November 8-9, 2018
Fairmont, San Jose
170 S. Market
The Annual IP Institute, "State of the Art – Creativity and Innovation in the Arts and Sciences," will be held at the beautiful Fairmont, San Jose on November 8th and 9th, 2018, with a welcome reception the evening of November 7, 2018.
The conference will cover a wide range of cutting-edge and compelling presentations on trademark, copyright, patent, privacy, trade secret, and internet law, as well as practical sessions and IP-specific ethics, competence, and elimination of bias panels. The event will also feature the always popular Annual Vanguard Awards luncheon celebrating pioneers in our field in a festive atmosphere.
We hope to see you there! Watch your inboxes, future editions of Inevitable Disclosures, and our website for more information!
Nominations for the 2018 Vanguard Awards are now being accepted - Deadline of July 1, 2018! Achievements are honored in the following categories:
The full criteria and information about past honorees are available at IP Vanguard Awards. Please submit your nominations for the 2018
IP Vanguard Awards by
July 1, 2018, using the 2018 Nomination Form.
Wednesday, July 11, 2018, 12 noon
To participate in the meeting, the dial-in number is (855) 520-7605, passcode 1211276419#.
Monthly “All Hands” Technology, Internet & Privacy IG conference call. Guest speaker and monthly topic TBD. In addition, we’ll discuss upcoming webinars and conferences, opportunities for members to get involved and Hot Topics.
Please note: Our monthly calls are the 2nd Wednesday of every month.
Friday, July 13, 2018, 12 noon
To participate in the meeting, the dial-in number is 855-520-7605, passcode 1211276419#.
Monthly "All Hands" Licensing IG conference call. Ryan Long will discuss blockchain, cryptocurrency, smart contracts and related topics. In addition, we'll discuss upcoming programs, opportunities for members to get involved, and Hot Topics.
Please note: Our monthly calls are the 2nd Friday of every month.
Tuesday, July 17, 2018, 12 noon
Monthly Entertainment and Sports Interest Group conference call. In addition to our monthly mini-presentation (or hypothetical), we will discuss upcoming webinars and conferences, opportunities for members to get involved, and Hot Topics.
Please note: Our monthly calls are the 3rd Tuesday of every month.
Tuesday, July 17, 2018, 12 noon - 1 p.m.
This program offers 1 MCLE credit.
More than half of original patent applications filed in the USPTO are related, through various priority claims, to applications that are filed in other IP offices worldwide. Each of these offices have historically worked asynchronously and without regard to the examination efforts in other offices. Recent efforts to change this have led to passive work sharing programs such as the Patent Prosecution Highway (PPH) and the Global Dossier (GD) system in which prior work products are used in later examination. The latest efforts to change the examination paradigm have led to synchronous examination in multiple offices – true collaboration on searching an invention – before decisions are made by the respective examiners. This will hopefully lead to greater consistency between offices and more certainty in the outcome. This presentation will provide details on the various programs and how to use them. Speaker: Daniel Hunter Moderator: Sanjesh Sharma
Daniel Hunter graduated from Penn State in 1982 with a Bachelors of Science in Engineering Science. Following graduation, he was commissioned in the US Navy and taught at the Naval Nuclear Power School, and toured on the aircraft carrier USS America. In 1990, he received his Masters of Science in Electrical Engineering (Space Systems Engineering) from the Naval Postgraduate School. In 1993, he joined the USPTO as a patent examiner, and became a Supervisory Patent Examiner in wireless communications in 1999. He has been designated as the subject matter expert on patent operations and patent data. Serving as a senior advisor in the Office for the Commissioner of Patents, focusing on patent prosecution issues and on improving the patent examination processes, he developed the business architecture for the PTO’s organization and is responsible for developing and maintaining the activities of the Patent’s ABI cost model. Currently, the Director for International Work Sharing, Planning, and Implementation in the Office of International Patent Cooperation, Mr. Hunter is responsible for the development and operation of the Collaborative Search Program (CSP), the PCT Search and Examination Pilot (PCT CS&E), and Patent Prosecution Highway (PPH) program.
Sanjesh Sharma is Senior IP Counsel at Johnson & Johnson Surgical Vision, where she manages all aspects of patent, trademark, and copyright matters for the company’s Refractive and Laser Cataract Surgical Equipment portfolios, including domestic and international patent filings and prosecution, opposition practice, freedom to operate clearances, licensing, due diligence for acquisitions and technology transactions, and litigation support. She is a member of the Executive Committee and Chair of the Patent Interest Group for the California Lawyers Association’s IP Section. Ms. Sharma has served as an officer of the Patent Interest Group since 2013.
Tuesday, July 24, 2018, 12 noon - 1 p.m.
This program offers 1 participatory MCLE credit.
The presentation will provide a brief overview of the Madrid system, navigating the international application filing process, information on the USPTO review process for the certification of the international application, procedures to follow if the international application is denied, the role of the International Bureau (IB) in reviewing the international application, and issuing an international registration. The webinar will cover the roles and procedures of the USPTO and the IB if a notice of irregularity issues with regard to the goods/services. The speaker will also address procedures for changing, correcting, and renewing the international registration. Speaker: Karen M. Strzyz. Moderator: Carole Barrett.
