Inevitable Disclosures November 15, 2015

Live Programs

Photos from the IP Institute!

IP Section Chair, Deborah Greaves, welcoming attendees to the 40th InstituteStarfleet captain and Deputy Commissioner for Patent Quality at the USPTO, Valencia Martin-WallaceThe 40th Annual IP Institute happened this weekend, and was a resounding success. See a bunch of pictures (larger than these) on our Facebook page.

Vanguard Award recipient Honorable M. Margaret McKeown with IP Section Chair Deborah Greaves Vanguard Award recipient Jonathan Pink with IP Section Chair Deborah Greaves Vanguard Award recipient Mei-lan Stark with IP Section Chair Deborah Greaves Vanguard Award recipient Dan L. Burk with IP Section Chair Deborah Greaves

Save the Date! IP Protection and Social Media Issues in the Workplace

The Intellectual Property Law Section of the State Bar of California is presenting a new full-day conference on IP Protection and Social Media Issues in the Workplace. The conference will be held on January 19, 2016, at the State Bar Offices in San Francisco.

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 employee protocols are in place to protect intellectual property.Employers also face challenges in complying with social media privacy rights and laws affecting employee participation in promotional activities. Complicating the entire picture are the increasingly fluid borders of where and when work is accomplished.

We have assembled a group of leading intellectual property and employment attorneys from public agencies, private law firms, and distinguished law schools to address the important intellectual property and social media issues that arise in today's workplace.

Our keynote speaker is Professor Mark Lemley, Director of the Stanford Program in Law, Science and Technology.

Conference panels will focus on the following topics and offer practical advice for attendees from both the business world and the legal profession:

  • Ownership and Clearance of I.P. in the Workplace
  • I.P. Issues You Didn't Think You Had
  • Keynote: Professor Mark Lemley, Director of the Stanford Program in Law, Science and Technology
  • Testimonials and Endorsements: How to Properly Involve Employees
  • "Work Made for Hire" Clauses: Independent Contractor or Statutory Employee Under California Law?
  • Privacy Issues in the Workplace and the Internet of Things
  • Addressing I.P. Theft in the Workplace

Webinars

Webinar: FRAND Developments in Japan

Monday, November 23, 2015, 12 noon - 1 p.m.
This program offers 1 hour of participatory MCLE credit.
Presented by the International Interest Group

In the wake of Apple v. Samsung and the recent draft amendments regarding FRAND agreements under the Japan Antimonopoly law by the Japan Fair Trade Commission (JFTC), the Japan patent licensing system has taken a very pro-licensee stance. Specifically, the new draft amendment now includes provisions effectively barring patentees from obtaining injunctive relief against third party licensees who are "willing to take a license under FRAND terms." To allow injunctive relief against a wiling licensee would be an unfair trade practice. Furthermore, a negotiating third party licensee is still "willing" if they have the demonstrated intent of entering a licensing agreement, regardless of whether they challenge validity or assert non-infringement of the patent. The only relief available to patentees against infringers of their SEP is monetary damages in an amount equivalent to a "reasonable royalty rate." Speaker: Aki Ryuka. REGISTER TODAY

Webinar Replay: Legal Ethics for Non-litigators in the Client Lifecycle: Part 1 -- Finding Clients

Wednesday, December 2, 2016, 12 noon - 1 p.m.
This program offers 1 hour of participatory MCLE credit in Legal Ethics.

While all lawyers often face the same ethical issues, transactional lawyers often need guidance tailored to their non-litigation practice. Speakers James C. Roberts III and Megan Zavieh will go through a series of hypotheticals and ethical rules as they apply through the “life cycle” with clients, starting in this Part 1 on finding clients. REGISTER TODAY

Webinar: Recent Developments in Biosimilars

Tuesday, December 8, 2015, 12 noon - 1 p.m.
This program offers 1 hour participatory credit.
Presented by the Patent Interest Group

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. Speakers: Sarah Sheldon Brooks and Salil Bali. REGISTER TODAY.

