Wednesday-Friday, November 1-3, 2017
Hyatt Regency Newport Beach 1107 Jamboree Rd Newport Beach, CA 92660
Earn up to 9.25 Hours MCLE Credit, includes Legal Ethics, Elimination of Bias and Competence Issues
REGISTER ONLINE HERE
The hotel deadline is October 4, 2017. Online registration will close October 25, 2017.
Sponsors | Schedule | Hotel Info | Essential Info | Wednesday | Thursday | Friday Printable Brochure | Mail / Fax Registration Form
Clients often ask ‘Ultimate Questions,’ such as “Can I patent this?” “Can I trademark that?” and “How can I protect this IP?” As IP practitioners, it is our job to answer these questions and so many, many more. However, even the answers themselves may change over time with the emergence of new technologies, new law, and/or new societal changes that can quickly turn yesterday’s correct answer into tomorrow’s wrong answer. DON’T PANIC! This Institute is a multi-day educational program that will be The IP Practitioner’s Guide to the Galaxy of Answers to these ‘Ultimate Questions.’
Join your fellow IP practitioners as we kick off the Institute on Wednesday evening at the Hyatt Regency Newport Beach, our conference hotel, with a networking welcome reception. There will be tasty refreshments and stimulating conversation!
Thursday morning begins two days of thought-provoking educational programming. We offer two full tracks of programming, and several general sessions filled with high-level information and insight that you can apply to your daily practice. This year’s Institute provides a wide range of cutting-edge and compelling presentations on patent, copyright, trademark, cannabis-related IP, privacy, technology transfer, licensing, and so much more. Of particular note, our programming includes ethics credit, and the elusive elimination of bias and competency CLE credits. Our panelists consist of private practice, in-house, academia and government experts in their fields. We are very honored to have John Cabeca, Director of the Silicon Valley Office of the United States Patent and Trademark Office, who will be speaking on how IP practitioners benefit from the USPTO’s regional presence.
Thursday afternoon, the IP Law Section will celebrate the winners of our 9th Annual Vanguard Awards with a festive lunch ceremony honoring the accomplishments of our three award recipients from private practice, academia, and judiciary. There will be additional networking opportunities on Thursday evening where we’ll flip things around with our JEOPARDY-style trivia contest during which we’ll start with an ‘ultimate answer’ and work our way back to finding its ‘ultimate question.’
Whether or not you seek the Ultimate Answer to Life, The Universe and Everything, the answer to where you can start your search for answering your own Ultimate IP Questions is ‘42.’
5 p.m. - 7 p.m.
8 a.m. - 9 a.m.
8 a.m. - 4:45 p.m.
8 a.m. - 12 noon
8:45 am – 9 a.m.
As a result of the U.S. Supreme Court’s decision in May in Impression Products Inc. v Lexmark International Inc., and its 2013 decision in Kirtsaeng v. John Wiley & Sons, Inc., the U.S. follows the doctrine of international exhaustion in both patent and copyright law. Exhaustion in trademark law is less easy to sum up. The Supreme Court last addressed trademark exhaustion in 1988, and has never broadly stated that international exhaustion applies. Since then, courts have developed rules for dealing with materially different trademarked goods as a limit to exhaustion. This program looks at whether patent and copyright owners may be able to assert trademark rights over parallel imports.
Speaker:
9 a.m. - 10 a.m.
Under the leadership of Director John Cabeca, the new Silicon Valley United States Patent and Trademark Office has had a tremendous economic impact on the West Coast region. Director Cabeca will provide an update on USPTO initiatives and priorities. He will also share his insights on the role of patents in a technology driven economy and highlight programs advanced by the USPTO to streamline the examination process and foster entrepreneurial activity.
Copyright protection expires...doesn’t it? Professor Rosenblatt explores ways in which copyright holders have sought to slow the entry of fictional characters into the public domain, using Arthur Conan Doyle’s character Sherlock Holmes as a case study. We all know the copyright term extension will keep Mickey Mouse protected a little while longer, but copyright holders also rely on trademark law, risk aversion, uncertainty aversion, legal ambiguity, and other formal and informal mechanisms to control the use of fictional characters long after copyright protection has arguably expired. This raises questions regarding the true boundaries of the public domain and the effects of non-copyright influences in restricting cultural expression.
