Recent REPORTS OF THE IP SECTION Interest GroupS
The interest groups of the IP Law Section are responsible for delivering programming on the designated subject matter of the committee, networking among members, building community, alerting Section members to hot topics and law updates, and increasing the opportunities for Section members to volunteer and become involved with the Section through committee activities.
Computer Law
Interest Group: Computer Law (provisionally Digital & Info Technology Interest Group)
Report Date: November 09, 2011
Submitted by: Michael M. Krieger
Officers: Michael Scott, Stephen Kong, Vice Chairs
I. Recent Meetings, Activities, and Events:
A. Programming -
1. Teleseminars: "SaaS and Cloud Computing Agreements‑ Key Drafting and Negotiation, co-organized with Licensing IG (drew almost 120 "paids");
"You Bought It - But... Do you Own It? Lessons from the 9th Circuit, with the Copyright IG (previously reported)
2. Presentation "Copyrights and Wrongs," emphasizing cyber issues, at local LA library, for the public (when was this program? The Section didn’t offer or promote it; did it sponsor it?
3. See II below
B. Networking
1. Telephonic and live meeting 11/10/2011 as part of the IP Institute
2. Occasional "lunch bunch" local gatherings, to be enhanced by bimonthly or quarterly telephonic "new case" and "new issues" discussions, 2nd-to-last Mondays. (Again, when were these; they have not been advertised in ID; are we co-sponsoring them?)
C. Community Building
1. In light of the growth of cyber and other electronic crimes – as to sophistication as well as ubiquity, we have been participating in meetings of the LA-ECTF (electronic crimes task force sponsored by the US Secret Service) in order to develop contacts principally for speakers on emerging issues as well as to encourage potential members to join. (Is the Section participating officially in some way, or is it just you in your capacity as an individual. If the latter, it should not be included in the report).
2. See E.
3. See "B" above
D. Hot Topic/Law Update Alerts -
Several programs in the works (see II) addressing key issues. As to alerts, we are currently seeking a member to undertake this (although there are already excellent sources available). (Remember that you can call on Bill Gallagher’s students for this kind of assistance.)
E. Volunteer Involvement
As part of our role on the organizing committee for the Section's IP+I conference, we have established contacts with Loyola Marymont as a possible site and to involve students and the Law School in both the conference and the Section generally. Increasing volunteer participation as key element of the 11/10/2011 meeting
II. Upcoming Meetings, Activities and Events:
The DITIG has a number of programs planned, some "in the can" (the latter are on hold until January pending confirming September's IP+I program in order to avoid duplicating or cannibalizing). Topics include: Forensics v. eDiscovery - a shrinking distinction, Software licensing implications of the Alan Ladd decision, Proving fraud in system failure cases: it may be easier than you think, Dealing with serial defamation, Privacy and the FTC, and Cybercrime vulnerabilities you need to know but likely don't.
III. Matters Requiring Executive Committee Action:
Approval for renaming the Computer Law Committee as "Digital & Info Technology Interest Group" (note—he sent me an email saying that he’d also be fine with changing it to the Cyberlaw IG.
Copyright
Interest Group: Copyright Interest Group
Report Date: January 18, 2012
Submitted by: Cydney A. Tune
Officers: Cydney A. Tune, Chair; Matthew Neco, Vice Chair; Chris Lockard, Vice Chair
I. Recent Meetings, Activities, and Events:
A. Programming
On November 11, 2011 the Copyright Interest Group introduced The Copyright Office Comes to the IP Institute panel in Dana Point. The event featured new Register of Copyrights Maria Pallante, along with General Counsel David Carson and Associate Register for Policy and International Affairs Michele Woods.
On November 16, 2011, the Copyright Interest Group jointly presented with the Patent and Trademark Interest Group a teleseminar Protecting and Licensing IPR in the EU; Latest Patent, Trademark and Copyright Developments. The speaker was George Metaxas, a leading EU electronic communications lawyer who is a partner at Oswell & Vahida in Brussels, Belgium.
