Inevitable Disclosures
January 15, 2016

Contents

Live Programs

Intellectual Property Protection and Social Media Issues in the Workplace

Link to Web Page for IP Protection and Social Media Issues in the WorkplaceTuesday, January 19, 2016

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

Earn 7 Hours MCLE Credit

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In California especially, the workplace is often the laboratory where creative ideas are hatched and innovative products are launched. While striving to create environments where innovation and creativity thrive, successful companies must also ensure that appropriate safeguards and agreements are in place to protect intellectual property. Employers also face challenges in navigating fair trade practices and employee privacy rights while capitalizing on the explosion of social media. Complicating the entire picture are the increasingly fluid borders of where, when, and how work is accomplished in this dynamic economy.

Leading intellectual property and employment attorneys from private industry, public agencies, private law firms, and distinguished law schools will identify and discuss the important intellectual property and social media issues that arise in today’s workplace and suggest practical strategies for addressing them.

For more information, see Intellectual Property Protection and Social Media Issues in the Workplace.

Intellectual Property Law Section Mix and Mingle!

Please join members of the IP Law Section for a Networking Mix & Mingle on Thursday, February 4, 2016, at 6 p.m.!

The mixer will be held simultaneously at five locations around the state! If you are, have been, or are interested in being a member of the IP Section, come meet a broad array of diverse practitioners in a relaxed and inviting venue. IP Law Section Executive Committee members and Interest Group officers will be at each location to answer questions, provide information about the Section, or simply to chat.We will be providing appetizers and a limited number of drink tickets, so get there early!

The venues are as follows:

1. San Francisco (Palomino - 345 Spear Street)
2. San Diego (McGregor's Grill & Ale House - 10475 San Diego Mission Road)
3. Los Angeles (Don Chente DTLA - 1248 S Figueroa Street)
4. San Jose (TBD)
5. Santa Monica (TBD)

Join us for drinks and snacks and meet some long-time and new colleagues!

Look for additional information and details on Twitter @CalbarIPsection, Facebook, as well as in future editions of Inevitable Disclosures.

Webinars

Webinar: Drafting IP Agreements: Best Practices from a Litigator's Perspective

Thursday, January 26, 2016, 12 noon - 1 p.m.

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This program offers 1 hour of participatory MCLE credit.
Presented by the Licensing Interest Group

Much can be learned from contracts gone awry. In this webinar, you’ll have a chance to learn some best practices for drafting IP and technology licensing agreements that will help keep your clients out of the courtroom. Key topics will include:

  • License scope: what restrictions can be placed on the scope of an IP license and how to protect downstream or upstream partners.
  • Dispute resolution and other “boilerplate” clauses of consequence: how seemingly boilerplate terms, such as choice of law clauses, can substantively impact the enforcement of IP license agreements.
  • Exclusive dealing and related incentives: understanding the relevant market and how to structure exclusive dealing license agreements to minimize antitrust liability.

Speakers:

  • Eugene Mar is a partner with Farella Braun + Martel, LLP in San Francisco, where he represents clients in patent, copyright, trademark, trade secret, and licensing litigation. Mr. Mar also counsels clients on intellectual property protection and transactions. His clients range from Fortune 100 companies to emerging companies. He has repeatedly succeeded in obtaining complete verdicts in favor of his clients, including the entry of judgment in favor of the defendant post-Markman in multiple patent cases in the Eastern District of Texas. He was recognized by The Recorder as a Top 50 California Attorney in his first 10 years of practice in 2012. Mr. Mar chairs the Bar Association of San Francisco’s Intellectual Property Section and co-chairs the ABA Litigation Section's Intellectual Property Roundtable program. He received his J.D. from Harvard Law School, and his undergraduate degree from University of California, Berkeley.

  • Eric Olson is a senior associate in Farella’s San Francisco office, where his practice focuses on intellectual property litigation, including patent, copyright, trademark and trade dress litigation, as well as disputes concerning licenses and ownership of intellectual property. He also counsels clients on licensing intellectual property. His cases have involved biotechnology, WiFi, USB, Android software and other technologies relating to smartphones and tablet computers. He has represented clients in all aspects of arbitration and litigation, including Markman, summary judgment and trial. Mr. Olson received his J.D. from the University of California, Hastings College of the Law, where he was a staff editor of the Hastings Business Law Journal and admitted to the Order of the Coif and the Thurston Honor Society.

Webinar: EU/US Privacy Law: With the "Safe Harbor” Closed, What Next?

Tuesday, February 9, 2016, 12 noon - 1 p.m.

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This program offers 1 hour participatory of MCLE credit.
Presented by the Licensing Interest Group and the Technology, Internet and Privacy Interest Group

When the Court of Justice of The European Union struck down the EU/US Privacy “Safe Harbor” they sent shockwaves through the US privacy community.  Thousands of US companies affected by the decision were faced with the challenge of finding an alternative basis for sharing data between the EU and the US. In this webinar you’ll have a chance to learn about the Court of Justice of The European Union’s decision. You’ll also walk away with practical tips on how to structure your clients cross border data sharing in lieu of safe harbors.

