ABA-IPL eNews December 2023

IPLSPRING – 2024 ABA-IPL Section Annual Meeting

April 17-19, 2024
Marriott Bethesda North Hotel
Rockville, MD

Registration is Now Open

Registration is now open for IPLSPRING-- a conference you will not want to miss. Visit our Conference webpage to view the program agenda, register and link to information on reserving your hotel accommodations.

At IPLSPRING, you can learn the latest developments in intellectual property law. The conference will provide two full days of CLE programming, networking events, business meetings, and more! 

CLE program topics will feature:

• IP Ethics Update at the USPTO
• Ethical Use of AI Tools in Trademark Practices
• Mock Presentation of Damages in an Intellectual Property Case
• Considerations for Patent Litigation in High-Tech Products
• A Comparative Approach to Protect Intangible-Electronic Items Through Designs
• Copyright Roundup
• Deep Fakes, Copyright and the Right of Publicity
• Understanding the Intellectual Property Landscape in Latin America
• Cultural and Social Responsibility in Trademark and Branding
• First Amendment Implications of Trademark Registrations
• Safeguarding Brands Beyond Borders
• Practical Drafting Tips Following Amgen v. Sanofi: Is 112(f) the Answer?
• Tips for Navigating AIA Trials
• Trade Secret Hot Topics
• Copyright Office Speaks
• Patenting Inventions When AI Is Involved. 

The conference will also feature a special plenary “Trademark Trial and Appeal Board Judges’ Panel” in addition to plenaries focusing on “Cell-Based and Alternative Proteins – The Future of Food” and “Ethical Issues in AI: What Every IP Lawyer Needs to Know About Artificial Intelligence in the Practice of Law.”

In addition to the outstanding and comprehensive array of educational programs, the conference will feature luncheons with informative guest speakers. The Mark T. Banner Award will be presented at the luncheon on Thursday, April 18, and The Honorable Leonard P. Stark, Circuit Judge of the United States Court of Appeals for the Federal Circuit, will deliver remarks at our keynote luncheon on Friday, April 19.

Register for IPLSPRING today!

Sponsors are invited to participate in the conference. Maximize the advantages of sponsorship by signing up now to be included on IPLSPRING marketing and publicity outreach. For more information, contact Christopher Meacham, at [email protected].

The ABA Section of Intellectual Property Law
is proud to announce the
2024 Mark T. Banner Award Honoree 

Professor Mark A. Lemley

Mark A. Lemley biography

Join us for the 2024 Mark T. Banner Award Presentation at IPLSPRING

Thursday, April 18, 2024
Bethesda North Marriott Hotel
North Bethesda, MD

The Mark T. Banner Award, established in honor of the late Mark T. Banner, former ABA-IPL Section Chair, is presented to an individual or individuals who have made an impact on IP law and/or practice. Winners of this award have expressed a clear passion and enthusiasm for, and advanced the practice, profession and/or substance of IP law through extraordinary contributions to, among, other things, teaching, scholarship, innovation, legislation, advocacy, bar or other association activities, or the judiciary. Learn more about the Mark T. Banner Award. 

2024 Judicial Intern Opportunity Program Applications Now Open

The Judicial Intern Opportunity Program (JIOP) is a summer internship program open to all first- and second-year underrepresented law students. Selected students intern for six weeks or more during the summer with a participating state or federal judge. The program offers a $2,000 award to each selected student. Students can also elect law school credit.

We begin accepting Summer 2024 applications for all students on November 6, 2023. The deadline for applying is January 12, 2024. Last year, we offered internships to 159 law students representing 80 different law schools in locations throughout the country. Our goal is to place 160 students during Summer 2024.

Please see our program information, including a program description and frequently asked questions for more details. The program application and detailed program information is available on the JIOP website. Applications are only accepted electronically through the JIOP website. Contact JIOP Program Director Gail Howard with additional questions.

Donate to the Judicial Intern Opportunity Program (JIOP)

Your donation to the Judicial Internship Opportunity Program (JIOP) helps ensure that funding is available for students who are members of racial and ethnic groups, and others that are traditionally underrepresented in the profession, including students with disabilities, students who are economically disadvantaged, students who identify as LGBT, women, and veterans.

The JIOP IP program continues to grow with 28 judges requesting students with background or interest in intellectual property law. 130 of the 770 applicants showed interest with 58 of those students attaching additional background and statements supporting their experience. We placed a total of 32 IP students.