B. Hot Topic/Law Update Alerts
On December 28, 2011, the Copyright Office released its report on federal copyright protection for pre-1972 sound recordings. The report recommended that pre-1972 sound recordings be brought into the federal copyright regime, with protection running 95 years from publication. The report can be found at http://www.copyright.gov/docs/sound/.
II. Upcoming Meetings, Activities and Events:
The Copyright Interest Group is holding a call with interested Section members at 12 p.m. (Pacific) on January 26 to plan events for 2012, including but not limited to programming, networking and community building events, as well as the Copyright Office Comes to California conference (the date of which is still being discussed with the Copyright Office). The Copyright Interest Group is also building a roster of interested volunteers and writers to help enhance the group’s activities.
III. Matters Requiring Executive Committee Action:
None.
Entertainment & Sports
Interest Group: Entertainment & Sports
Report Date: January 17, 2012
Submitted by: Elizabeth J. Rest, Chair
Officers: Elizabeth J. Rest, Chair; Joanna Mendoza, Co-Vice Chair; Sean Sullivan, Co-Vice Chair
I. Recent Meetings, Activities, and Events:
A. Programming
As our interest group is very newly formed, there have been no programs to date.
B. Networking
As our interest group is very newly formed, there have been no networking events to date. We have discussed hosting social events for the group, perhaps in collaboration with another interest group(s).
C. Community Building
As our interest group is very newly formed, there have been no community building events to date. We have discussed hosting social events for the group, perhaps in collaboration with another interest group(s). We have also discussed arranging some open-to-all (no speaker, but a set topic) teleconferences on various topics. Once awareness of the interest group grows, we would like to institute bi-monthly telephonic meetings for practitioners.
D. Hot Topic/Law Update Alerts
We are currently working on several updates for Inevitable Disclosures that will be of interest to practitioners, and will continue to periodically do so.
E. Volunteer Involvement
After announcement in Inevitable Disclosures of the formation of this new interest group, we received several emails from individuals wishing to get involved. We have compiled a list. We have been told by Michael Mullen of the State Bar that he is working on adding the Entertainment & Sports Interest Group to the list of groups within the e-mail subscription options. As soon as this option is up, Michael Mullen will add the list of names we have to the “members” of the interest group. Once this is set up, we also plan on placi ng an announcement in Inevitable Disclosures and inviting people to sign up for email blasts, etc. for the interest group.
II. Upcoming Meetings, Activities and Events:
The interest group has several programs in the planning stages, including webinars and teleseminars. For example (titles to be determined):
Webinars:
- Estate planning for the entertainment and/or sports client. We are considering offering this Webinar program in conjunction with the Trusts and Estates Section.
Teleseminars:
- Use of the images and likenesses of college athletes in sports video games ( e.g., Keller v Electronic Arts ; Russell v. NCAA , etc.)
- Sound Recording Rights in Flux: Federal Copyright Protection for Pre-1972 Sound Recordings – possible implications for royalties and rights holders; rights of recapture in sound recording copyrights. We are considering offering this program in conjunction with the Copyright Interest Group.
III. Matters Requiring Executive Committee Action:
None at this time.
In-House Counsel
Report Date: January 17, 2012
Submitted by: Matthew Neco
Officers: Chair: Matthew Neco
Vice-Chair: Georgann Grunebach
Liaison: Deborah Greaves
I. Recent Meetings, Activities, and Events :
A. Programming
Since the last report there have been no programs, though there has been outreach, and we would like to schedule some programs to occur within the next couple of months.
B.Networking
Since the last report there have been no in-person networking events, though we welcome and will pursue the opportunity to schedule some within the next couple of months.
C. Community Building
Since the last report there has been community building though various social media outlets, and we will continue to build community.
D.Hot Topic/Law Update Alerts
Since the last report, none that might be specific to In House Counsel that might not otherwise be covered by other IP Section Interest Groups. We would like to better coordinate such alerts with other IPSIGs.
E. Volunteer Involvement
Since the last report there has been interest expressed in assisting with Group Meetings, Activities, and Events.
II. Upcoming Meetings, Activities and Events:
We welcome - are actively seeking - additional volunteers.
We plan on renewing our focus on the areas outlined above in section I of this report, and welcome additional volunteers to assist. If you are interested in being involved in any of those areas let us know:
Significantly, we will undertake to move the IP Prime r project along, and release several modules during 2012.
