ABA-IPL eNews November 2023

Mark your calendars

IPLSPRING – 2024 ABA-IPL Section Annual Meeting

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

Mark your calendars, and save the date for IPLSPRING, April 17-19, 2024. Watch the Section website for complete information as it becomes available.

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:

• AI's Role and Key Ethical Considerations for Trademark Professionals
• IP Ethics Update at the USPTO
• Patenting Inventions When AI Is Involved
• Unified Patent Court -- The First Year
• Supreme Court Reviews First Amendment Implications of Trademark Registrations
• Deep Fakes, Copyright and the Right of Publicity
• Cultural and Social Responsibility in Trademark and Branding
• Copyright Office Speaks
• Damages Considerations for Patent Litigation in High-Tech Products
• Tips for Navigating AIA Trials
• Mock Presentation of Copyright Damages
• Daubert Proofing Your Lanham Act Survey
• Understanding the IP Landscape in Latin America
• Safeguarding Brands Beyond Borders
• Trade Secrets: Keep it Simple, Keep it Safe
• Copyright Roundup
• Practical Drafting Tips Following Amgen v. Sanofi: Is 112(f) the Answer?

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… Patents!” 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.

Our program will also feature activities and sessions sponsored by our ABA-IPL Attorney Wellness Committee.  The Committee will host a Fun Walk/Run on Thursday, April 18. Whether you are a walker or a runner, the early morning guided jaunt will boost well-being, give participants and opportunity to see some sights, and let participants connect with one another as you get steps in! On Friday, join the Committee for a Mindfulness Morning session and explore ways to center, re-focus, and be present for a day of conference programming! The session will focus on mindfulness for wellbeing, how to implement the practice into your daily routine and provide a guided mindfulness exercise.

Mark your calendars, and save the date for IPLSPRING, April 17-19, 2024. Watch the Section website for complete information as it becomes available.

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. 

Copyright Day at the U.S. Copyright Office, December 1

Don’t miss Copyright Day! The ABA-IPL Copyright Office Affairs Committee will host the annual meeting with the U.S. Copyright Office on Friday, December 1. This year’s meeting will take place at the U.S. Copyright Office in Washington, DC (near the Capitol South Metro stop).

The ABA-IPL Copyright Office Affairs Committee has been organizing this annual meeting for the Section with leadership of the U.S. Copyright Office (USCO) in Washington, DC since the early 1990s. This long-standing tradition will continue in 2023, when USCO officials will again brief ABA members on litigation, legislation, regulatory issues and USCO initiatives affecting copyright stakeholders. 

You can visit our website to view the full agenda and contact Danielle Banks at [email protected] to request access information.

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.

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

Young Lawyer Action Group provides CLE speaking and volunteer opportunities

The Young Lawyer Action Group (YLAG) is an electric group of attorneys in their early years of practice, led by young lawyers. YLAG is currently looking for members for the following opportunities:

1. Moderate a CLE panel at the ABA-IPL Section Annual Meeting on April 19 at 8:30–9:30 a.m. Eastern. The title and description of the program is below:
   
   “Keep It Secret. Keep It Safe: Trade Secret Hot Topics”
   Not a day goes by when trade secret issues are not discussed in the mainstream press. Whether issues of national security, intellectual property, or client confidentiality, they have become a critical issue for any lawyer. They are even more important when it comes to intellectual property lawyers given their important place in protecting innovations that otherwise would not be protected by patent, copyright, or trademark law. This program will discuss hot topics in trade secrets, including protection of trade secrets, identification of them in court, recent misappropriation cases, and potential damages.
2. Volunteer to aid the Section's Artificial Intelligence/Machine Learning Task Force. The volunteers would be asked to do the following:

• Research and compilation of case law and legal analysis.
• Assist with specific research projects that aim to educate our members,
• Help draft of any future letters sent to the USPTO, USCO, or other agencies that request comment or input.

Please send all inquiries or questions to YLAG Chair Caleb Green at [email protected].  

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 regarding changes to duration of the attorney recognition rule

On October 6, the Section sent a letter to the USPTO, Commissioner for Trademarks, on changes to duration of attorney recognition. The Section noted that it supports, in principle, the USPTO changing the current attorney recognition rule to allow recognition as to a pending application or registration to continue until the applicant, registrant, or party to a proceeding revokes the power of attorney or the representative withdraws from representation. However, the Section has concerns regarding the implementation and effects of some of the changes under consideration and in the letter the Section provided comments on these concerns. The full letter to the USPTO can be found on the Section website’s advocacy page.

Comments to the U.S. Copyright Office on Artificial Intelligence and Copyright Issues

On October 30, the ABA sent a letter to the U.S. Copyright Office (“USCO”) on Artificial Intelligence and Copyright Issues. The Section shared its views on three critical issues. The Section opposes recognizing an AI as (1) an “author” under U.S. copyright law or (2) as an assignee, licensee, or other type of party capable of having ownership or possessory interest to a copyright recognized under Title 17. The Section suggests the use of AI to develop human conception to be equivalent to the use of a camera in taking a photograph. AI is simply the machine used, like any other instrumentality, through programming or input, to develop a human’s conception and fix it in a tangible medium of expression. And, (3), the Section opposes a new sui generis law to supplement U.S. copyright, patent, trade secrets, data access, or contract law to protect AI data sets and databases. The section also provided responses to several questions posed by the Notice of Inquiry. The full letter to the USCO can be found on the Section website’s advocacy page.

ABA-IPL webinars are free to Section members

All Section webinars are free to ABA-IPL 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).

Mark your calendars for the 2023-24 Landslide magazine webinar series and watch for details. Landslide programs are scheduled for:

• Tuesday, January 23, 2024
• Tuesday, April 23, 2024
• Tuesday, July 23, 2024

Additional details will be available as the programs’ dates draw closer.

January 31, 2023 - 1 PM EST

Demystifying the Patent Cooperation Treaty (PCT) [CC]

The purpose of this webinar is to demystify the 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.

Panelists

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

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.  

Coming Soon

Antitrust Issues in Intellectual Property Law, Second Edition

Now Available from ABA-IPL

The Tech Contracts Handbook

What Is A Patent 4th Edition

From ABA-IPL Publishing

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

Fandom and the Law: A Guide to Fan Fiction, Art, Film & Cosplay

ABA membership available for groups

Firm, Company, or Government Group Membership

When your firm or organization chooses to join the American Bar Association, we provide resources for making membership in the ABA easier.

Over 2,000 firms and organizations have already joined the program to enjoy many benefits:

• Reduce administrative paperwork through a single annual invoice for all members of your organization; say goodbye to individual employee reimbursements!
• Enjoy dedicated account service from a team of ABA specialists to serve your unique needs

For further information and to enroll your firm or company in the full-firm membership program, check out the special enrollment form.

Promote Yourself as a Proud Member of the ABA

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
• Brochures
• PowerPoint presentations
• Letterhead
• Envelopes
• External and internal communications
• Webpages
• Social media
• Print advertising
• Email signatures

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