All ABA-IPL Section members are encouraged to show their support and donate to the Judicial Internship Opportunity Program.

Chair-Elect invites self nominations for leadership positions

Section Chair-Elect Susan McGahan is seeking recommendations for appointments to committee and division leadership positions, and liaison positions for 2024-25. Section members are invited to nominate themselves or a colleague within the Section to join the Section’s leadership ranks. The work of the Section—and, thus, much of the value of Section membership—comes from volunteering to serve as a member or a leader of one of the Section’s committees or boards, or as a liaison to another entity within the ABA or other external organization.

The Section brings together in a single entity the largest and most influential collection of intellectual property lawyers in the world. Participation in a leadership position will enable you to contribute to the evolution of IP law, to develop lasting relationships with others in the field that can lead to professional engagements, and to gain practice knowledge and insights that are unavailable elsewhere.

To volunteer or make a recommendation for a leadership position, complete the online recommendation form.

CLE and Ski at the IP CLE Conference, Jan 7-10, 2024, in Snowmass 

The ABA Section of Intellectual Property Law is happy to co-sponsor the IP CLE Conference, January 7-10, 2024 at the Viewline Resort in Snowmass, Colorado. Expert speakers in patent, trademark and copyright law will provide engaging presentations.

Participants will get a deep dive into the hottest topics, including:

• Artificial Intelligence and IP
• Developments in Copyright Law
• Developments in Right of Publicity Law
• Developments at the US Trademark Office
• Developments in Trademark Prosecution
• Developments in Trademark Litigation
• An Ethical Early Evening at the Movies: Education, Entertainment, and Prizes
• Developments in Internet Law
• Surveys in Trademark and Advertising Litigation
• Developments in Advertising Law
• Featured Presentation: Update from the USPTO
• Strategic Considerations: Protecting Inventive Assets
• Competitive and Unexpected Infringement Challenges: Safeguarding Your Latest Product
• Patent Prosecution: Hot Topics and Best Practices
• 2023 Case Law Review and a Forward Look at AI and Patents
• The Interplay Between IPRs and Other PTAB Trial Proceedings and Litigation: Strategy and Lessons
• In-House Perspectives on Pressing Legal Issues
• A Dialogue Between Bench and Bar

In addition, two hours of programming for ethics credit will be offered.

Participants will have ample time to ski, snowboard, shop, relax, or explore the winter wonderland of Snowmass and Aspen, and enjoy the stunning mountain surroundings. Every day will begin with breakfast. Hearty après ski snacks will be provided in the afternoon.

Participants can earn MCLE credit, make connections, and broaden their knowledge. Visit the IP CLE Conference website to learn more and to register.

2024-25 Young Lawyer Fellows Program

Applications now open

Applications now open for the 2024-25 Young Lawyer Fellows Program

The ABA-IPL Section will select three fellows for two-year terms from applicants with proven achievement, participation, excellence, and commitment. The goal of the ABA-IPL Young Lawyer Fellows Program is to develop future leadership and encourage diversity in the Section. Fellows are encouraged to attend Section meetings and are expected to work within areas such as ABA-IPL Action groups, Boards, and Committees. Fellows also promote diversity and membership, as they continue to develop leadership skills and responsibilities in the Section. Participants in the ABA-IPL Fellows Program are funded to attend select Section conferences during their years in the program.

Applicant Criteria:

• Member of the ABA and ABA-IPL Section (by time of appointment to Fellows Program)
• Lawyer, age 33 or younger, or less than two years after the date you were first admitted to practice.

Previous demonstration of leadership qualities and commitment in such areas as:

• Work in the ABA-IPL Section
• Work in other bar associations and organizations
• Diversity initiatives
• Professional pro bono activities
• Outstanding academic and or professional achievement

Applications are now being accepted. Visit the Young Lawyer Fellows Program page on the Section website for the application form. Resumes and completed applications are due by January 14, 2024.

Stay Connected…

ABA-IPL Action Groups

Access leadership opportunities and amplify your voice by joining and becoming involved in one of the ABA-IPL Section Action Groups. Engage with your peers in one or more Action Groups for immediate networking and leadership opportunities.

