ABA-IPL eNews January 2024

IPLSPRING – 2024 ABA-IPL Section Annual Meeting

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

Registration is Now Open

Registration is open for IPLSPRING, April 17-19, 2024. Visit the Section website for complete program and information.

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, attorney wellness activity, and more! 

CLE program topics will feature:

• IP Ethics Update at the USPTO
• AI’s Role and Key Ethical Considerations for Trademark Professionals 
• Patentability of AI-Assisted and AI-Generated Inventions 
• Considerations for Patent Litigation in High-Tech Products
• Unified Patent Court – The First Year
• Avoiding Branding Pitfalls
• 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
• Daubert-Proofing Your Lanham Act Survey 
• Practical Drafting Tips Following Amgen v. Sanofi
• Tips for Navigating AIA Trials
• Trade Secret Hot Topics
• Copyright Office Speaks

The conference will also feature a special plenary Trademark Trial and Appeal Board judges’ panel and the plenaries “Cell-Based and Alternative Proteins – The Future of Food” and “AI Ethical Competency.”

View the complete program and speaker roster on the meeting website

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 today for IPLSPRING, April 17-19, 2024!

ABA-IPL gratefully acknowledges the sponsors who have already committed to sponsoring the meeting.

Platinum Level

• Barnes and Thornburg LLP
• King and Spalding
• McAndrews, Held & Malloy, Ltd.
• Round Table Group

Gold Level

• Chang Tsi Partners
• Fish & Richardson P.C.
• Kilpatrick Townsend & Stockton LLP
• Rothwell, Figg, Ernst & Manbeck, P.C.
• Stout IP

Event Sponsors

• Baker Botts L.L.P.
• Taft Stettinius & Hollister LLP

Exhibitor Level

• Anaqua
• Esi
• Exponent
• Sun IP  

Corporate Sponsor

• Microsoft

We are still accepting commitments for sponsorships and invite you to contact Christopher Meacham, at [email protected] for more information. 

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. 

In Memory of Jonathan Hudis

Jonathan Hudis, a long time active leader within the ABA Section of Intellectual Property Law, and respected Administrative Trademark Judge for the USPTO Trademark Trial and Appeal Board, passed away on January 4, 2024. He leaves behind a legacy of dedication to the field of intellectual property law.

Jonathan served as ABA-IPL Continuing Legal Education Officer and Chair of the CLE Board for three years and also served as Vice Chair of the CLE Board for one year before being elected CLE Officer. He served as a member of the Section Council. He was a member of the Sponsorship Committee for three years. He served as Chair of the Trademarks and Unfair Competition Division, and also as Vice Chair of that Division prior to that. He was Chair of the Section’s Federal Trademark Legislation Committee. Jonathan also served as a member of the Content Advisory Board and the Books Editorial Board. In 2018, he was nominated to be elected as Vice Chair of the ABA-IPL Section for the 2019-2020 association year, but had to decline after being offered the position as an administrative trademark judge with the USPTO Trademark Trial and Appeal Board. Jonathan was editor-in-chief of the inaugural edition of ABA-IPL’s, A Legal Strategist’s Guide to Trademark Trial and Appeal Board Practice. He was also a founding member of the Section’s Books Editorial Board.

Funeral services were held in New Jersey on Sunday, January 7, 2024. Jonathan is survived by his wife Betsey and sons Aron Samuel and Justin Caeleb.

Contributions in Jonathan's memory can be made to Autistic Self Advocacy Network (https://autisticadvocacy.org/) or to United States Holocaust Memorial Museum (https://www.ushmm.org).

Section Launches Inaugural Solutions for IP Legal Professionals Webinar Series

ABA-IPL will conduct an inaugural “Solutions for IP Legal Professionals” webinar series beginning February 20 and running through March 13, 2024.  Registration for the series is now open.

This eight-session series is offered as a member benefit to associate members of the American Bar Association who are also members of the Section of Intellectual Property Law.  Paralegals may join the American Bar Association at the rate of $75 and may join the Section of Intellectual Property Law for an additional $105. As members, access to this series of programs will be provided without charge. Those who are not members may register at a cost of $195. Register one time for access to the entire series of programs. 

Each of the 90-minute sessions was designed by IP paralegals for IP paralegals and will address the essential topics that IP professionals need to understand. View the listing of sessions, faculty roster, registration information and more at ambar.org/ipparalegals . Note that CLE credit is not offered for these programs.

We gratefully acknowledge the program’s sponsors, Fredrikson & Byron, P.A. and Gearhart Law LLC.

Please contact the Section office at [email protected] or at 312-988-5537 with any questions. 

Join a Section Committee

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]

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.

Trade Secrets Committee to present program on Protecting Trade Secrets in Business For the In-House Lawyers

“Protecting Trade Secrets in Business For the Inhouse Lawyers” is the title of a program planned by the ABA-IPL Trade Secrets and Interferences with Contracts Committee, scheduled for May 6, 2024, from 1:00 – 5:00 pm PT. The program will be held at the law firm of Procopio in Palo Alto, CA.

The program will consist of three panels – managing trade secrets, litigation readiness, and practical tips during the dispute. CLE credit will not be available for this committee program.

All members are welcome to attend. For further information, contact: Mark Klapow [email protected]. 

USPTO TM Subcommittee to Address USPTO Trademark Examination Wait Times

The ABA-IPL USPTO Trademark Practice and Policy Committee has launched a new subcommittee to provide analysis and feedback on the USPTO's current examination timing. This important issue has impacted many brand owners and applicants as they try to make important decisions about their brands. The Sub-committee will be preparing a Section-wide survey on the impact of these delays to establish Section policy and recommendations.

For more information or to join the committee visit the Trademark Practice and Policy Committee website.

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.

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 webinars. Watch the events page on the Section website for information on all upcoming programs and events, and to register. As a special benefit of membership in the ABA-IPL Section, members are able to participate in all ABA-IPL Section webinars for free during the current Association year (through August 31, 2024).

January 31, 2024

Demystifying the Patent Cooperation Treaty (PCT)

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. The Practitioner's Guide to the PCT book can be purchased here

• Jay A Erstling
  Minneapolis, MN
• Megan M Miller
  Winthrop & Weinstine PA
  Minneapolis, MN

February 29, 2024

Litigation Considerations of Universities and Research Institutions In Licensing and Monetizing IP

This webinar will focus on Universities and other research institutions that are at the forefront of creating some of the world's most groundbreaking inventions in the fields of medicine, tech, business, science, and beyond.

• Hilary J Libka
• Shilpi Banerjee
• Kim Ellen Rosenfield

Moderator

• John V Gorman
  Morgan Lewis & Bockius LLP
  Philadelphia, PA

March 12, 2024

The Role of Consumer Surveys in IP Litigation

Consumer surveys are one of the most powerful tools available in intellectual property litigation. Despite widespread use, however, many attorneys are largely unfamiliar with the basics of consumer surveys and how they can be used effectively in intellectual property matters.

• Brian Sowers
  Applied Marketing Science
  Burlington, MA
• John Lewis Strand
  Wolf Greenfield & Sacks PC
  Boston, MA

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

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 Copyright, Fourth Edition

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Patent Claim Drafting Practice: Tactics, Strategy, and Analysis

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

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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
Rivka Monheit
Pabst Patent Group LLP
Atlanta, GA

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