The IP Primer : Tired of explaining over and over again to various client groups the basics of IP? Wish you could supply your CTO with an explanation of the differences between different open source software licenses, and why it's important that developers understand the basic legal aspects of OSS licenses before they just use OSS because it is cool? Wish your Biz Dev folks understood why NDA's are important and what they should fight for before just agreeing to an NDA? And of course we will cover trademark, patents, copyright, trade secrets.
We are writing an IP Primer for both in-house and outside counsel to be able to use with their clients. And so we need additional writers, editors, etc. This is an important project. We need a couple of senior executive editors (who will help recruit writers and meet deadlines, among other tasks), copy-editors, and of course writers. We plan on giving prominent attribution in what we anticipate will be a widely, freely distributed primer.
III. Matters Requiring Executive Committee Action:
None at this time
International IP Law
Interest Group: International IP
Report Date: Jan 20, 2012
Submitted by: Anne Hiaring Hocking, Chair
Officers: Aurelia Schultz, co vice-chair; Laura Franco, co vice-chair
I. Recent Meetings, Activities, and Events :
A. Programming 2012
The next program of this Interest Group is January 25, 2012 with privacy expert David Bender, former Chair of IP Practice, White& Case, New York and author of a treatise on international and domestic considerations in privacy protection. This is a call-in program moderated by Anne Hocking.
We are planning two in-person conferences in 2012. The first will be in February with Alan Datri of WIPO to discuss Madrid Protocol strategies. Outside counsel and inside counsel from True Religion, Sun, Electronic Arts and Zynga, among others, will be on the panels that will be held February 22 in Los Angeles and Feb 23, 2012 in San Francisco.
The second is the first-ever Africa IP Conference in San Francisco on May 2012 after INTA. All of these programs will be at the State Bar Offices.
Currently in conceptual stage is a program on design protection in the EU.
B. Programming in 2011
The last program of the year was in November on Developments in IP in the European Union with Brussels EU IP Specialist George Metaxas. Co-sponsor interest groups were copyright, patent ( and trademark I think). Patent Chair Tom Ward moderated the program. Thank you Tom.
Other educational topics in 2011 included: Creative Commons licenses presented by Creative Commons staff attorney Aurelia Schultz; the Pros and Cons of CTM and Madrid filings with Alfred Strahlberg, an EU trademark attorney; and Canadian trademark Prosecution presented by Canadian trademark practitioner Eve Munro.
C. Networking
Working with International Law Section to jointly sponsor programs; expand outreach of IP to international law section members
D. Community Building
n/a
E. Hot Topic/Law Update Alerts
n/a
F. Volunteer Involvement:
Emails to persons of interest about what they want to do; Aurelia Schultz, co vice chair, reported on last in-person meeting at the IP Institute in November, which featured several new interested members who have been added to the Group committee roster.
ALL ARE WELCOME – any interested persons please contact the Chair. Thanks to Aurelia for attending the Institute and hosting this meeting!
II. Upcoming Meetings, Activities and Events:
see above
III. Matters Requiring Executive Committee Action:
none
Legislation
Interest Group: Legislation
Report Date: January 21, 2012
Submitted by: Ben Borson
Officers: Chair: Ben Borson; Vice Chair: Mark Leonard
1. Recent Meetings, Activities, and Events :
Ben Borson and Robert Eastham have published their first in a series of articles on the Leahy-Smith America Invents Act. It was published in New Matter 36(4):5-24 (2011). A second article is in progress and has been submitted for editorial review.
Hot Topic/Law Update Alerts
Federal Law:
Since passage of the Leahy-Smith America Invents Act (AIA) on September 16, 2011, the USPTO has issued several Final Rules:
- Changes To Implement the Prioritized Examination for Requests for Continued Examination (19 Dec 2011)
- Revision of Patent Term Adjustment Provisions Relating to Information Disclosure Statements (01 Dec 2011)
- Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals; Final Rule (22 Nov 2011)
- Fee for Filing a Patent Application Other Than by the Electronic Filing System (15 Nov 2011)
- Trademark Technical and Conforming Amendments (08 Nov 2011)
- Changes To Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures Under the Leahy- Smith America Invents Act (23 Sep 2011)
- Revision of Standard for Granting an Inter Partes Reexamination Request (23 Sep 2011)
- Fifteen (15) percent increase in USPTO fees.