Section Action Groups include:

• Women in IP Law Action Group
• Diversity Action Group
• Young Lawyers Action Group
• Law Student Action Group
• International Action Group

Connect with ABA-IPL Ambassadors

Discover how Section leaders received more from ABA-IPL membership on our Ambassador page. The featured testimonies provide insights on how ABA-IPL members strengthened their intellectual property (IP) network and made an impact through ABA-IPL Action Groups and Committees. Each action group and committee has a corresponding community on IPL Connect, where Section members can network and engage in lively discussions. Whether you’re interested in receiving updates on the latest in IP law or getting involved in key IP policy decisions—committee and action group involvement offers opportunities to learn, connect, and/or present.

Learn more about how to maximize your ABA-IPL membership.

Donate to the Foundation for Advancement of Diversity in IP Law

ABA-IPL Section members are encouraged to donate to the Foundation for Advancement of Diversity in IP Law (“the Foundation” or “FADIPL”) to help support its mission.

The Foundation’s mission is to offer career preparation, career readiness, and career-advancement support to individuals who identify as members of racial and ethnic groups underrepresented in the intellectual property law profession in the United States.

The Foundation’s programs work toward:

• Recruiting individuals who identify as members of racial and ethnic groups underrepresented in the IP law profession to consider exploring careers in patent law and other areas of IP law.
• Providing career preparation and career-readiness support, as well as financial support, to individuals identified as members of racial and ethnic groups underrepresented in the IP law profession who demonstrate an interest in a career in IP law.
• Accelerating the development of a more diverse IP professional community through networking, counseling, and mentoring efforts aimed at fostering career advancement of individuals identifying as members of racial and ethnic groups underrepresented in the IP law profession in the United States.

Individuals interested in donating can visit the FADIPL support page.

Section Advocacy

Comments to the USPTO on review of decisions within the Patent Trial and Appeal Board

On November 27, the Section sent a letter to the USPTO Patent Trial and Appeal Board in response to the Notice of Proposed Rulemaking on “Rules Governing Pre-Issuance Internal Circulation and Review of Decisions Within the Patent Trial and Appeal Board”  The letter noted that the Section encourages a strong patent system to incentivize innovators to invent and patent owners to invest resources in developing their inventions into new products and technologies. The Section has long-standing policy supporting patent operations changes leading to greater efficiency, consistency, and confidence in the United States patent system. The Section also recognizes the balance between preventing harassment of patent owners, the need for inventors, investors and the public to be confident in an issued U.S. patent, and the need to provide an efficient forum through which a petitioner can challenge the patentability of issued claims as authorized by the AIA. The Section offered several recommendations and comments on the proposed rules. The full letter to the USPTO can be found on the Section website’s advocacy page.

Comments to the U.S. Senate Judiciary Subcommittee on Intellectual Property regarding the SHOP SAFE Act of 2023

On November 27, the Section sent a letter to Senator Coons, Chair and Senator Tillis, Ranking Member, of the U.S. Senate Judiciary Subcommittee on Intellectual Property regarding the SHOP SAFE Act of 2023. The Section commended the introduction of the SHOP SAFE Act of 2023, which addresses not only the critically important needs of protecting American consumers who purchase goods from e-commerce platforms and the trademarks that may be infringed through those sales, but also many of the concerns expressed in the Section’s July 6, 2021, letter to the Committee regarding the proposed SHOP SAFE Act of 2021. To adequately measure success, the Section suggested that the legislation be amended to require annual reporting from relevant government agencies and e-commerce platforms regarding the impact of the SHOP SAFE Act on third party sales of counterfeit goods on e-commerce platforms. The full letter can be found on the Section website’s advocacy page.

ABA-IPL webinars are free to Section members

All IPL Section webinars are free to Section members through August 31, 2024. Register and participate.

ABA-IPL provides compelling CLE-accredited webinars that cover a broad range of IP issues. Mark your calendars for these upcoming programs. Watch the events page on the Section website for information on all upcoming events, and details on how to register.

January 9, 2024

Confidentiality Agreements in View of Federal and State Initiatives on Competition

Implementing the White House's efforts to open labor markets and address abuse of market dominance, the Federal Trade Commission negotiated consent orders against several companies' use of non-compete agreements and has proposed to promulgate a nationwide prohibition of employee non-competition agreements. The panel will examine the bases for enforceability of "confidentiality agreements," both express and implied, both in the employment context and business contexts including joint development agreements.

