Inevitable Disclosures
February 15, 2016

Live Programs

Patent Disputes for Our Time: New Realities, New Approaches

Patent Disputes for Our Time graphic

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

Earn 5 Hours MCLE Credit!

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

Program Description | Sponsors | Program Schedule | Essential Information | 
Planning Committee | Printable Brochure | Mail / Fax Reg. Form | Register Online

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!

Snapshots from the IP Mix and Mingle!

There was a great turnout for the Intellectual Property Law Section's networking mix & mingle on February 4 in San Francisco, San Jose, Santa Monica, Los Angeles, and San Diego. Thank you to everyone who participated! Click here for more pics!


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

Wedneday, February 17, 2016, 12 noon - 1 p.m.
This program offers 1 hour of 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

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

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

This program offers 1 hour of participatory MCLE credit.
Presented by the IP In-House 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.

Moderators: Derrick Brent and Georgann Grunebach
Speaker: Aaron D. Hurvitz

Aaron D. Hurvitz obtained his BA in Political Science from The University of Arizona in 2003, and his J D from the University of Tulsa College of Law in 2007. He also received his LL.M. in International Business and Trade Law from The John Marshall Law School in Chicago in 2008. His Intellectual Property experience began when he was hired as the sole law clerk on an antitrust and illegal patent tying case that was ultimately heard before the United States Supreme Court. Later he drafted technology transfer agreements and worked on enforcement matters for an international law firm in Beijing, China. At Kangxin, Mr. Hurvitz advises the firm’s North American, European, Indian, and Australian clients on different aspects of Chinese Intellectual Property Law. He specifically focuses on how best to introduce technology into China, and deals heavily with advising Kangxin’s clients on how to effectuate positive enforcement of their Intellectual Property Rights.

Mr. Hurvitz frequently lectures at conferences about infringement and enforcement measures in China.

Webinar: Inventor Compensation in Japan: Reducing Litigation Risk in Japan

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

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

Tatsuya Sawada is the executive director of international filing at SUGIMURA. Mr. Sawada’s practice encompasses patent prosecution and litigation in the mechanical, electrical, optical, and food engineering fields.

As the executive director of international filing, Mr. Sawada oversees the prosecution of Japanese patents, designs, and trademarks for SUGIMURA’s international clients. He also oversees all the activities of the Palo Alto office which serves as a liaison office to North and South American clients. There, Mr. Sawada ensures that communications between SUGIMURA’s offices are seamless, allowing for the most efficient and affective counsel. Mr. Sawada advises clients on Japanese IP matters and is a frequent speaker at IP conferences. He is often sought to consult on the important differences between Japanese IP law from and the clients’ domestic IP laws, application and enforcement procedures, and infringement suit representation.

Prior to joining SUGIMURA, Mr. Sawada was a plant engineer at Snow Brand Milk Products Co., Ltd. where he developed and implemented fully-automated beverage manufacturing facilities. During his career at Snow Brand, Mr. Sawada spent two years at the University of Guelph in Ontario, Canada as a visiting researcher.

Rebecca Chen is the Chair of the International Interest Group of the Intellectual Property Law Section.

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 Intest 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 Meetings

Licensing Interest Group Meeting

Friday, March 11, 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#.


Input Requested in Copyright Office 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 Tests

One 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.

Writers Wanted for New Matter

Inquiries about writing for New Matter, please contact

Third Party Programs

Video Games and Digital Media Conference

The Entertainment and Sports Law Interest Group is pleased to promote the annual Video Games and Digital Media Conference presented by the ABA Forum on Entertainment and Sports Industries, where experienced professionals will again come together to discuss significant issues impacting the interactive entertainment and digital media spaces. This conference will be held on March 14, 2016, at University of California, Hastings College of the Law in San Francisco, California and will feature leading practitioners, executives and financiers who will participate on the following panel discussions: Virtual Reality: Platform or Passing Fad? Discussion of Related Legal and Business Issues; eSports: The Medium Has Arrived and is Now Mainstream - What are Some of the Hits and Misses to Address?; Privacy and Regulatory Climate in This Age of Social Media Ads and Promotions; Alternative Gaming Platforms and Cloud Gaming; Recent Developments in Litigation Affecting the Video Game and Digital Media Industries; and, Ethics Discussion: Top Ten Ethical Traps When Dealing With Technology, Social Media, the Cloud and Games. There will also be a special lunchtime keynote where Michael Pachter of Wedbush Securities will host a discussion of the Activision / King Deal and other deals in the space. For more details click on this Video Games and Digital Media Conference link. You can also register here.

MCLE Catalog

Featured CLE Program from Our Catalog!


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

2015 IP Institute: Software - Lost in Space

The results of Alice have caused a fire storm in the software protection space. Historically, patent protection for business method and software inventions was secured through the USPTO as a matter of course by financial institutions, start-ups, and multi-national internet and media companies. Suddenly, the scorched earth of one decision, and the fall out of Examiner rejections call into question this mainstay of IP protection. What is the best way to protect software, post Alice? Is it better to maintain software as trade secrets, file copyright registrations, or go back to the USPTO helmet in hand to beg for a patent and face the dreaded §101 rejection. For the first time anywhere, a panel comprising trade secret, copyright, and patent attorney experts will convene to ask and answer the simple question: “How do I protect my client’s software inventions in a world where patents are no longer guaranteed?”

1.75 hours 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.