The USPTO is considering Notices of Proposed Rule Making (NPRMs). to implement other provisions of the AIA. These include:
- Changes to Inventor's Oath and Declaration;
- Pre-issuance Submission by Third Parties;
- Statute of Limitations for Office Disciplinary Proceedings;
- Miscellaneous Post Patent Provisions;
- Supplemental Examination and Reexamination Fees;
- Rules of Practice Before the Patent Trial and Appeal Board (PTAB) and Judicial Review of PTAB Decisions;
- Practice Guide for Proposed Trial Rules;
- Inter Parties Review;
- Post-Grant Review;
- Derivation Proceedings; and
- Transitional Program for Covered Business Method Patents;
- Definition of “Technological Invention.” =
State Law:
As of January 17, 2012 there have been no new bills introduced in the state legislature that are relevant to the IP Section. The deadline to introduce new bills in this legislative session is January 27, 2012. The Legislation Group will inform the Executive Committee if any relevant bills are introduced by that deadline.
II. Upcoming Meetings, Activities and Events:
The Legislation Interest Group is looking forward to meeting any member of the Section that may be interested in working with us to identify and communicate new proposals for Federal or State action that effect members.
III. Matters Requiring Executive Committee Action:
None
Licensing
Interest Group: Licensing Interest Group
Report Date: January 19, 2012
Submitted by: Kevin D. DeBré
Officers: Kevin D. DeBré, chair; James C. Roberts, III, vice chair
I. Recent Meetings, Activities, and Events :
On December 13, 2011, the Licensing, Trademark and International Law Interest Groups produced a teleseminar on “Ethical Lawyering in a Bad Economy.” This program was provided through LegalSpan and attendees were eligible to receive one hour of MCLE ethics credit. The speakers were Noah Rosenthal, a litigator with Howard Rice, and Bob Steinberg, a business and tax lawyer and mediator with ADR Services. The program focused on ethical issues that are likely arise during a recession and specific issues concerning attorney conduct in negotiations, such as licensing transactions.
II. Upcoming Meetings, Activities and Events:
The Licensing Interest Group is planning a teleseminar on “Information Security and Cloud Services” to be held on March 14, 2012. John Pavolotsky of Greenberg Traurig will discuss the current legal landscape for information security, strengths and weaknesses of public and private cloud services in terms of security and compliance, and risk-mitigation, including negotiation of information security provisions into cloud services arrangements and other security best practices .
The Licensing and Litigation Interest Groups are planning a teleseminar on “ Litigating a Licensing Agreement: Strengths & Weaknesses of License Agreements from a Litigator's Perspective” to be held in early February. Bret Bocchieri, Scott Hansen, and James Roberts will examine a sample license agreement and discuss drafting errors and provide advice on how to avoid them.
Other teleseminars currently in production include “ Patent Licensing in a Post-Patent Reform Act World,” “Negotiating Licensing Deals with Parties in Foreign Countries,” and “Impact of Anti-Piracy Legislation on Licensing Agreements.” Members of the Licensing Interest Group production team for these teleseminars will explore co-producing these programs with the Patent Interest Group, the International Law Interest Group and the Copyright Interest Group, respectively.
The Licensing Interest Group is planning a social event in Southern California to be held at the Mayme A. Clayton Library & Museum, a museum of American history that focuses on the experiences of African-Americans. The date has not been set, but it will probably be in March. The Licensing Interest Group has invited the other IP Section Interest Groups to participate in co-hosting this event and several have expressed interest in doing so.
III. Matters Requiring Executive Committee Action:
None.
