ABA-IPL eNews January 2019

Register Now for IPLSPRING

April 10-12, 2019
Arlington, VA

Registration is open for the 2019 ABA-IPL Annual Meeting and 34th Intellectual Property Law Conference, IPLSPRING, where you can catch up on the latest developments in intellectual property law through dynamic CLE programming and innovative networking events. Gain insight and ideas from IP experts and practitioners, coming together from around the world to share and discuss the most critical issues in IP law.

The conference will provide two full days of CLE programming. The programs address issues across a comprehensive spectrum of IP law.

·     Subject Matter Eligibility

·     What’s New at the Trademark Office?

·     Content Licensing Tips

·     A Fireside Chat with the USPTO Director

·     Beyond the High: A Global View on Brand Considerations for Cannabis

·     Copyright Issues Facing In-House Counsel

·     In-House Patent Counsel: Tips to Survive and Thrive through Challenges

·     Design Rights in Times of Globalization

·     True Grit and Growth Mindset

·     Patent Cases Round-Up

·     WHOIS in the Post-GDPR

·     Secondary Liability and the DMCA

·     Artificial Intelligence and IP

·     Update on Canadian Trademark Law Reform

·     Addressing the Cycle of Poverty: Ethical Issues of Providing Patent Pro Bono Services

·     Judge’s Panel: A Conversation with the Bench

·     Post-Sale Restrictions

·     Strategies at the Patent Trial and Appeal Board

·     On the Mark Advising: An Insider’s Perspective—Trademark Issues Facing In-House Counsel

·     Brexit. What You Now Need to Know to Protect and Enforce Your IP Rights in the EU and UK

·     Women in IP Law Luncheon: Battle of Experts

·     The Rocks and Hard Places for IP Practitioners: Current Ethics Issues

·     Graffiti, Tattoos, and More: Fixation of Work on Property or People: Are They Your Source?

·     View from the Copyright Office

·     Strategies for Building an IP Portfolio in China

·     Blockchain & IP

·     Ethics: Houston We Have a Problem!”: Lawyer Competence is an Ethical Issue

·     The Antitrust-IP Interface in the Trump Administration

·     Anti-Counterfeiting in Social Media

·     Zealously Representing Your Clients before Various Types of Third Parties

In addition to the outstanding and comprehensive selection of educational programs, the conference will feature luncheons with informative guest speakers, including the Mark T. Banner Award Luncheon and the Women in IP Law Luncheon, and a variety of social networking events.

Register today for IPLSPRING, April 10-12, 2019. Visit the Section website for further information, and to register.

Sponsorship opportunities available

A wide array of valuable sponsorship opportunities will be available for the conference. These opportunities can be tailored to the needs of any potential sponsor. For details on how we can customize a sponsorship plan to meet your organization’s sponsorship outreach needs, contact carey.farley@americanbar.org.

Section Advocacy

Comments to the U.S. Copyright Office on registration modernization

On January 10, 2019 the Section sent a letter to the U.S. Copyright Office in a response to a request for comments on registration modernization. Topics addressed in the letter included questions on the application process and how users engage with the registration system; questions on application information; how users engage and manage copyright office records; and the deposit requirements for registration and related security considerations. 

Young Lawyers Action Group presents program on becoming an "IP expert" through public speaking

The Young Lawyer Action Group (YLAG) hosted guest speaker and young lawyer Kenny Matuszewski, an associate at Rabicoff Law LLC, on its December conference call to discuss the best ways to establish oneself as an expert on a topic and making the transition from student to master. The call featured active discussions on ideas and methods of finding and securing presentation and speaking, publication, and research opportunities. Interested in further information or participation? Visit the Young Lawyer Action Group web page

YLAG is always seeking ways to connect young lawyers with opportunities in the Section! Have a research project for a new policy initiative? Working on a CLE? Need help writing an article? Want to get more involvement on your committee? Contact Franklin Graves (franklin@eventbrite.com) to coordinate reaching into a passionate community of young lawyers looking to become actively involved in the Section!

Antitrust Interface with IP Rights Committee

DOJ Withdraws Statement on Injunction for Standards-Essential Patents. In a December 7, 2018 speech, the U.S. Department of Justice Antitrust Division formally withdrew its assent to the 2013 Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments.  The announcement noted that “[t]he 2013 statement has not accurately conveyed [the DOJ] position about when and how patent holders should be able to exclude competitors from practicing their technologies” and said the DOJ “will be engaging with the USPTO to draft a new joint statement that better provides clarity and predictability with respect to the balance of interests at stake when an SEP-holder seeks an injunctive order.” See https://www.justice.gov/opa/speech/file/1117686/download.  

Visit the Antitrust Interface with IP Rights Committee web page for more information or to join.