• Stephen Y. Chow, Stephen Y. Chow, PC, Boston. Massachusetts
• Kim R. Jessum, Heraeus Incorporated, Philadelphia, Pennsylvania
• Prof. Sharon K. Sandeen, Mitchell Hamline School of Law, Saint Paul. Minnesota
• Bridget A. Smith, Relativity Space, Long Beach, California 

January 31, 2024

Demystifying the Patent Cooperation Treaty

The purpose of this webinar is to demystify the Patent Cooperation Treaty (PCT) and help participants become better PCT practitioners. Based on the presenters' own experience and drawing from their recently released ABA-IPL publication, The Practitioner's Guide to the PCT, the webinar will take participants through the various stages of the PCT process, with examples, strategies, tips on avoiding pitfalls, and the questions that need to be addressed to move from one stage to the next.

• Jay Erstling, Minneapolis, Minnesota
• Megan Miller, Winthrop & Weinstine PA, Minneapolis, Minnesota

Mark your calendars for these upcoming ABA-IPL webinars. Registration details will be available soon.

• Landslide Magazine Webinar: Understanding Copyright Fair Use and Transformative Use After Recent Cases, Tuesday, January 23
• The Role of Consumer Surveys in IP Litigation, Tuesday, March 12
• Landslide Magazine Webinar, Tuesday, April 23, 2024
• Landslide Magazine Webinar, Tuesday, July 23, 2024

ABA-IPL Divisions and Committees for 2023-2024

All Section members are encouraged to review the committees and select and join those on which they wish to serve, and which are of interest to them. If you are already a member of one of the existing committees, you are carried over as a member in the new association year.

Patents Division

• Patent Legislation Committee [join]
• International Patent Laws Committee [join]
• USPTO Ex Parte Patent and Policy Practice [join]
• USPTO Post Grant Patent Practice and Policy Committee [join]
• Chemical and Life Science Patent Committee [join]
• Patent Litigation Committee [join]
• Patent System Planning Committee [join]
• High Tech and Software Patent Committee [join]

Trademarks Division

• Trademark Legislation Committee [join]
• International Trademark Laws Committee [join]
• USPTO Trademark Practice and Policy Committee [join]
• Trademark Litigation Committee [join]
• Trademarks and the Internet Committee [join]
• Advertising and Marketing Law Committee [join]

Copyrights Division

• Copyright Legislation Committee [join]
• International Copyright Laws Committee [join]
• Copyright Office Affairs Committee [join]
• Visual Arts and Dramatic Works Committee [join]
• Copyright and Social Media Committee [join]
• Copyright and Emerging Technology Committee [join]
• Music and Performing Arts Committee [join]
• Copyright Litigation Committee [join]
• Literary Works Committee [join]

Specialized IP Law Division

• Alternative Dispute Resolution Committee [join]
• Antitrust Interface Committee [join]
• Trade Secrets and Interferences with Contracts Committee [join]
• Design Rights Committee [join]
• Privacy and Publicity Rights Committee [join]
• Digital Games and New Media Committee [join]
• Information Technology Committee [join]
• Fashion Committee [join]

Professional Issues Division

• Law Practice Management Committee [join]
• Pro Bono Committee [join]
• Ethics and Professional Responsibility Committee [join]
• Attorney Wellness Committee [join]

Business and Trade Division

• IP Transactions and Licensing Committee [join]
• International Trade Commission Committee [join]
• China IP Issues Committee [join]
• Government IP Rights Committee [join]
• Monetization and Valuation of IP Committee [join]
• In-House IP Committee [join]
• Anti-Counterfeiting and Piracy Committee [join]

Become a Voting Committee Member for 2023-2024

Take advantage of an opportunity to participate in developing Section policy and sign up as a voting member of your committee. Voting members will be asked to study the policy issues of the committee and vote on the reports in a timely and responsive manner. Any lawyer member of a committee is welcome to sign up to be a voting member of the committee.

Committee members who choose not to enroll as a voting member can still participate in all other committee activities and receive any committee updates and information.

Details of Committee Voting Membership:

• Committee members may sign up throughout the entire year. Once a committee begins deliberations on a particular resolution, no new voting members will be allowed to subscribe for the purpose of voting on that particular resolution. The committee chair determines the date on which deliberations have begun.

• Members may opt out of being a voting member at any time by notifying the Committee Chair. Those opting out of voting membership will still retain their membership in the committee.