Litigation
Litigation Interest Group
Report Date: January 18, 2012
Submitted by: Scott R. Hansen
Officers: Scott R. Hansen, Chair; Craig Holden, Vice Chair; Bob Payne, Program Chair
I. Recent Meetings, Activities, and Events :
A. Programming
On January 12, 2012, the Litigation Interest Group presented a teleconference on the topic of Patent Reform and Patent Litigation: What's New? The speakers were Peter Chen of Latham & Watkins and Mark Wine of Orrick. The Patent Interest Group was generous to co-sponsor. Scott Hansen made brief remarks on behalf of the Litigation Interest Group. Georgann Grunebach made brief remarks on behalf of the Patent Interest Group, and Craig Holden introduced the speakers. Robert Payne initiated the idea for the program, and arranged to have Mr. Chen speak.
On December 6, 2011, the Litigation Interest Group co-sponsored a live program in Los Angeles in which a panel of federal judges from the US District Court for the Central District of California discussed the new patent pilot program. Approximately 200 people attended, and a reception with the judges followed the program. The primary organizer was the Los Angeles County Bar Association, with support from the office of the Mayor. The Litigation Interest Group contributed approximately 20 hours of work on the program materials, which included extensive research and statistics on judge's decisions and tendencies in patent cases.
B. Networking
The program of January 12 (discussed above) gave the Litigation and Patent Interest Groups an opportunity to work together for the first time. Good lines of communication have been established, and we look forward to working with the Patent Interest Group again in the future.
The in-person program of December 6 (discussed above) introduced or re-introduced the Litigation Interest Group to an audience of some of the top IP litigators in Southern California. The reception afterwards was a particularly good forum in which to network. Also, as a co-sponsor and significant contributor to the program, a representative of the Litigation Interest Group had dinner with Judges Wu and Guilford. Judge Guilford, a past president of the State Bar, expressed particular interest in the involvement of the IP Section in the event.
C. Community Building
The program of January 12 brought together a number of members of the IP community: IP litigators from two of the top patent litigation firms, a member of the Board of Governors of the State Bar (who introduced the speakers), and the chairs of the Patent and Litigation Interest Groups. As with many past Litigation Interest Group programs, a number of members of the IP community had an opportunity to work with each other - some for the first time.
The Litigation Interest Group is following up on program suggestions made by attendees at the annual in-person Interest Group meeting at the IP Institute.
D. Volunteer Involvement
The position of Programs Chair has been added to the Interest Group (filled by Bob Payne), to open a new opportunity to participate in the Interest Group.
As noted above, a member of the Litigation Interest Group contributed significant time in researching the dockets of federal judges in the Central District of California and compiling statistics, in support of the December 6 th live program in Los Angeles.
E. Hot Topic/Law Update Alerts
Several federal districts are implementing a "patent pilot program," designed to enhance expertise in patent cases among U.S. district judges. A district selected for the program forms a panel of judges who have a special interest in patent cases. Other judges within the district to whom a patent case is assigned may optionally transfer the patent case to the patent panel.
In the Central District of California, for example, Judges Otero, Guilford and Wu are currently on the patent panel, and other judges are beginning to transfer patent cases to the panel. However, judges who are not on the panel retain the option to keep patent cases assigned to them. The pilot program is in effect in a number of districts throughout the country, including the Northern District of California. For more information.
II. Upcoming Meetings, Activities and Events:
The Licensing Interest Group has expressed interest in holding a joint teleconference on the topic of litigation issues that arise with respect to license agreements. The Interest Groups are working out details.
III. Matters Requiring Executive Committee Action:
None.
Patent
Interest Group: Patents
Report Date: January 19, 2012
Submitted by: Chair, Georgann Grunebach
Officers: Vice Chair – Thomas A. Ward; Vice Chair – Karin Peterka; Secretary – Enrica Bruno; Liaison to Ex Com – Karen Canady
The Patent Interest Group provides both education, and networking opportunities between members of the State Bar Intellectual Property Section who live and work in the world of Patents. The Group meets monthly by telephone, and on occasion in person, enabling our membership throughout California to; network and share their experiences, hear qualified and unique speakers, hold discussions on relevant topics and learn through structured presentations. In view of the groundbreaking legislation that has been proposed and signed by the President on September 16, 2011, The America Invents Act, the Patent Interest Group will provide access to dynamic speakers on topics of interest to Patent Practitioners in this dynamically changing environment.
