Inevitable Disclosures
December 15, 2016

Contents

Live Programs

Tips and Tricks for IP Practitioners

Details coming soon!

Interest Group Calls

January 4 Copyright Interest Group Call

Time: 12 noon – 1 p.m.

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

Monthly "All Hands" Copyright IG conference call. On this call, we will discuss current cases and developments in copyright law. Each month a presenter will lead the discussion.We will also discuss opportunities to write articles, coordinate webinars, speak on webinars, and participate in the IP section in other ways. Please note: Our monthly calls are the 1st Wednesday of every month.

January 13 Licensing Interest Group Call

Time: 12 noon – 1 p.m.

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.

Webinars

Webinar: Paranoia Will Distroya – A Close Look at the Duty of Candor under Rule 56

Monday, December 19, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit in Legal Ethics. 
Presented by the Patent Interest Group.

REGISTER TODAY

Rule 56 provides that every individual associated with the filing and prosecution of a patent application has a duty of candor and good faith dealing with the Patent Office. This program will explore the requirements under the duty, its relationship to inequitable conduct, timing of disclosures in prosecution and before the USTPO, conflicts of interest in candor, conflicting rules, considerations in submission, and other concerns. It will also discuss the proposed new rule announced in October 2016.

Moderator: Sanjesh Sharma
Speaker: Mercedes K. Meyer

Sanjesh Sharma is IP Counsel at Abbott Vision, where she manages all aspects of patent, trademark, and copyright matters for the company’s Refractive and Laser Cataract Surgical Equipment portfolios. She is the Chair of the Patent Interest Group for the State Bar of California’s IP Section, and has served as an officer of the Patent Interest Group since 2013. 

Mercedes K. Meyer, Ph.D., co-chairs the Life Science section of the Intellectual Property Practice Group of Drinker Biddle & Reath. Mercedes counsels in the pharmaceutical and biotechnology areas. Mercedes focuses on patent prosecution, transactions, contested proceedings, opinions, and asset management, including due diligence investigations for biotechnology and pharmaceutical patents. 

Mercedes received her bachelor's degree in chemistry from Bryn Mawr College (1988) and her Ph.D. (1994) 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. (1996) from the University of Houston Law Center. She is co-author with Professor David Hricik on Patent Ethics: Prosecution (4th ed., 2016-2017 and the 5th edition is in progress).

Mercedes currently is the co-chair of the Diversity Committee of the Federal Circuit Bar Association (FCBA) and vice chair of the Women’s Committee of IPO.  Mercedes is a Fellow of the American Intellectual Property Law Association (AIPLA), where she is the past chairperson of the Women in IP Law Committee (2005-2007), past vice chair of the Biotechnology Committee (2007-2009), past Board Member and Secretary of the AIPLA Board of Directors (2009-2013). 

Webinar: Implicit Bias: How to Recognize It and Tips to Address It

Wednesday, January 18, 2017, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit in Elimination of Bias in the Legal Profession and Society.
Presented by the In-House Counsel Interest Group.

REGISTER TODAY

Join us for a lively and informative presentation on implicit bias in the legal profession--what it is, why we all have it and practical tips on how to address it.

Moderator: Mark Leonard
Speakers: Therese Lawless and Denise Trani-Morris

Therese Lawless is a partner in the law firm of Lawless & Lawless where she practices employment and civil rights law on behalf of employees and individuals. Ms. Lawless is a former president of the San Francisco Trial Lawyers Association. She is a member and past board member of the Consumer Attorneys of California and is a member of the National Employment Lawyers Association and the California Employment Lawyers Association.  In 2015, Ms. Lawless represented Ellen Pao in a landmark gender discrimination case against venture capital firm Kleiner, Perkins Caufield and Byers.

Denise Trani-Morris is Counsel at Sedgwick, LLP, San Francisco, and practices exclusively in the area of employment law.  She is a member of the Firm's Inclusion & Diversity Committee and San Francisco Chair and a member of the National Employment Law Council. She speaks frequently on issues concerning inclusion and diversity, and provides management training on how unconscious biases, that impact the workplace, can be avoided.

Generic Competition and Innovation in the Pharmaceutical Industry: REMS Programs and Life Cycle Management/Product Hopping

Thursday, January 19, 2017, 10:30 a.m. - 12 noon

Note new date and time!

This program offers 1.5 hours participatory MCLE credit. 
Co-sponosored by the Antitrust, UCL and Privacy Section.