10 a.m. - 11 a.m.
11 a.m. - 11:15 a.m.
In 2018 California will begin to allow the sale of cannabis to adults over the age of 21 and to tax and regulate it--like tobacco and alcohol. More than half of the states either have similar laws or have decriminalized the sale and possession of cannabis for medical purposes. The commercialization of this sector is projected to cause a jump in annual revenue from $6.7 billion in 2016 to $20 billion by 2021. As this sector grows, so do the questions about what role trademarks, patents, copyrights, and trade secrets can and should play in spurring the industry along– especially since cannabis is still illegal under federal law. This panel will discuss how IP is and isn’t able to be deployed in this green rush.
Speakers:
11:15 a.m. - 12:15 p.m.
12:30 pm – 2:30 pm
Allegations regarding the knowledge possessed by a person of ordinary skill in the art is ever-present in patent prosecution and litigation, but does anyone every really determine the level of ordinary skill? Why do patent examiners seem to avoid explicit determinations of the level of ordinary skill? This panel examines these questions and the reality of skill level determination from the perspective of a patent prosecutor, a patent litigator, and in-house counsel.
Moderator and Speaker:
The Supreme Court’s unanimous decision in Matal v. Tam struck the Lanham Act’s prohibition on the registration of disparaging marks as an unconstitutional violation of the First Amendment. This panel evaluates the decision and contemplates its wider implications, including its applicability to the separate ban on registration of immoral and scandalous marks, anti-dilution protection and the broader intersection of intellectual property rights and free speech.
2:45 p.m. - 3:45 p.m.
3:45 pm – 4 p.m.
What makes a truly successful in-house patent practice? Is there only one way to protect the valuable patent assets of your company? Expert in-house patent practitioners representing diverse clients in; entertainment, medical devices and digital media compare and contrast the answers to these questions in a lively round table discussion. This interactive, collaborative presentation on the evolution of the stand-alone patent department, will also predict the future cost effective and efficient patent asset capture system. Finally, our speakers will address observed trends in patent practice management.
From virtual personal assistants and smart fridges to fitness trackers and smart TVs the Internet of Things has moved firmly out of the realm of science fiction into reality. Along with the technical challenges your clients face comes a host of interesting new legal questions. When the TV you create knows what your customers are watching, what exactly can you share about their viewing habits? If Alexa can hear your customers, what happens when law enforcement requests those records? What do you need to disclose to customers in the event of a data breach? Is there anything your clients can do at the design phase to minimize these types of issues? This panel will leave you with answers to questions like these and practical tips to help you advise your clients as they innovate in the IoT space.
Moderator:
4 p.m. - 5 p.m.
7 p.m. – 10 p.m.
8 a.m. – 2:45 p.m.
8 a.m. – 4 p.m.
8 a.m. – 9 a.m.
University technology transfer and licensing can easily trip up practitioners not intimately involved in this practice area. Please join this experienced panel for a discussion of the law and policy propelling discoveries from research lab to market, an “inside the trenches” view on negotiating a university technology transfer agreement, and an exploration of software and trademark licensing use cases, from the perspective of a university. We’ll conclude with a lively roundtable discussion on these and related technology transfer and licensing topics.
Get ready for a no-holds-barred technology license negotiation! Our battle-tested speakers will negotiate the most controversial terms of a software license agreement, including IP indemnities and license grants and restrictions. Rather than discussing these issues in the abstract, this program will explain the licensor and licensee perspectives by reviewing actual redlined language, as the parties (hopefully) move closer to deal conclusion. As an added bonus, our negotiators will be joined by their “clients,” giving a behind the scenes look at the internal deliberations and trade-off discussions.