I. Recent Meetings, Activities, and Events :
A. Programming
NOVEMBER MEETING 2011
The Patent Interest Group held an in-person meeting and networking opportunity at the IP Institute in Dana Point, California at the Marriott Laguna Cliffs Resort, on Thursday, November 10, 2011, at 4:30 PM. The meeting was well attended and each participant was given the opportunity to introduce themselves to the rest of the group and share their patent experience. Vice Chair Tom Ward, secured email addresses for all attendees, and these individuals were added, with their permission, to the Patent Interest Group email contact list.
The Group received many contacts emails subsequent to this event from attendees as the following email attests, including students:
“Hi Georgann,
It was great meeting you at the IP Institute Conference last weekend in Dana Point. The conference was an eye-opener on how exciting IP law can be. It was great to meet everyone in the Patent Standing Committee break-out session. I remember someone mentioning that there will be an event in SF or Palo Alto in January. Please let me know if there is any way I can participate. I would love to get more involved in the Patent Standing Committee ("Interest Group").
Best,
--
Kim Tran
McGeorge Intellectual Property Student Association, Vice President
University of the Pacific, McGeorge School of Law, J.D. Candidate, 2012
University of Southern California, B.S. Electrical Engineering, 2007”
DECEMBER MEETING 2011
The Patent Interest Group, in conjunction with the Litigation Group had planned the following presentation for December 15, 2011. However, the speakers' schedules resulted in this presentation moving to January 12, 2012.
Litigation and Patent Teleseminar: Patent Reform and Patent Litigation - What's New?
Thursday, January 12, 2012 , 12 noon - 1 p.m.
This program offered 1 hour participatory CLE credit and was well attended by the Section. Topics of the presentation included; How does the major reform of the patent laws impact patent litigation? Preeminent patent litigators share their views on what to expect with respect to issues critical to the patent litigator, such as post-grant opposition strategy and damages.
Speakers included: Peter Chen is patent litigator and partner based in the Silicon Valley office of Latham & Watkins LLP, and Mark Wine a patent litigator and partner based in the Orange County office of Orrick, Herrington & Sutcliffe LLP.
B. Networking
The Patent Interest Group participated in a multi-interest group call on January 18, 2012, lead by the Licensing Interest Group, to discuss a proposed networking event shared between several interest groups at the Mayme A. Clayton Library & Museum in the old county courthouse, potentially in March 2012 . The Patent Interest Group will of course provide support where necessary.
C. Community Building
The Patent Interest Group held a joint meeting with the Legislature Interest Group on a key Hot Topic, the America Invents Act.
The Patent Interest Group has been working with Sophie Cohen on a special program combining social networking and job placement and personal advertizing. Entitled, “Social Network Support to Get Work and Get Net working”, Sophie and Vice Chair Tom Ward have been aggressively seeking out speakers from the likes of Twitter, Golden Practices, Inc., the Legal Ease Blog and LinkedIn.
Secretary Enrica Bruno is exploring a joint program with the International Interest Group, involving European Patent Examiners, and Members of the Board of Appeals for the EPO.
D. Hot Topic/Law Update Alerts
See our special presentation at the September 28, 2011 meeting, in conjunction with the Legislature Committee on the America Invents Act.
E. Volunteer Involvement
The Officers of the Interest Group have reached out to those in the Group who've expressed interest in assisting with upcoming presentations and events.
II. Upcoming Meetings, Activities and Events:
Upcoming Programs planned by the Patent Interest Group include;
January 2012
Currently Scheduled for January 27, 2012 12:00-1:00PM CLE and Networking Presentation
In Person Participants: State Bar Offices on 180 Howard Street in San Francisco (attendance free to IP Section Members). Teleconference: Participants can register via the internet to ‘attend' the live presentation.
The California State Bar Intellectual Property Section is pleased to host the return of its most popular MCLE program “Sex, Drugs and Rock & Roll” a lecture presented by Carol M. Langford .