Webinar Replay: Legal Ethics for Non-litigators in the Client Lifecycle: Part 2 - Representing Clients

Wednesday, December 9, 2015, 12 noon - 1 p.m.
This program offers 1 hour of participatory MCLE credit in Legal Ethcics.

While all lawyers often face the same ethical issues, transactional lawyers and corporate lawyers often need guidance tailored to their non-litigation practice. Through a series of hypotheticals, ethical rules as they apply through the "life cycle" with clients, now concentrating on representing clients -- e.g., conflicts will be explained. Speakers: James C. Roberts III and Megan Zavieh. REGISTER TODAY.

Webinar: Exploration of the Proprietary Information
and Inventions Agreement


Tuesday, December 15, 2015, 12 noon - 1 p.m.
This program offers 1 hour of participatory MCLE credit.
Presented by the Licensing Interest Group

The PIIA is one of the most commonly used documents among tech ventures. This program will explore the document from an IP and employment law perspective. Topics include (1) the best definition of "Proprietary Information;" (2) ensuring preservation of the employer's work for hire status; (3) dealing with the double-patenting objection; (4) anti-raiding/anti-poaching clauses; (5) attack of the NLRB; and (6) employee indemnification. Speaker Sean Hogle. REGISTER TODAY.

Webinar: Update on Canadian IP Legislation and Upcoming Changes

Wednesday, December 16, 2015, 12 noon - 1 p.m.
This program offers 1 hour of participatory MCLE credit

Canada is undergoing significant change in its intellectual property laws in an effort to modernize Canadian legislation in order to participate in International Treaties such as the Patent Law Treaty and the Madrid Protocol. Keep abreast of the changes and hot topics in Canadian IP law with leading Canadian IP attorneys as they discuss current and proposed changes to Canadian trademark and patent practice, and how they affect foreign applicants. Speakers: Etienne De Villiersand and Kathleen Lemieux . REGISTER TODAY

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

Thursday, December 17, 2015, 12 noon - 1 p.m.
This program offers 1 hour of participatory MCLE credit in Legal Ethics.
Presented by the Trademark Interest Group

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?

Speakers: David Branfman and Lance Rogers. REGISTER TODAY

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

Thursday, January 14, 2016, 12 noon - 1 p.m.
This program offers 1 hour of participatory MCLE credit.
Presented by the Licensing Interest Group

When the Court of Justice of The European Union struck down the EU/US Privacy “Safe Harbor” it 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. REGISTER TODAY.

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

Thursday, January 26, 2016, 12 noon - 1 p.m.
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 and Eric Olson. REGISTER TODAY

Interest Group Meetings

Copyright Interest Group Teleconference

Please join the Copyright Interest Group for a member call on Thursday, December 10, from 12 noon to 1 p.m. During the call we will have open discussion about important new copyright cases and other recent copyright developments. All IP Section members are invited to participate. For more information about the call or the Copyright Interest Group, contact Chair Chris Lockard.

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

News

Congratulations to the Recipients of the 2015 IP Vanguard Awards!

The Executive Committee of the IP Law Section is pleased to honor outstanding legal professionals who are spearheading new developments in the world of intellectual property. The IP Vanguard Awards were presented during a special Awards ceremony at the 2015 IP Institute, the flagship event of the Intellectual Property Law Section.

The 2015 honorees are:

Mei Lan Start

In-House Counsel

Mei-lan Stark
Senior Vice President, Intellectual Property
Fox Entertainment Group, USA

Margaret McKeownJudiciary

Honorable M. Margaret McKeown
United States Court of Appeals for the Ninth Circuit

Jonathan PinkPrivate Practice

Jonathan Pink
Lewis Brisbois Bisgaard & Smith

Dan
            BurkAcademic or Public Policy

Dan L. Burk
Chancellor's Professor of Law
University of California , Irvine School of Law


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 Summer issue, you can earn credit for the article  A Closer Look at Section 1202 Litigation and the Developing Jurisprudence of Copyright Management Information by Austin Ray Phillips. 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

Online Catalog

Featured CLE Program from Our Catalog!

Online
CLEDid 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.