Inevitable Disclosures
October 31, 2016

Contents

  • Live Programs
    • IP Institute
    • Transnational Law Summit: International Law in the 21st Century
  • Webinars
    • A Global Approach to Grey Market Issues: Solutions and Remedies in Europe and in the US
    • Managing Influencers and Consumer Content on Social Media
    • M&A-Friendly Technology License Agreements
    • Intellectual Property Transactions in Israel
    • Using Surveys and Market Research in IP Litigation
  • News
    • USPTO Notice of Roundtables and Request for Comments Related to Patent Subject Matter Eligibility
    • Amended TTAB Rules Published in Federal Register 11/7
    • Copyright Office Seeks Additional Comments for Section 1201 Study
    • Copyright Office Technical Amendments
    • USPTO Seeking Comments on Proposed Patent Fee Adjustments
    • Congratulations to the 2016 IP Vanguard Award Recipients
    • Writers Wanted for New Matter
  • Third-Party Programs
  • MCLE Catalog
  • Contact Us

Live Programs

Registration Now Open for the 41st Annual IP Institute "IP on the American Riviera"

Hyatt Santa Barbara November 10-11, 2016
Hyatt Santa Barbara
1111 E. Cabrillo Blvd
Santa Barbara

Join us at the 41st Annual IP Institute, “IP on the American Riviera,” which will be held November 10 - 11 at the beautiful Hyatt Santa Barbara, with a welcome reception on November 9th. 

Panel Highlights Include:

Patent Practice: Using Recent IPR and Court Decisions to Better Defend or Defeat Patents and Maximize Your Portfolio Strength. Recent Patent Trial and Appeal Board (PTAB) decisions and Federal Court rulings are changing the best practices for developing and maintaining defensible patent portfolios, or for defeating overly broad patents. Our speakers will discuss the new legal realities facing patent practitioners, including how to best obtain timely and effective patent coverage or else defeat overly broad patents in this rapidly changing landscape.

Alcoholic Beverage IP: Nuts and Bolts. Nowhere are IP issues more complex and hotly contested than in the heavily-regulated alcohol and beverage industries. Come learn the “nuts and bolts” from two IP practitioners who have extensive experience with these industries. Topics will include trademark, trade dress, copyright, and labeling issues, and the presentation will highlight unique concerns such as Certificates of Label Approval and prohibited terms and images, while focusing on practice pointers for attendees.

Fan Fiction and Fan Art: Copyright and Trademark Issues Involving User-Generated Content. Whether it’s the creation of fan fiction for a well-liked fantasy book series, fan art related to a popular movie, or user-generated creations based on copyright protected works, creators’ rights are at the core of this messy dispute.

Sink or Swim: IP Advice for New Ventures. The “next big thing” can become “opportunity lost” if an entrepreneur fails to identify and properly protect the critical information assets that comprise a new venture, or falls into the unseen traps that can erode or even forfeit essential intellectual property rights. Non-obvious risks will be discussed, including:  how the IP should be owned; the impact of equity incentive programs; dealing with employees, independent contractors, and “volunteers”; avoiding the “on sale bar”; the risks of overvaluing and undervaluing IP assets; problems with work for hire and non-disclosure agreements; foreign law issues; and planning for succession or business exit.

More Information.

THE AMERICAN RIVIERA is a registered trademark of Visit Santa Barbara.

Transnational Law Summit: International Law in the 21st Century

Transnational Law Summit imagePresented by the International Law Section

Friday, November 4, 2016
Omni Los Angeles Hotel
251 South Olive Street
Los Angeles, CA 90012

Earn 6.25 hours MCLE credit, including 1 hour legal specialization in 
Immigration Law

REGISTER ONLINE HERE

Program Schedule | Essential Information | Printable Brochure | Mail/Fax Reg. Form | Sponsors

Click here for all the details!