• A valid vote on a committee resolution will consist of a majority of a quorum of the voting committee members. There is no upper limit, nor lower limit to the number of people who may subscribe to be voting members on a particular committee.

• Only lawyer members of the committee are eligible to be become voting members of the committee.

• Voting members will receive a communication from the Committee Chair once voting begins, requesting a vote by a date-certain. Voting members not submitting a vote by a requested date for two successive resolution vote calls will revert to regular membership of the committee, and will need to re-subscribe as a voting member.

• The committee rosters, including the roster of voting committee members, will roll over to subsequent years. There is no need to re-subscribe as a voting committee member with each new Association year.
• Voting members who do not vote two times in a row will be removed from the voting member roster.

Please remember to notify the ABA if your email address changes by logging in to your “myABA” page on the ABA website or calling the ABA Member Service Center at (800) 285-2221.

Topic Suggestions?

We welcome your feedback on topics you would like to see covered in E-News.  Please email Mike Winkler at [email protected] with your suggestions.  

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What Is A Patent 4th Edition

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Fourth editions of this popular series for you and your clients.

What is a Copyright, Fourth Edition

What Is a Trademark, Fourth Edition

A Comprehensive Patent Practice Form Book

The Practitioner's Guide to the PCT (Second Edition)

Patent Claim Drafting Practice: Tactics, Strategy, and Analysis

The Practitioners Guide to Trials Before the Patent Trial and Appeal Board, Third Edition

Pre-ANDA Litigation: Strategies and Tactics for Developing a Drug Product and Patent Portfolio, Third Edition

What is a Copyright: Fourth Edition

Trademark and Deceptive Advertising Surveys: Law, Science, and Design, Second Edition

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Put your ABA Membership to work by displaying the new ABA Member Logo to signify your commitment to excellence in the practice of law.

As an ABA Member in good standing, you are encouraged to use this distinguished mark in professional activities to set yourself apart from non-member practitioners in the marketplace.

The ABA Member Logo may appear on:

• Business cards
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Start Using the New ABA Member Logo Today!

Be sure to stay connected!

Does the ABA have your email address?

You may be missing out on important e-mailings from both the ABA and the ABA Section of Intellectual Property Law. Please be sure your email address is on file and up-to-date!

By phone: ABA Member Services at 1.800.285.2221 between 7:30 a.m. and 5:30 p.m., CST

By USPS: ABA Membership Services, 321 North Clark Street, Chicago, IL 60654-7598

By e-mail: [email protected]. or go to ABA "contact us” link.

Online: (1) Go to the ABA homepage ( www.americanbar.org), (2) Login, (3) Locate MyABA link (top left of the page), (4) EDIT within the profile module, and (5) update email address .

Section Officers:

CHAIR
Steven P. Caltrider
Eli Lilly and Company
Indianapolis, IN

CHAIR-ELECT 
Susan E. McGahan
AT&T
Bedminster, NJ

VICE-CHAIR
Robert Lytle
Microsoft
Redmond, WA

SECRETARY
Joshua Simmons
Kirkland & Ellis
New York, NY

FINANCIAL OFFICER
Paul Morico
Baker Botts LLP
Houston, TX

FINANCIAL OFFICER-ELECT
Richard Stockton
Banner & Witcoff, Ltd.
Chicago, IL

REVENUE OFFICER
Tammy Pennington-Rhodes
Wenderoth, Lind & Ponack, LLP
Washington, DC

MEMBERSHIP OFFICER
Sharon A. Israel
Shook, Hardy & Bacon LLP
Houston, TX

DIVERSITY OFFICER
Nicole D. Galli
ND Galli Law LLC
Philadelphia, PA

PUBLICATIONS OFFICER
Adrienne R. Fields
The Law Offices of Adrienne R. Fields
New York, NY

CLE OFFICER
Janet Hendrickson
Stinson LLP
St. Louis, MO

SECTION DELEGATES TO
THE HOUSE OF DELEGATES

William L. LaFuze (2024)
McKool Smith
Houston, TX

Lisa A. Dunner (2025)
Dunner Law PLLC
Washington, DC

Adriana Suringa Luedke (2026)
Lockheed Martin Corporation
Bethesda, MD

IMMEDIATE PAST CHAIR
Thad Chaloemtiarana
Pattishall
Chicago, IL

Contact Us:

ABA Section of Intellectual Property Law
312.988.6254
[email protected]
www.americanbar.org/iplaw