Speaker: Francoise Gilbert.

Françoise Gilbert focuses her practice on U.S. and global data privacy and security in a wide variety of markets, including, among others, cloud computing, big data, connected devices, robots and other emerging technologies. Her clients include public or multinational entities, cloud service providers, big data analytics companies, connected device developers, B2C and B2B businesses, publishers, Internet stores, insurance companies, manufacturers, service providers, trade associations, non-profit organizations, software developers, and others.

With more than 30 years of experience addressing cutting edge domestic and international computer, Internet and data protection issues, she brings a unique combination of practical business acumen, sharp legal skills, deep regulatory knowledge, and extensive experience of the information technology markets.

Covering the entire privacy and security spectrum, she counsels clients on complex issues related to evaluating and strategically managing privacy, security, and e-business risks. She assists in the design of product and services to help meet the company’s objectives within the constraints of compliance requirements; the development of internal programs to help drive a culture of privacy across entire organizations; product development strategies aimed at meeting the privacy-by-design and security-be-design principles; the development and implementation of information privacy and security strategies and compliance programs; and addressing privacy and security in mergers and acquisitions, and other corporate and commercial transactions.

A sought after speaker, Françoise Gilbert has been featured on numerous panels throughout the United States and internationally on privacy, security, cloud computing, connected objects, smart cities, robot law, risk management, outsourcing, information technology, and e-business law by industry groups, bar associations and trade associations.

In addition, Ms. Gilbert is the author of the leading two-volume treatise "Global Privacy and Security Law" which covers in depth the privacy and data protection laws of 68 countries on all continents. She has also written numerous chapters in collective works and has published hundreds of articles in peer-reviewed publications, professional journals and magazines on privacy, security, emerging technologies, compliance, cybercrime, outsourcing, workplace privacy, information law, data governance, Internet law, ecommerce, children protection, and comparative law.

Webinar: Slaying the Dragon: Understanding and Effectively Managing the Use of the Model Order on E-Discovery in Patent Cases

Thursday, February 11, 2016, 12 noon - 1 p.m.

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This program offers 1 hour participatory of MCLE credit.
Presented by the Patent Intest Group

Many times parties stipulate to the Model Order on e-discovery in patent cases only to discover later on that they now need to negotiate a multitude of unanticipated issues. This program will discuss how to best utilize the Model Order, including areas of continuing concern, and will provide some practice pointers on how to evaluate e-discovery issues early on, in conjunction with other available tools, in order to cost-effectively and judiciously manage e-discovery in patent cases. Moderator: Sanjesh Sharma. Speaker: Mieke K. Malmberg.

Mieke K. Malmberg is a Partner in Glaser Weil’s Intellectual Property group. She received her bachelor of science degree in Biochemistry and Cell Biology from U.C. San Diego and her J.D. from U.C. Hastings College of the Law. Ms. Malmberg has more than fifteen years of experience litigating and advising clients on patent, trademark, copyright, and trade secret disputes throughout the United States, as well as Section 337 investigations before the International Trade Commission. She is an expert in handling patent litigation matters from early case evaluation through appeal and has handled multiple cases involving complex electronic discovery issues and extremely high volumes of electronic data.

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

Interest Group Meetings

Trade Secrets Interest Group Meeting

Wednesday, January 27, 2016, 12 noon

Please join us for our next Trade Secrets interest group conference call. We will 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.

To participate in the meeting, the dial-in number is 855-520-7605 and the Conference Code is 1211276419#.

Licensing Interest Group Meeting

Friday, February 12, 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#.

News

Call for Applications: Join the IP Section Executive Committee

Application deadline: February 8, 2016

Each year the IP Section offers attorneys in California an opportunity to contribute to the legal profession and the public by volunteering to serve on its Executive Committee. This gives IP Section members a great opportunity to get more involved with the Section, to network with colleagues, and to work on programs and other projects of interest. Our Executive Committee:

  • communicates recent developments and current issues in IP law and practice to its section membership and facilitates interaction among its members;
  • presents MCLE-accredited programs throughout the year;
  • holds retreats and networking receptions, among other exciting activities; and
  • publishes New Matter.

For more information and details on how to apply, click here.

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 Fall issue, you can earn credit for the article Revisiting Section 2(a) Disparagement in Trademark Law: Does the Disparagement Test Make Sense and is the Provision Constitutional? by Samuel Berrin. 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.

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 newmatterjournal@yahoo.com.

MCLE Catalog

Featured CLE Program from Our Catalog!

Online
CLE

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

Tips for Effectively Searching the USPTO Database Using TESS

A multi-part series on TESS searching skills will be discussed.  The three forms of search options available, followed by an exploration of free-form searching, field operators, and truncation will be explained.

1 hour participatory MCLE credit
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 Aurelia Schultz.