Webinars

Webinar: A Global Approach to Grey Market Issues: Solutions and Remedies in Europe and in the US

Thursday, November 17, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit

REGISTER TODAY

The grey market–or parallel import–is typically defined as the unauthorized importing of a genuine product either intended for a different market or through unauthorized channels. Goods that flow through the grey market can have a staggering impact on the revenue, image, reputation, organization or distribution networks of a company.

Against the backdrop of increased globalization and ubiquitous international exchanges, this webinar will offer a brief outline of the approach to grey market issues in Europe and in the US and suggest some of the tools that can be used by brand owners to combat the grey market from a global perspective.

Moderator: Pete Bromaghim
Speakers: Béatrice Martinet and Richard Nelson

Béatrice Martinet is special counsel at Sideman Bancroft whose practice focuses primarily on intellectual property litigation, arbitration and transactional work for clients in a wide range of sectors, including in the computer, technology, software, publishing, pharmaceutical, food and beverage, and fashion industries.

Richard Nelson is a partner at Sideman Bancroft who specializes in IP and fraud enforcement, with a focus on complex commercial litigation and internal investigations. Mr. Nelson has extensive jury trial experience in federal and state courts, having tried 32 cases to jury verdict.

Webinar: Managing Influencers and Consumer Content on Social Media

Tuesday, November 22, 2016, 12 noon - 1 p.m.
This program offers 1 hour of participatory MCLE credit
Presented by the In-House Counsel Interest Group

REGISTER TODAY

The use of endorsements and testimonials has become a marketing staple. Brands can leverage an influencer's network and reputation to promote its products and services and use social media to solicit consumer endorsements and encourage consumer interaction. While popular and effective, the use of endorsements and testimonials is replete with legal issues. When do endorsements invite FTC scrutiny? How much responsibility or control do brands actually have? Where have others crossed the line and what lessons have we learned from recent enforcement? This presentation will discuss these issues and provide practical guidance for managing risk.

Speakers: Monique Bhargava

Monique Bhargava is an associate in the advertising, marketing, and privacy group at Winston & Strawn. She advises clients in a broad spectrum of industries with respect to advertising, consumer promotions/marketing, trademark, copyright, data privacy, domain name, and other intellectual property matters relating to the entertainment and media sector. Ms. Bhargava has also served as an adjunct professor at the University of Illinois - College of Law, where she has taught on the law of advertising and promotions

Webinar: M&A-Friendly Technology License Agreements

Wednesday, November 30, 2016, 12 noon - 1 p.m.

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

REGISTER TODAY

Maximizing shareholder value may mean selling the company or its intellectual property. Ensuring that the company's outbound license agreements are M&A-friendly is a paramount objective for tech company counsel. It's especially important to appreciate the unique challenges posed by an exit in the form of an asset purchase, in which the buyer leaves the seller's customer licenses in place after closing. This webinar explores those aspects of technology license agreements that are conducive to such an exit, and those aspects that are not.

Speaker: Sean Hogle

Sean Hogle is Vice Chair of the Licensing Interest Group of the IP Section, managing partner and founder of Sean Hogle PC (epiclaw.net), and the CEO/Founder of Redline (redline.net), an exclusive collaboration environment for lawyers. For more than 20 years, Sean has practiced in the areas of technology, intellectual property, and commercial law for technology ventures worldwide.

Webinar: Intellectual Property Transactions in Israel

Monday, Decenber 5, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.
Presented by the Intellectual Property Law Section, Licensing Interest Group and the International Interest Group

REGISTER TODAY

Technology and intellectual property are a significant percentage of Israel’s exports. This program will address the negotiation of transactions involving intellectual property developed in Israel or held by Israeli entities. Topics include: (1) aspects of Israeli commercial, contract and tax law significant to intellectual property transactions, (2) the role and regulations of the Israel Innovation Authority, and (3) transactions involving intellectual property developed at Israeli research, academic and medical institutions.