Karen Strzyz is an attorney in the Office of the Deputy Commissioner and is the primary legal advisor to the Madrid Processing Unit at the USPTO. Ms. Strzyz ensures that the United States is in compliance with the treaty obligations under the Madrid Protocol, and is a frequent speaker on Madrid practice and procedure. She also decides Petitions to the Director and Letters of Protest. Ms. Strzyz joined the USPTO as an examining attorney in 1996, joined operations management in 2003 as a Senior Attorney Advisor, and in 2007 was promoted to Managing Attorney. In 2012, Ms. Strzyz joined the Office of the Deputy Commissioner. She is a graduate of State University of New York at Buffalo and Western New England College School of Law.
The Defend Trade Secrets Act Supplement to TRADE SECRET LITIGATION AND PROTECTION IN CALIFORNIA is now available for purchase in the Section’s bookstore. This Supplement includes additional practical tips and strategies related to the DTSA, and addresses:
The price is $25 for members and $30 for non-members.
The Copyright Office is proposing a new fee schedule which will result in increased fees for registration, recordation, record retrieval, search, certification, and other ancillary services. The commenting period will be open until July 23. The Office will review
and consider public comments and issue a final rule later this year. The new fee schedule will go into effect 120 days after publication of the final rule, unless Congress passes a law stating that it does not approve the fee schedule. For more information,
The United States Copyright Office is extending the deadline for the submission of written comments in response to a notice of proposed rulemaking that recommends the adoption of a new fee schedule with proposed changes to fees for services in the following areas: registration; recordation; record retrieval, search, and certification; the Licensing Division; and other ancillary services. The Office is extending the deadline by an additional sixty days to ensure that members of the public have sufficient time to respond. Written comments must be received no later than September 21, 2018, at 11:59 p.m. eastern time.
Please provide a short bio (250 words max) that includes the member’s professional information and something personal (hobbies, interests, something unique about the member, a “fun fact,” etc.), a picture, and the member’s contact information. Please also have the member answer the following question: What is the most important skill you believe an IP attorney should have? Please send all submissions to Erica Bristol, at email@example.com.
Member Spotlight materials may also be posted in IP Section social media. If submitting on behalf of a member, you must obtain that member’s permission. Selection of member for Section Member Spotlight, posting dates, selected publications/social media, and editing are at the IP Section’s sole discretion.
For more information, click here.
Silicon Valley USPTO
Hear from a Patent Trial and Appeal Board Judge and a Supervisory Patent Examiner from the Central Re-Examination Unit about options available for challenging an issued patent before the U.S. Patent and Trademark Office (USPTO).
Registration is now open for Stakeholder Training on Examination Practice and Procedure (STEPP) Agent/Attorney 3-Day Course in July.
IP Section CLE Webinars and Conferences Available On Demand or as Downloadable Podcasts*
Did you miss a live IP Section webinar or conference? Listen to recordings of past programs as streaming webinars or downloaded podcasts, and receive the materials and your CLE certificate of attendance. To see what's available, click here and select Intellectual Property Law Section.
Original Program Date: April 26, 2018
Presented by the Technology, Internet & Privacy Interest Group
The Federal Trade Commission is paying increased attention to social media influencer marketing. After a series of warnings, the FTC has begun enforcement actions against influencers and their advertisers. What do influencers need to do to avoid falling into the FTC’s crosshairs?
Click here to buy a license now.
Original Program Date: April 10, 2018
Presented by the Litigation Interest Group
Social media and digital marketing has changed the playbook for consumer packaged goods (CPG) companies to become successful and thrive. As counsel for these clients, you need to be dynamic and develop trademark strategies that not only addresses current, but also future, needs. This webinar will discuss various strategies to manage the obligations of this role, including: discussions to have with your client when creating their brand; developing a comprehensive trademark strategy; and effective use and monitoring of trademark and social media platforms.
Speakers: Allison Roseman Hagey, Rebecca Horton
Original Program Date: March 27, 2018
Presented by the In-House Counsel Interest Group
The recent wave of high-profile allegations stemming from the #metoo movement shows no sign of relenting, requiring employers to address their own internal policies related to workplace complaints. Just as important as developing anti-harassment and discrimination policies is establishing company procedures for investigating employee complaints. Promptly and effectively investigating and remediating employment claims is required of California employers and should mitigate potential damages. Join employment attorney and seasoned investigator Lisa Ryan in this one-hour webinar that will address best practices for workplace investigations, including WHEN to investigate, WHO should investigate and HOW to conduct and conclude an investigation.
Speaker: Lisa Ryan
*Many recordings of webinars and conferences are available within a few weeks of when they were presented live. Not every program is available as a downloadable podcast. Some in-person programs are audio-video. Account registration and device with internet connection required.IP Section CLE Webinars and Conferences Available On Demand or as Downloadable Podcasts*
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 Matt Neco. Note our new email address. Please add us to your trusted email addresses to ensure you keep receiving communications from the California Lawyers Association, the new home of the IP Section.