"Clients":
Hip-hop music, also known as “rap” rose from humble beginnings in the South Bronx to a cultural and economic juggernaut that dominates the music industry and ancillary businesses from fashion to motion pictures and television. The meteoric journey has taken hip-hop from its very beginnings with Sugar Hill Gangs “Rapper’s Delight” in the 1970s and NWA in the 1990s from “Straight Outta Compton” to “straight outta” copyright infringement lawsuits. Copyright law, with all its complexity, is central to hip-hop music from production to distribution. Every copyright doctrine including originality, fixation, joint authorship, access, substantial similarity, and fair use and more is implicated in hip-hop production.This audio visual presentation will explore how copyright law has both shaped hip-hop music production and how hip-hop music paradigms have challenged the very foundations of copyright doctrine. It will also explore how the treatment of hip-hop artists at the bottom can inform the debate over copyright reform, looking--and listening to the music behind disputes involving artists such as Biz Markie,Tribe Called Quest, the Fat Boys, Ludacris, Wu Tang Klan, Public Enemy, Dr. Dre, Jay Z, Lil’ Kim and Fetty Wap. Additionally, this presentation will explore how dynamics of racial discrimination and segregation in society and culture have impacted copyright law in its implementation, and the importance of diverse perspectives in judicial decision-making and the practice of law. (1 Hour Elimination of Bias)
11:15 a.m. – 11:30 a.m.
This program will provide an overview of recent developments in ethics decisions, rules, and state bar disciplinary practices relevant to the practice of in-house and outside IP counsel. Topics to be discussed include: understanding outside counsel subject matter conflicts; avoiding spoliation allegations with litigation hold notices; meeting duty of candor obligations under Rule 56; multijurisdictional practice issues for in-house counsel, counsel working remotely from home in another state, and counsel handling arbitrations in a state in which they are not licensed; and use of ethical walls in M&A due diligence. (1 Hour Legal Ethics)
This session highlights some of the Defend Trade Secret Act’s quirks, reviews the first 18 months of its caselaw, and discusses other fun trade secret and non-compete recent developments.
This session will include a discussion of substance abuse and clinical depression, and how they impair an attorney’s ability to practice law. Included will be ways to identify clinical depression and substance abuse. The discussion will include statistics on clinical depression and substance abuse among lawyers, symptoms of clinical depression and substance abuse to look for in yourself and others, ways to avoid substance abuse and clinical depression, and the professional responsibility rules that may be implicated when there is a problem with clinical depression and substance abuse. This program will also include ways to provide your best work product for your client based on neuroscience. (1 Hour Competence Issues)
We have reserved a limited block of sleeping rooms at Hyatt Regency Newport Beach, 1107 Jamboree Road, Newport Beach, CA 92660.
Reservation deadline: October 4, 2017
Special group rate: $169/night
Reserve Online now, or call 800-554-9288. Please identify yourself as part of The State Bar of California IP Institute to obtain the special hotel rate for our group.
The Intellectual Property Law Section welcomes all who are interested in Intellectual Property. You need not be a lawyer to attend, enjoy, and benefit from this program.
For your convenience, we've posted a printable program brochure.
4 Ways to Register! Complete the registration form and course selector:
1. Register Online Here 2. Fax: Fax registration form to (415) 538-2368 with your credit card payment. Do not mail original form if faxing. 3. Mail: Mail registration form and your check to:
Program Registrations The State Bar of California 180 Howard Street San Francisco, CA 94105
4. Walk-in: Subject to available space, walk-in registration is available.
All requests for refunds must be received (not postmarked) in writing by October 25, 2017. Refunds will be issued less a $50 non-refundable service charge.
Registration fees include admission, up to 9.25 hours of MCLE, course materials, Thursday and Friday breakfast, Interest Group lunch, Jeopardy Game Night, and Wednesday evening reception. The Thursday Vanguard Award Luncheon is a ticketed event. Tickets must be purchased separately.
- IP Section Members: $595 - Non-Members of the IP Section: $690 (includes enrollment in the Intellectual Property Law Section for 2018) - California Young Lawyers Association Members: $490 - Law School Faculty/Paralegal/Government/Non-Profit: $275 - Law Student: $150
Print out and complete the Mail / Fax Registration Form and return it with payment to The State Bar of California. Make checks payable to The State Bar of California. One registrant per form. Photocopies may be used.
Mail To:
Program Registrations The State Bar of California 180 Howard Street San Francisco, CA 94105.
Or Fax To: Program Registration at 415-538-2368.
In order to fax your registration, credit card information is mandatory. VISA or MasterCard only. Photocopies of checks will not be accepted.
For registration information, please call Program Registrations at 415-538-2508.
Please call 415-538-2375 for special assistance
The State Bar of California and the Intellectual Property Section are approved State Bar of California MCLE providers.