Speaker: Eli Greenbaum

Eli Greenbaum is a partner at Yigal Arnon & Co., one of Israel’s oldest and largest law firms. Eli’s practice focuses on the commercial representation of technology companies with an emphasis on intellectual property and technology-related transactions, and Eli has published widely in those areas. Eli received his M.S. in Applied Physics from Columbia University and his J.D. from Yale Law School. Prior to joining Yigal Arnon & Co., Eli clerked for Justice Miriam Naor of the Supreme Court of Israel and Judge David Cheshin of the District Court of Jerusalem, and worked for a number of years at Cleary, Gottlieb, Steen & Hamilton in New York.

Webinar: Using Surveys and Market Research in IP Litigation

Tuesday, December 6, 2016, 12 noon - 1 p.m.

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

REGISTER TODAY

Surveys and other market research are increasingly used by courts in assessment of intellectual property damages. This webinar discusses a variety of survey and complimentary market research methods, how they have been used in patent and trademark cases, some guidelines for admissibility, and approaches for validating results.

Moderator: Anne-Marie Dao
Speakers: Peter Hess and Anjali Oza

Peter Hess is a Vice President at Analysis Group who specializes in the application of microeconomic theory and analytical methods in litigation, business, and policy contexts. He consults on intellectual property, antitrust, securities/finance, policy, regulatory, and general business matters. Dr. Hess’s work includes assessment of liability and loss causation; estimation of commercial damages, lost profits, and reasonable royalties; analyses of financial, insurance claims, and Internet traffic data; valuation; simulation and forecasting; cost-benefit analysis; and policy evaluation.

Anjali Oza is a Manager at Analysis Group and specializes in the application of economic, statistical, and market research methods to litigation and strategy matters. Dr. Oza is an expert in designing qualitative and quantitative surveys, including conjoint analysis and experiments, involving consumer goods in the context of patent litigation, false advertising, trademark infringement, and class action. She has also worked on estimating damages in health care provider-payor disputes, intellectual property, breach of contract, and employment discrimination cases.

News

USPTO Notice of Roundtables and Request for Comments Related to Patent Subject Matter Eligibility

The United States Patent and Trademark Office (“USPTO”) seeks public input on patent subject matter eligibility in view of recent decisions by the Supreme Court and Court of Appeals for the Federal Circuit. The USPTO remains interested in feedback from members of the public to improve the USPTO’s existing subject matter eligibility guidance and training examples. The USPTO is also interested in facilitating a discussion among members of the public regarding the legal contours of eligible subject matter in the U.S. patent system. The USPTO will be facilitating these discussions by hosting two roundtable events. The first roundtable will be held on November 14, 2016 in Virginia and will be directed to receiving feedback from members of the public to improve the USPTO’s existing subject matter eligibility guidance and training examples. The second roundtable will be held at Stanford University on December 5, 2016 and will be focused on receiving feedback regarding larger questions concerning the legal contours of eligible subject matter in the U.S. patent system. The roundtables will provide a forum for discussion of the topics identified in this notice.

DATE/LOCATION for Roundtable 2:  December 5, 2016, 8 a.m. to 5 p.m., Stanford, CA. Written comments are due by January 18, 2017. ADDRESSES: Paul Brest Hall, 555 Salvatierra Walk, Stanford University

FOR FURTHER INFORMATION CONTACT: Requests for additional information regarding registration and speaker presentations should be directed to the attention of Elizabeth Shaw, by telephone at 571-272-9300, or by e-mail at elizabeth.shaw2@uspto.gov. Requests for additional information regarding the topics for written comments and discussion at Roundtable 1 should be directed to Carolyn Kosowski, by telephone at 571-272-7688, or by e-mail at carolyn.kosowski@uspto.gov. Requests for additional information regarding the topics for written comments and discussion at Roundtable 2 should be directed to Amy Nelson, by telephone at 571-272- 8978, or by e-mail at amy.nelson@uspto.gov.

Amended TTAB Rules Published in Federal Register 11/7

Amended TTAB Rules Published in Federal Register. Go here for link and for chart summarizing changes.