Ms. Langford is a lawyer in the San Francisco Bay Area and practices at the Law Office of Carol M. Langford in Walnut Creek. She has spoken for California Bar IP Section programs in the past on topics related to both ethics and substance abuse. She specializes in giving advice on legal ethics and discipline to attorneys, judges, law firms, and corporations, and in representing lawyers and law students before the California State Bar in disciplinary and admissions matters. She serves as a national expert witness in the ethics area, and she teaches ethics as an adjunct professor at the University of San Francisco, School of Law.
In addition to her practice, she has served as the Chair and special advisor to the California State Bar Committee on Professional Responsibility and Conduct, and has taught ethics as an adjunct professor at the University of San Francisco, School of Law since 1992 and also teaches at Hastings College of the Law. Ms. Langford has also co-written two books: a nationally adopted textbook entitled Legal Ethics in the Practice of Law, 3rd Edition (Lexis Law Publishing, 2006) and The Moral Compass of the American Lawyer, Truth, Justice, Power and Greed (Ballantine, 1999).
For California Lawyers needing one hour CLE credit for Detection/Prevention of Substance Abuse the 1 hour credit will be provided.
February 2012
February 1, 2012, a jointly sponsored presentation with the Litigation and Licensing Interest Committees on the review and analysis from a Licensing and Litigation perspective of a defective license agreement. The Patent Interest Group provided a guest speaker to this presentation.
March 2012
A significant amount of work has been done by Vice Chair, Tom Ward, and Sophie Cohen on a Social Networking and Patent/General IP Job Placement Program. Date and time have not been confirmed.
April 2012
For April, we've moved our previously planned December 2011 presentation to accommodate the speaker's schedules: An overview of the April program is as follows:
Patent Teleseminar with speaker Lance Pritikin, Esq. and Nadir Yasin, Esq.
Wednesday, April TBD , 2012 12 Noon – 1:00 PM
Title: TENDING THE PATENT GARDEN
A dynamic client can have a 'garden' of inventions all eligible for harvest. However, business needs and economic factors will ultimately determine which 'fruits' of creativity will ripen into valuable produce.You as a patent practitioner, like a good gardener, must be able to look at the farmer's business goals, the soil, location of the garden, and weather issues and drawing upon your experience counsel your client on which crops that will earn him the most money.
When do you counsel your client to file a patent application? And, what diligence must you perform prior to giving business advice to your client on whom inventions will produce the greatest business value?
A patent practitioner who works directly with clients is often relied upon to translate preliminary novelty search results into actionable business information. For a client to properly assess the costs and potential benefits of proceeding with a patent application they should consider variables including; estimated fees, timelines, available claim scope and probability of success of prosecution and eventual enforcement. While such variables tend to evolve over the life of the application and resulting patent, they can be characterized to a certain extent from the outset. . .a first walk through the 'garden'.
This presentation will provide a discussion of these pre-patent filing criteria, and ways in which they may be useful to the client in deciding whether or not to proceed with a patent application in view of preliminary novelty search results. A good gardener can't grow everything, but this presentation will teach you to avoid the weeds and the low hanging fruit, and achieve a great yield.
III. Matters Requiring Executive Committee Action:
None at this time..
Trademark
Interest Group: Trademark
Report Date: January 17, 2012
Submitted by: Mary A. Harris, Chair
Officers: Mary A. Harris, Chair; Carole Barrett, Vice Chair; Mark Leonard, Secretary
I. Recent Meetings, Activities, and Events :
A. • Programming
Monthly programs, both roundtable and CLE credit, offered each month. November, 2011: (Jointly presented with Copyright and Patent Interest Groups) Protecting and Licensing IPR in the EU; Latest Patent, Trademark and Copyright Developments . The speaker was George Metaxas, a leading EU electronic communications lawyer who is a partner at Oswell & Vahida in Brussels, Belgium. Also in November, Secretary Mark Leonard and Ex Comm Advisor Chris Kopitzke presented Nuts and Bolts of Trademark Law at the “IP in the West” IP Institute. December, 2011: Ethical Lawyering in a Bad Economy, presented by Noah Rosenthal, Esq., for 1 hour of CLE credit in ethics. January, 2012: Changes to Trademark Manual of Examining Procedure, presented by Pete Bromaghim, Esq., for 1 hour of CLE credit. Both of the latter programs were moderated by Vice Chair Carole Barrett.
