015, at the Hyatt Regency Century Plaza in Los Angeles.

Panel highlight: Trends in Merchandising of Entertainment Properties. From Betty Boop, to Ghostbusters, to Minions, these fun and distinguished panelists will discuss trends in consumer products and merchandising of entertainment properties. The panelists will discuss issues such as shifting demographics and the convergence of entertainment and technology, and address the crucial question of how owners of entertainment content can create and encourage consumer engagement by traditional and new means.

You can now REGISTER ONLINE  for this program. For the full schedule of events, see  IP and Entertainment & Media.

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 Tests One hour of MCLE is available in the current issue of New Matter, the State Bar IP Section's quarterly magazine.

For the Summer issue, you can earn credit for the article  A Closer Look at Section 1202 Litigation and the Developing Jurisprudence of Copyright Management Information by Austin Ray Phillips. 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 CLE Program in Our Catalog

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

2015 Trademark Office Comes to California: From Dot Coms to "Not Coms": Protecting Marks, Enhancing Brands, Valuing and Transferring Rights

This program will cover the following topics:

How can you assist clients in estimating the value of domain names they want to buy or sell, and what are the key considerations in negotiating a transfer? How can you best guide clients through the new gTLD landscape to protect and enhance the value of their most important marks? Our panelists will offer practical advice and share strategies based on their extensive legal and industry experience in trademark protection, domain portfolio management, and digital marketing.

1 hour participatory MCLE credit
More Information

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 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.

Third-Party Programs

UCLA Luncheon Keynote - USPTO Director Michelle Lee comes to California

Tuesday, July 28, 2015
11:30 a.m. Lunch provided
12 noon Lecture and discussion
1 p.m. Close
UCLA School of Law, Room 1447 

Register Now

During her first visit to Southern California as Under Secretary of Commerce and Director of the United States Patent and Trademark Office (USPTO), Michelle K. Lee will present a lunchtime lecture at the UCLA School of Law on the rapidly evolving intellectual property landscape, the role of universities in research and innovation, and her top priorities for the agency. As Under Secretary and Director of the USPTO, Lee serves as a principal advisor to the Secretary of Commerce on both domestic and international intellectual property matters. As the first woman to serve as Director of the USPTO, Under Secretary Lee promotes innovation domestically and drives international harmonization efforts in support of the administration's top economic priorities.

The event is free and open to the public. Seats are limited and available on a first come, first serve basis for pre-registered guests. Questions?

Email advocacy@support.ucla.edu or call 310-794-6829.

To confirm your attendance, please RSVP HERE by July 21. Parking will be available for $12 in Lot 2. Purchase a parking permit from the information kiosk off of Hilgard Ave and Westholme Ave. Click here for a campus map.

Churchill Club - An Evening Fireside Chat with USPTO Director Michelle Lee comes to California

An Evening with Michelle K. Lee, Head of the US Patent & Trademark Office

Churchill ClubThursday, July 30 2015

5:30 p.m. Registration & Buffet
7 p.m. Program
Microsoft, 1065 La Avenida, Building One, Mountain View, CA | Directions & Parking Information

Register Now

Speaker: Michelle K. Lee, Head of the US Patent & Trademark Office Conversation partner pending

A Silicon Valley native who lived and worked in the Bay Area innovation community for decades, Michelle K. Lee was recently appointed as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO). The USPTO encourages innovation by granting U.S. patents, registering U.S. trademarks, and promoting stronger and more effective intellectual property protection around the world.

In this candid conversation, Lee will address major shifts occurring in the [IP] Intellectual Property landscape, and share her perspectives on their implications for innovation, invention, and entrepreneurship for US companies doing business both in and outside the country.

What is the state of patent reform legislation pending before congress, and what does it hope to achieve? What is the USPTO doing to help support innovation in the Silicon Valley and beyond including through its satellite office, international collaborations and measures to enhance the quality of the patents they issue? How will the USPTO help ensure that there is a continuous supply of people in the US who are coming up with great ideas and starting businesses based upon those ideas?

Don't miss the opportunity to meet and hear from Lee on issues of critical interest to Silicon Valley and the nation's innovation communities.

Host: Microsoft

Contact Us

Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105-1639
IP@calbar.ca.gov
415-538-2375
415-538-2368 fax