November 1-3, 2017
Hyatt Regency Newport Beach
1107 Jamboree Rd
Newport Beach, CA 92660
Join us at the 42nd Annual IP Institute which will be held November 1 - 3 at the beautiful Hyatt Regency in Newport Beach.
Online registration is closed but but walkins will be accommodated so long as there is space.
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, entertainment, and so much more. The program includes Ethics CLE credit as well as the elusive Elimination of Bias and Competency credits. The event will also feature the always popular Vanguard Awards luncheon,honoring the accomplishments of our three award recipients from private practice, academia, and the judiciary. Join us for a fun “Jeopardy-style” trivia contest where we’ll challenge contestants to find the “ultimate answer” to the “ultimate question” and you’ll have a chance to win fun prizes! Read more.
Friday, November 10, 2017
To participate in the meeting, the dial-in number is 855-520-7605, passcode 1211276419#.
Monthly “All Hands” Licensing IG conference call. Ilan Feuchtwang will speak on “Patent Exhaustion In the Wake of Lexmark.” In addition, we will 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.
Wednesday, December 6, 2107
Dial-in number 855-520-7605, passcode 1211276419#. Monthly "All Hands" Copyright IG conference call. On this call, we will discuss current cases and developments in copyright law. Each month a presenter will lead the discussion. We will also discuss opportunities to write articles, coordinate webinars, speak on webinars, and participate in the IP section in other ways. Please note: Our monthly calls are the 1st Wednesday of every month.
Tuesday, November 7, 2017, 12 noon - 1 p.m.
Presented by the Patent Interest Group
This program offers 1 hour participatory MCLE credit.
The panel will discuss updates on patent eligible subject matter since the Alice Bank, Enfish, Mayo Collaborative, and Sequenom v. Ariosa line of cases. They will cover case law from federal courts, decisions from the PTAB, results of the USPTO’s roundtables last year on Section 101, as well as recent recommendations from trade associations such as IPO and AIPLA on proposals for legislation change. The panel will also discuss the effect of current Section 101 jurisprudence on the technology, software, and biotechnology/biologics industries, and discuss whether the laws as applied in the U.S. are consistent with our obligations under certain international treaties.
Moderator: Sanjesh Sharma
Speakers: Bernard Greenspan, David Randall and Greer Shaw
Sanjesh Sharma is IP Counsel at Abbott Medical Optics, now part of Johnson & Johnson Vision, where she manages all aspects of patent, trademark, and copyright matters for the company’s Refractive and Laser Cataract Surgical Equipment portfolios. She is the Chair of the Patent Interest Group for the State Bar of California’s IP Section, and has served as an officer of the Patent Interest Group since 2013.
Dr. Bernard Greenspan has over 30 years of leadership experience in intellectual property strategy and portfolio management, drug delivery, and device research and development. He is a licensed patent agent, and received his Masters and Ph.D. in Biophysics from the University of Rochester School of Medicine and Dentistry. Prior to starting Greenspan IP Management, Bernie was the Senior Director of Intellectual Property at Verus Pharmaceuticals in San Diego, were he was responsible for establishing IP strategies for drug product and device development teams, managing outside counsel, and providing IP support of due diligence. He also previously served as the Senior Director of Intellectual Property at Prometheus Laboratories, a diagnostics and therapeutics company.
David Randall is a registered patent attorney with over 25 years of experience. He has represented clients in a variety of intellectual property matters, including patent, trademark, and trade secret litigation throughout the United States, as well as multijurisdictional matters. His practice focuses on consumer products, medical device, aerospace, and electronics industry. He has counseled clients in the development and management of worldwide patent and trademark portfolios, and handled post-grant-proceedings and inter partes review proceedings before the PTAB. David holds a Bachelor of Science in Metallurgical Engineering from the University of Arizona, and a Juris Doctor from Arizona State University.
Greer Shaw has 18 years of experience in intellectual property and complex commercial litigation and dispute resolution. In IP, he has litigated numerous patent infringement matters involving a wide variety of technologies as well as trademark disputes, trade secret matters, and copyright infringement cases. Greer’s commercial litigation experience includes cases involving breach of contract, business torts, fraud, and unfair competition. Greer has represented both plaintiffs and defendants in state and federal trial and appellate courts, as well as before the International Trade Commission. He received his undergraduate degree from the University of California, Berkeley, and his Juris Doctor degree from Boston University School of Law. Greer was recognized among Southern California Super Lawyers for Intellectual Property Litigation for the years 2014-2016.
Friday, November 17, 2017, 12 noon - 1 p.m.
Presented by the Trade Secret Interest Group
This program offers 1 hour participatory MCLE credit.
This webinar will address the forensic side of IP theft, including the typical timeline that unfolds after suspected/detected theft; the defensible preservation of data sources; forensic investigation, including tools and techniques; and the process for internal investigation when such theft has taken place. The program will also touch on how to address forensics in the context of settlement and remediation; and investigative challenges such as encryption, BYOD policies, cloud based repositories, evidence eliminators and secure communication apps. Finally, the program will touch on technical solutions for protecting sensitive data. The content is highly relevant to in-house counsel as well as outside counsel dealing with theft of IP issues.