B. Networking
Networking opportunities have been included in the schedule for the WIPO Roundtables described below.
C. Community Building
Continuing to work on additional roundtable events in 2012
D. Hot Topic/Law Update Alerts
Monthly programs focus on current hot topics of interest to practitioners, such as the recent update to the TMEP.
E. Volunteer Involvement
Have incorporated interested volunteers as speakers and prospective roundtable hosts and are actively finding projects for new volunteers.
II. Upcoming Meetings, Activities and Events:
Carole Barrett, Vice Chair, has coordinated, in conjunction with the International Group, WIPO Roundtables in February (live programs in LA and SF).
Details are as follows:
Roundtable on WIPO Trademark Registration Strategies and Updates from Geneva - Co-Sponsored with International Group
Los Angeles: State Bar of California, 1149 S. Hill St., Los Angeles
February 21, 2012 4:00 p.m. – 6:00 p.m. followed by networking (live)
San Francisco: State Bar of California, 180 Howard Street, San Francisco
February 23, 2012 4:00 p.m. – 6:00 p.m. followed by networking (live)
Alan Datri, former Trademark Examiner, and Senior Counsellor in the Office of the Deputy Director General at WIPO will be joined in Los Angeles and in San Francisco by experienced in-house and private practice trademark counsel for a panel discussion on the latest news on Madrid Protocol; strengths and weaknesses of the system; filing strategies and insights on foreign trademark protection for U.S. entities and U.S. protection for foreign companies. In addition to Alan Datri, confirmed speakers in Los Angeles are: Jane Shay Wald, Irell & Manella; Deborah Greaves, True Religion Brand Jeans; Katherine L. McDaniel, Fulwider Patton; and Dennis Loomis, Baker & Hostetler; confirmed speakers in San Francisco are: Vaneeta Gajwani, Electronic Arts; Frank Goldberg, Zynga; Maria Pavia, Cisco Systems; Tiki Dare, Oracle; Beth Goldman, Orrick; Carole Barrett, Arnold & Porter; and Anne Hiaring Hocking, Hiaring+Smith.
Registration fee: $25
Seating limited. To register, call or e-mail Mitch Wood, Section Coordinator, State Bar of California, 415-538-2594, mitch.wood@calbar.ca.gov ; or Ana Castillo, Administrative Assistant, 415-538-2071, ana.castillo@calbar.ca.gov
III. Matters Requiring Executive Committee Action:
None
Trade Secrets
Interest Group: Trade Secrets
Report Date: February 9, 2012
Submitted by: Benjamin D. Scheibe
Officers: Benjamin D. Scheibe; David Morales, Vice-Chair
I. Recent Meetings, Activities, and Events:
A. Programming
Program presented by IG members at IP Institute: “Why Every Lawyer Should Know More About Trade Secret Law.” The IG is discussing cost-effective ways to develop and present stand-alone CLE program in light of scant interest in previously scheduled in-person program and appointing director(s) of programming.
B. Networking
Telephonic meetings held September 20, 2011 and at IP institute.
C. Community Building
See networking.
D. Hot Topic/Law Update Alerts
Members are alerted to law updates via Inevitable Disclosures , bi-monthly telephonic meetings, and informal network.
E. Volunteer Involvement
IG Members recently finished preparing a Supplement to the treatise entitled Trade Secret Litigation and Protection in California (2d ed.). The Supplement is now available and IG members are coordinating its advertising and marketing with New Matter , Inevitable Disclosures , and the State Bar website. Members are also working on model documents with relevance to trade secret law to supplement the Model Protective Order now available on the Section's webpage.
II. Upcoming Meetings, Activities and Events:
January 24, 2012: 3:00 p.m. (telephonic)
March 20, 2012: 3:00 p.m. (telephonic)
May 15, 2012: 3:00 p.m. (telephonic)
July 17, 2012: 3:00 p.m. (telephonic)
September 18, 2012: 3:00 p.m. (telephonic)
October/November 2012: TBD (in person, at 2012 IP Institute)
III. Matters Requiring Executive Committee Action:
None.