Ethics and Professional Responsibility Committee

The Ethics and Professional Responsibility Committee drafted a comprehensive analysis of practical and ethical issues regarding proposed ABA Resolution 10A concerning non-lawyer online legal form service providers (OLP), and particularly concerns regarding the Resolution as it pertains to the drafting of patent or trademark documents.  The Committee is also organizing an ethics session for the 2019 ABA-IPL Annual Meeting and 34th Intellectual Property Law Conference

Visit the Ethics and Professional Responsibility Committee web page for more information or to join.

In-house IP Committee Hosts Panel Discussion on IP Portfolio Management in China

On December 13, 2018, the In-house IP Committee hosted a webinar covering IP Management in China. The speakers included moderator Jason Burnette (Whirlpool Corporation) and speakers Donna Suchy (Rockwell Collins), Stephen Yang (Co-Talent IP), and Amy Hsiao (Adsero IP). The speakers engaged in a well-rounded discussion on the critical components of success when navigating IP issues in the Chinese and global markets.  The recording of the program is available at https://www.americanbar.org/events-cle/ecd/ondemand/348759334/

For more information or to join, visit the In-House IP Committee web page.

Negotiation Institute slated for San Diego in February

The ABA Section of Dispute Resolution and Section of Labor and Employment Law are cosponsoring the 2019 Negotiation Institute on February 15 in San Diego.

Turn your negotiation instincts into negotiation skills. Learn from national expert Professor Charles G. Craver and other negotiation experts. A blend of lectures and hands-on mock negotiations and mediations, this one-day Negotiation Institute, held at the beautiful and historic Hotel Del Coronado, will provide structures and insights that will enhance your daily practice.

 This is a one-day event held in conjunction with the LEL ADR in Labor & Employment Law Committee Midwinter Meeting, Feb 15-17. There is a $50 discount if registering for both meetings! Contact Melissa.buckley@americanbar.org for discount code. To register: http://ambar.org/ni2019.

Arbitration Training Institute slated for May in Philadelphia

The Section of Intellectual Property Law is cosponsoring the ABA Section of Dispute Resolution’s 12th Annual Arbitration Training Institute, May 16–17, 2019, which will be held at the offices of Pepper Hamilton, LLP in Philadelphia.

Presented by nationally recognized experts, this two-day training features sessions on every stage of the arbitral process examined from the vantage point of neutrals, advocates, administrators and in-house counsel. Small group discussions allow participants to interact in depth with the faculty and each other. Substantive sessions address particular areas of arbitral practice.

The Institute is ideal for litigators wanting to better utilize arbitration; experienced arbitrators seeking better understanding of recent developments and trends in arbitration; in-house counsel interested in learning the nuts and bolts of arbitration; and those planning a career move to arbitration.

Other ABA sections and entities participating in this training institute include:

Health Law Section
Infrastructure and Regulated Industries Section
Section of International Law
Section of Labor and Employment Law
Section of Litigation
Forum on Construction Law
Judicial Division

ABA-IPL Section members are eligible to register for this program at the sponsor member price. For more information as it becomes available, visit the 12th Annual Arbitration Training Institute web page.

ABA-IPL Divisions and Committees for 2018-2019

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. But all Section members are also encouraged to join the new committees.

Subcommittees have been formed within a number of the committees. Visit the committee pages at the links below to explore the subcommittees. You are also encouraged to join the subcommittees directly from the committee web pages.

Patents Division

  • Patent Legislation Committee [join]
  • International Patent Treaties and Laws Committee [join]
  • USPTO Ex Parte Practice [join]
  • USPTO Post Grant and Inter Partes Practice Committee [join]
  • Patents in the Chemical and Life Sciences Committee [join]
  • Patent Litigation Committee [join]
  • Patent System Policy Planning Committee [join]
  • Patents in the High Tech and Software Industries [join] ­ New Committee

Trademarks Division

  • Trademark Legislation Committee [join]
  • International Trademark Treaties, Laws and Practices Committee [join]
  • USPTO Operations Relating to Trademarks Committee [join]
  • Trademark Transactions Committee [join]
  • Trademark Litigation Committee [join]
  • Trademarks and the Internet Committee [join]

Copyrights Division

  • Copyright Legislation Committee [join]
  • International Copyright Treaties and Laws Committee [join]
  • Copyright Office Affairs Committee [join]
  • Visual Arts, Dramatic Works and Motion Pictures Committee [join]
  • Copyright and Social Media Committee [join]
  • Computer Programs and New Technology Committee [join]
  • Music, Sound Recording, and Performing Artists Committee [join]
  • Copyright Litigation Committee [join]
  • Literary Works Committee [join]

Specialized IP Law Division

  • IP Transactions and Licensing Committee [join]
  • Antitrust Interface with IP Rights Committee [join]
  • Trade Secrets and Interferences with Contracts Committee [join]
  • Design Committee [join]
  • Promotion and Marketing Law Committee [join]
  • Right of Publicity Committee [join] ­ New Committee
  • Digital Games and New Media Committee [join]
  • Information Technology Committee [join]
  • Monetization and Valuation of IP Committee [join] ­ New Committee

Professional Issues Division

  • Law Practice Management Committee [join]
  • Economics of the Profession Committee [join]
  • Pro Bono Committee [join]
  • Ethics and Professional Responsibility Committee [join]
  • Substance Abuse and Mental Health Committee [join] ­ New Committee

IP Practices Division

  • Trial and Appellate Rules and Procedures Committee [join]
  • Alternative Dispute Resolution Committee [join]
  • International Trade Commission Committee [join]
  • China IP Issues Committee [join]
  • Government IP Rights Committee [join]
  • University Intellectual Property Law Committee [join]
  • In-House IP Committee [join]


Become a Voting Committee Member

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.