REGISTER TODAY

The Federal Trade Commission (FTC) and numerous courts are currently analyzing reverse payments within the Sherman Act framework the U.S. Supreme Court set forth in FTC v. Actavis. But these analyses are only part of a much larger universe of intriguing issues being generated by the intersection of antitrust law, intellectual property, and pharmaceutical regulation in litigation across the country.  Generic pharmaceutical company, consumer, and enforcer plaintiffs have alleged that brand pharmaceutical companies abuse certain aspects of Risk Evaluation and Mitigation Strategies ("REMS programs"), which are programs the FDA sometimes requires to minimize the risks associated with certain drugs.  Plaintiffs also allege that branded drug companies violate antitrust laws when they engage in a particular business strategy relating to the timing of new product releases, a strategy that plaintiffs call “product-hopping.”  And earlier this year, a bill was reintroduced that would create a separate cause of action for the type of behavior alleged in cases dealing with REMS (the “CREATES Act”).  Our panelists will comment on these and other developments touching on the complex legal and policy issues at the crossroads of pharmaceutical regulation, IP law, and antitrust law.

Moderator: Anna Fabis, O’Melveny & Myers LLP

Speakers:  

Cheryl Johnson, California Department of Justice

Erika Lietzan, University of Missouri School of Law

Rosanna McCallips, Jones Day

News

Administration Releases Joint Strategic Plan on Intellectual Property Enforcement (FY 2017-2019)

On December 12, 2012 the U.S. Intellectual Property Enforcement Coordinator released the Joint Strategic Plan on Intellectual Property Enforcement (FY 2017-2019), titled "Supporting Innovation, Creativity & Enterprise: Charting a Path Ahead."

As the plan notes, it is a blueprint for the work to be carried out over the next three years by the federal government in support of a healthy and robust intellectual property enforcement policy environment.

The Joint Strategic Plan is available here.

Electronic System for Designating Agents under DMCA Launched December 1, 2016

The U.S. Copyright Office launched its new electronic system to designate and search for agents to receive notifications of claimed infringement under the Digital Millennium Copyright Act (DMCA). The final rule implementing the new system and governing what is required of service providers to designate an agent also comes into effect on December 1st.

As of December 1, all new designations must now be made through the online registration system. Additionally, any service provider that has previously designated an agent with the Office through the old paper-based system will have until December 31, 2017, to submit a new designation electronically through the new system. Until that time, an accurate designation in the old paper-generated directory will continue to satisfy the service provider’s obligations under section 512(c)(2), and the public will need to continue to search the paper-generated directory if the service provider is not yet listed in the new electronically generated directory.

The U.S. Copyright Office published three notices of proposed rulemaking on December 1, 2016

The U.S. Copyright Office today published three notices of proposed rulemaking, which are summarized below.

A) Supplementary Registration: The U.S. Copyright Office is seeking public comments on proposed amendments to its regulation governing supplementary registration. Under the proposed rule, most applicants will be required to submit an online application in order to correct or amplify the information set forth in a basic registration. In addition, the proposed rule will update and codify certain practices that are set forth in the Compendium of U.S. Copyright Office Practices, Third Edition, and improve the readability of the regulation. The Notice of Proposed Rulemaking and instructions on how to submit a comment in this proceeding are available here: http://bit.ly/2gGOpT.

B) Group Registration of Photographs: The Office is seeking public comments on proposed amendments to its regulation governing the group registration option for published photographs. In addition, the Office is proposing to create a new group registration option for unpublished photographs. Under the proposed rule, applicants will be required to submit an online application and will be allowed to include up to 750 photographs in each submission. The proposed rule will amend the deposit requirement for photographs and photographic databases by requiring applicants to submit their works in digital form. Finally, it will memorialize the Office’s longstanding position regarding the scope of a group registration of photographs. The Notice of Proposed Rulemaking and instructions on how to submit a comment in this proceeding are available here: http://bit.ly/2gpqYjY

C) Group Registration of Contributions to Periodicals: The Office is seeking public comments on proposed amendments to its regulation governing the group registration option for contributions to periodicals. Under the proposed rule, applicants will be required to file their claims through the electronic registration system and upload their contributions in a digital format. The proposed rule will modify some of the eligibility requirements for this group option. It will confirm that the Office may refuse registration or cancel a group registration if these requirements have not been met. And it will memorialize the Office’s longstanding position regarding the scope of a group registration for contributions to periodicals. The Notice of Proposed Rulemaking and instructions on how to submit a comment in this proceeding are available here: http://bit.ly/2hq241c

Written comments must be received no later than January 3, 2017, at 11:59 p.m. Eastern time.

MCLE Catalog

Featured CLE Program from Our Catalog!

Online
CLE

Did you miss it? All programs from IP Protection & Social Media Issues in the Workplace now available On-Demand

Growing Like a Weed: What do Cannabis, Trademarks, Ethics and Cash Have in Common?

The following topics will be covered: 1. Current Status of Federal, State, and Local Marijuana Laws; 2. Trademarks: What Will (and Won’t) the PTO (and various state trademark offices) Allow When it Comes to Marijuana-related Trademarks?; 3. Discussion of the Recently-Issued Bar Association of San Francisco Opinion on Representation of Medical Marijuana Enterprises in California; 4. Cash from Marijuana Clients: Manageable or Radioactive?

1 participatory MCLE credit, including 0.5 in Legal Ethics
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 Matt Neco.