Moderator: Angelique Kaounis
Speaker: Mark Clews
As a Managing Director in Navigant's Legal Technology Solutions practice, Mark Clews has over 17 years’ experience providing expert advice to law firms and large corporations in relation to complex litigation proceedings. Mark specializes in the preservation and investigation of electronic evidence from digital devices, the interrogation of complex data sets and the end to end management of large scale electronic discovery projects. He has led investigations and electronic discovery projects on behalf of law firms, large corporations, regulators and federal agencies both in the European Union and the United States.
Monday, November 20, 2017, 12 noon - 1 p.m.
Presented by the International and Trademark Interest Groups
This webinar will focus on what attorneys need to know to effectively protect their clients’ trademarks in Canada. The program will begin with a discussion of the most significant differences between US and Canadian trademark practice (and trademark law) and include prosecution tips and situations where Americans are given preferential treatment by the Canadian Trademarks Office. The program will conclude with a summary of key changes under Canada’s impending new trademark law and important takeaways for US clients.
Moderator: David Tseng
Speaker: Philip Lapin
Philip Lapin is recognized as one of Canada's leading trademark lawyers, and is the chair of the firm's Trademark Practice Group. With more than 20 years of experience, Philip is responsible for managing and providing strategic advice concerning the trademark portfolios for many Canadian and multinational corporations.
Philip has handled the clearance, prosecution and registration of thousands of trademarks, and has particular expertise in trademark opposition and cancellation proceedings before the Trademarks Office.
In addition, Philip files, prosecutes and advises clients with respect to all aspects of Canadian industrial design law and practice.
Philip is the author of the "CANADA" section of the INTA Country Guides.
Philip was an adjunct professor at the University of Ottawa's engineering school for many years, teaching trademark law to non-lawyers. Philip is also a frequent speaker and author on a wide variety of trademark-related topics.
Philip was awarded the Marie F. Morency prize for obtaining the highest mark in Canada on the patent drafting examination.
On October 18, 2017, consistent with Executive Order 13777, “Enforcing the Regulatory Reform Agenda,” and Executive Order 13771, “Reducing Regulation and Controlling Regulatory Costs,” the PTO proposed rules to revises the regulations concerning trademark interferences codified at 37 CFR 2.91-2.93, 2.96, and 2.98. The goal is to identify and propose regulations for removal, modification, and streamlining that are outdated, unnecessary, ineffective, costly, or unduly burdensome.
The notice of proposed rulemaking published in the Federal Register (82 Fed. Reg. 48469). Written comments must be received on or before November 17, 2017. For instructions on how to submit comments, see the Federal Register notice. https://www.federalregister.gov/documents/2017/10/18/2017-22394/removal-of-rules-governing-trademark-interferences
The United States Copyright Office is proposing to create a new group registration option for a limited number of unpublished works. The proposed rule would replace the current “unpublished collections” registration option. Among other things, applicants would be required to submit an online application and upload their works to the electronic registration system, although the Office may waive these requirements in exceptional cases.
The proposed rule offers a number of significant benefits compared to current practices: it would allow the Office to more easily examine each work for copyrightable authorship, to create a more robust record of the claim, and to improve the overall efficiency of the registration process.
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 13, 2017, at 11:59 p.m. Eastern time.
The U.S. Copyright Office has submitted a letter to Congress reporting the results of the Office’s public inquiry on establishing a pilot program to facilitate the mass digitization of books and other copyrighted works. The inquiry followed the June 2015 publication of the Office’s report on Orphan Works and Mass Digitization, which proposed extended collective licensing (ECL) as a means of enabling the large-scale clearance of rights necessary for such projects. Because the United States lacks experience with such a system, the report recommended that ECL initially take the form of a limited pilot program. In addition, noting that stakeholder support is essential for ECL to succeed, the Office published a Federal Register notice inviting public input on the appropriate structure and operation of a pilot program. In response, the Office received more than eighty written comments from a wide range of interested parties.
In its letter, the Office reports that the comments indicate an overall lack of stakeholder consensus on key elements of an ECL pilot program. Therefore, the Office concludes that the submission of proposed legislation to Congress would be premature at this time. The Office, however, continues to believe that ECL offers a viable solution for mass digitization projects and stands ready to assist stakeholders in developing consensus-based legislation should Congress wish to pursue further discussion in this area.
The letter, public comments, and background material are available on the Copyright Office website at https://www.copyright.gov/policy/massdigitization/.
By Matt Neco
The Internet Archive has begun to digitally reproduce and distribute for free certain print publications first published between the years 1923-1941, even though such publications might not be in the public domain and might otherwise be subject to copyright. It is doing so pursuant to 17 U.S.C. Section 108(h) which allows for non-profit libraries and archives to reproduce, distribute, display and publicly perform a work if it meets the criteria of: a published work in the last twenty years of copyright, and after conducting a reasonable investigation, no commercial exploitation or copy at a reasonable price could be found. This provision was enacted at the same time as the Sonny Bono Copyright Term Extension Act. The Internet Archive has stated that the collection has been named The Sonny Bono Memorial Collection to acknowledge this valuable exemption specifically granted to libraries that was put into the law. (See also, this Copyright Office Notice from October 2013.)