Mark your calendar for these upcoming ABA-IPL webinars

Special Member Benefit: All ABA-IPL Section LIVE webinars are FREE to Section members through August 31, 2019. Don’t forget to sign-up and check them out.

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 your membership in the ABA-IPL Section, you are able to participate in all ABA-IPL Section webinars for free during the current Association year (September 1, 2018 – August 31, 2019).

Watch the Section website events page for registration information for this webinar.

Harvesting and Managing Patents for the Tech Sector

February 5th, 2019
12:00 - 1:30 PM CT
1.5 Hours CLE Credits

This program will go over the basics and pitfalls of building and managing a patent portfolio for tech startups. We will discuss identifying an IP strategy, funding to build a patent portfolio, understanding inventorship and responsibilities of inventors in the startup, ownership, expectations for patent procurement post-Alice, and managing registered patents.


  • Gloria Steinberg (Moderator), Steinberg Intellectual Property Law, LLC, Seattle, WA
  • Sarah Kalemeris, T-Mobile, Bellevue, WA
  • Shamim Mohandessi, Han Santos, Seattle, WA
Register Today!

Theodore Mlynar
Theodore Mlynar
Theodore Mlynar

Landslide® Webinar Series: How to Protect Artificial Intelligence Innovations in the United States and Europe

February 19th, 2019
12:00 - 1:30 PM CT
1.5 Hours CLE Credits

Artificial intelligence (AI) and machine learning are no longer niche research areas in the tech industry. They are seeing widespread adoption across all industries, changing the way we live, work, and relate to each other. Yet the legal framework for protecting the intellectual and capital investments in AI-based technologies is increasingly uncertain, both in the US and abroad.

  • Jessica Meyers (Moderator), Microsoft, Redmond, WA
  • Nick Transier, Patterson + Sheridan LLP, San Diego, CA
  • Mark Bell, Ph.D., Dehns, Oxford, UK
Register Today!

Theodore Mlynar
Theodore Mlynar
Theodore Mlynar

Catch up on these past CLE Webinars

The ABA web store, Shop ABA, has a wide assortment of past webinars from the Section available for sale, in a variety of formats. Choose from a range of intellectual property law topics.


Landslide® Webinar Series

ABA-IPL Young Lawyers Practical Tips Series

ABA-IPL Books Webinar Series

New from ABA-IPL!

Chrissie Scelsi and Ross A. Dannenberg, Editors

Books From ABA-IPL

Books from the ABA Section of Intellectual Property Law

Mark your Calendars

2019 ABA-IPL Annual Meeting and 34th Intellectual Property Law Conference

April 10-12, 2019
Arlington, Virginia

What IP Lawyers Need to Know

Mark your calendars and plan to attend the 2019 ABA-IPL Annual Meeting and 34th Intellectual Property Law Conference, IPLSPRING, April 10-12, 2019 at the Crystal Gateway Marriott Hotel in Arlington, Virginia. Earn a year’s worth of CLE credit, while you take a journey through informative and educational programming on the latest developments in IP law and practical tips for your practice. Watch the ABA-IPL Section website for details as they become available. www.ambar.org/iplspring2019.

Mark your Calendars 

 IP WEST 2019

--A CLE Institute on Current Issues in Intellectual Property Law

October 1-3, 2019
Hyatt Regency Hill Country Resort and Spa
San Antonio, Texas

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: service@americanbar.org. 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 .

Mark K. Dickson
Phase M LLP
San Mateo, CA

CHAIR-ELECT George W. Jordan III
Norton Rose Fulbright LLP
Houston, TX

June M. Besek
Columbia University School of Law
New York, NY

Adriana Suringa Luedke
Lockheed Martin Corporation
Bethesda, MD

Will Jones
Bethlehem, PA

Jonathan Hudis
Quarles & Brady
Washington, DC

Stephen E. Gillen
Wood Herron & Evans LLP
Cincinnati, OH

Kevin Greenleaf
Dentons US LLP
Lovettsville, VA

David Postolski
Gearhart Law, LLC
Summit, NJ

Susan Barbieri Montgomery (2019)
Foley Hoag LLP
Boston, MA

Joseph M. Potenza (2020)
Banner & Witcoff, Ltd.
Washington, DC

William L. LaFuze (2021)
McKool Smith
Houston, TX

Scott F. Partridge
Baker Botts LLP
Houston, TX

Contact Us:

ABA Section of Intellectual Property Law