Inevitable Disclosures
April 15, 2016

Update on Key Events Affecting the State Bar and the IP Section

Changes are in store for those of you who volunteer on the IP Section Executive Committee or any of its Interest Groups or publications. While the changes will significantly impact the way we operate, the IP Section is taking steps to ensure that our important work will continue. To ensure the good work of this Section continues, we are collaborating with Bar staff and Bar counsel to find compliance solutions and minimize disruption. The IP Section remains hopeful that, once solutions have been tried and refined, the impositions of the Act will have little impact on the important work of our Section. To that end, we expect that IP Section publications, including New Matter and Inevitable Disclosures will continue at the same quality and pace as before.

In the spirit in which the Act was codified, the IP Section looks forward to further opening and publicizing its meetings and letting the public know about its important work on behalf of IP lawyers and the public. Under the Act, members of the Bar and general public will have the ability to participate in the important work performed by members of the IP Section.

Another potential change on the horizon are movements seeking to have the Bar’s Sections, and perhaps other parts of the currently “unified Bar,” separate from the mandatory enforcement part of the State Bar. Were the voluntary part to separate from the involuntary part, the Sections would no longer be regulated and controlled as if they were government agencies. In one effort, State Bar President David Pasternak heads the Governance in the Public Interest Task Force, a sub-group of the State Bar Board of Trustees that is charged with evaluating the experience of other state unified or voluntary bars, the advantages and disadvantages of voluntary versus unified bars, the impact a restructure would have on the Bar, the experience of other professionals’ associations, how a voluntary bar would be supervised or governed and the impact of Bagley-Keene on the Sections. Public meetings were recently held in San Francisco and are set for April 25, 2016, in Los Angeles.

Your views are valuable. We encourage you to contact Andrew Stroud ( or Barbara Friedman ( with any questions or views you might wish to express or, even better, attend the April 25th meeting and provide public comment.

We will be keeping you fully informed as we navigate these uncharted waters.

Live Programs

Essential Copyright: It's What You Need to Know

Thursday, May 12, 2016

Universal Hilton
555 Universal Hollywood Dr.
Universal City, CA 91608

Earn 6 Hours MCLE Credit

You can now REGISTER ONLINE for this program. Online registration will close on May 5, 2016.

You and other experienced copyright practitioners will enjoy a full day immersed in in-depth presentations on cutting-edge issues and recent developments in copyright law. The “Hollywood Circuit,” litigants, and the United States Copyright Office have been busy, and the landscape of copyright law is changing. Join us for our full-day copyright conference to ensure you are up to date with the latest developments. We have an amazing line up of speakers—don’t miss this program! For more information, see click here.

Save the Date! The 2016 IP and the Internet Conference

The 2016 IP and the Internet Conference will be held Tuesday, September, 6, 2016 at Saleforce’s auditorium in San Francisco.

This popular full-day conference returns with its traditional exploration of the nexus between IP law and technology.

Speakers will include former Facebook Chief Privacy Officer and California Attorney General candidate Chris Kelly; Joanne McNab of the Attorney General’s Office; Clara Law School Professor, Eric Goldman, and many others.There will also be a very practical and detailed presentation on how to handle online copyright and trademark infringement on all of the major online platforms.

Of course, there will also be several opportunities for networking including a table-topic-style luncheon.

Get the date on your calendar now! Program details and registration info to follow.

Save the Date! IP Institute, November 10-11, 2016, with a Welcome Reception November 9

The 41st Annual IP Institute, "IP on the American Riviera," will be held November 10-11 at the beautiful Hyatt Santa Barbara, with a welcome reception November 9.

The conference will cover a wide range of cutting-edge and compelling presentations on trademark, copyright, patent, entertainment, right of publicity, licensing, and internet law, as well as practical sessions and IP-specific ethics panels.  The event will also feature the always popular Annual Vanguard Awards luncheon celebrating pioneers in our field in a festive atmosphere.