Copyright Office Seeks Additional Comments for Section 1201 Study

The U.S. Copyright Office is conducting a study to evaluate the operation of section 1201 of title 17 and has reviewed public input from the first round of written comments and from roundtable participation. To further aid the analysis, the Copyright Office is now soliciting additional written comments on a subset of issues. These include proposals that would update the statute’s permanent exemption framework and amend the anti-trafficking provisions to better enable intended beneficiaries of exemptions to engage in lawful circumvention activities, as identified further in the September 27, 2016, Federal Register notice. You may access the Federal Register notice here. Written comments are to be submitted electronically using the regulations.gov system. Specific instructions for submitting comments are available on the Copyright Office website at http://copyright.gov/policy/1201/commentsubmission/. Comments are due on or before October 27, 2016. Reply comments are due on or before November 16, 2016.

Copyright Office Technical Amendments

The U.S. Copyright Office published a Notice of Proposed Rulemaking, seeking public comments on proposed technical amendments to its regulations governing registration, recordation, licensing, and other services the Office provides. The amendments are designed to improve the quality of the Office’s regulations by updating cross-references, replacing outdated terminology, reflecting structural changes to the Office and its senior management, eliminating expired our obsolete provisions, and correcting nonsubstantive errors. While these amendments are intended to be technical in nature, out of an abundance of caution, the Office is publishing the proposed regulations for public comment.

The Notice of Proposed Rulemaking and instructions on how to submit a comment are available here. Written comments must be received no later than November 2, 2016, at 11:59 p.m. Eastern Time.

USPTO Seeking Comments on Proposed Patent Fee Adjustments

The United States Patent and Trademark Office issued a notice of proposed rulemaking proposing to set or adjust certain patent fees, as authorized by the Leahy-Smith America Invents Act. The proposed fees are projected to recover the aggregate estimated cost of the USPTO’s patent operations, Patent Trial and Appeal Board operations, and administrative services. The last major patent fee setting using AIA authority became effective in March 2013. As part of the USPTO’s continued commitment to fiscal responsibility, financial prudence and operational efficiency, the Office comprehensively reviews fee levels on at least a biennial basis. The fee review process incorporates a thorough evaluation of the existing fee schedule as well as research and analysis on potential revisions to the schedule.

The Office welcomes comments on both the individual patent fee proposals and the rulemaking goals and objectives. Comments should be sent by email addressed to: fee.setting@uspto.gov. Comments may also be sent by email to the Federal eRulemaking Portal at http://www.regulations.gov. The Office will consider and respond to all comments received, during the public comment period, in the final rule, which the Office expects to publish in 2017.

Congratulations to the 2016 IP Vanguard Award Recipients

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 will be presented during a special Awards ceremony at the 2016 IP Institute, the flagship event of the Intellectual Property Law Section.

Join us at the 2016 Intellectual Property Law Section Annual Institute on November 10-11 at the Hyatt Santa Barbara. The 2016 honorees are:

In-House Counsel

image of Fred Von Lohmann

Fred Von Lohmann
Legal Director, Copyright
Google, Inc.

Judiciary

image of  Honorable Ronald M. Whyte

Honorable Ronald M. Whyte
United States District Court
Northern District of California

Private Practice

image of Heather J. Meeker

Heather J. Meeker
Technology Transactions Partner
O’Melveny & Myers LLP

Academic or Public Policy

image of Kevin J. Greene

Kevin J. Greene
Professor of Law
Thomas Jefferson School of Law

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

Ethical and Privacy Challenges in Internet Policy

Drawing from his many high profile roles in the business and legal community, Chris Kelly, former Chief Privacy Officer and General Counsel at Facebook, will provide a unique exploration of many of the ethical and privacy challenges that arise from establishing and complying with internet policy.

1 Participatory MCLE Credit in 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 Editor of Inevitable Disclosure, Barbara Friedman.