The program will feature speakers from leading law firms and companies, numerous networking and socializing opportunities, as well as options to experience some of the gorgeous local sites of Santa Barbara.

We hope to see you there!  Watch your inboxes and our website for more information!

For questions, please contact IP Institute Program Chair Elizabeth J. Rest at


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

Friday, May 6, 2016, 12 noon - 1 p.m.
This program offers 1 hour of participatory MCLE credit.
Presented by the IP 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 More information

Interest Group Open Calls

Trade Secrets Interest Group Open Call

Wednesday, April 27, 2016, 12 noon - 1 p.m.

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

We'll discuss ideas for upcoming webinars and conferences 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.

Licensing Interest Group Open Call

Friday, May 13, 2016, 12 noon

To participate in the call, 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.

Third-Party Programs

Authors, Attribution, and Integrity: Examining Moral Rights in the United States

The U.S. Copyright Office and the George Mason University School of Law and its Center for the Protection of Intellectual Property will host a symposium on “Authors, Attribution, and Integrity: Examining Moral Rights in the United States" on Monday, April 18, 2016. More info.

Celebrate a Decade Dedicated to Design Patents!

2016 USPTO Design Day
Tuesday, April 19, 2016 from 11:00 AM to 8:00 PM (PST)
26 South 4th Street, San Jose, CA

Join the USPTO for thought-provoking discussions about all aspects of design patents, from conception through enforcement via webinar from the USPTO Silicon Valley Office. Spend the day at this free seminar with United States Patent and Trademark Office Design Examiners, Managers, Design Patent Practitioners and Industrial Designers from across the country. (There is no fee to attend; however, you must register in advance.) No CLE credit is offered for this event.

Learn about:

  • Developments at the USPTO including training of new design patent examiners, and the new ID5 initiative
  • Updates on U.S. implementation of the Hague system from WIPO’s perspective
  • Best practice tips and pitfalls of design patent prosecution from a panel of experienced practitioners and USPTO examiners
  • From industry leaders about how to take a design from concept to patenting to enforcement
  • Updates and changes to the MPEP and the effect on design practice
  • Important design patent decisions over the past year, as summarized in the popular case law wrap-up

In preparation for the panel on best practice tips and pitfalls, please email your own personal tips for success or issues that frustrate you during design patent prosecution before the USPTO that you’d like to see improved to Beth Ferrill at

NEW THIS YEAR! Design Day will be webcast from all four USPTO regional offices; Silicon Valley, CA; Denver, CO; Dallas, TX; and Detroit, MI. In your registration, please indicate whether you will be joining them in Alexandria or attending via webcast from a regional USPTO office. Please provide an accurate email address so they can send an email with the specific location at the regional office once that information is available. Also when you register check your affiliation, Government, Private Practice, In-House Counsel, Industry, Industrial Designer, Academic or Other.


Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice

The USPTO has published a Notice of Proposed Rulemaking entitled "Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice," Federal Register, Volume 81, No. 64, pp. 19296-19324 (available here)  There are numerous proposed changes, including that service of papers between parties be made via email, limiting document and admission requests to 75 each, an option to permit submission of witness testimony at trial in inter partes cases by affidavit or declaration, and permitting the Board to grant judgment for a defendant sua sponte when the plaintiff has not submitted evidence and its time for taking testimony has expired. As these are just a few of the proposed changes, practitioners are encouraged to review the complete list. The deadline for comments is June 3, 2016 and may submitted via email,, or at the above website by following the “Submit a Formal Comment” link.

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 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 .

MCLE Catalog

Featured CLE Program from Our Catalog!


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

Recent Developments in Biosimilars

This program will discuss recent developments in biosimilar case law, including the Amgen v. Sandoz and the Janssen Biotech v. Celltrion cases, which discuss the correct statutory construction of the ACA’s Biologics Price Competition and Innovation Act. The program will also include a discussion of the FDA’s draft guidance regarding naming biosimilars, as well as the institution of a recent IPR, and the resulting implications for patents on biosimilars.

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.