Special Edition

ABA-IPL eNews May 2020

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To Our Members

As we all work in new ways these days, the ABA-IPL Section is continuing to provide connection, collaboration, and content—part of the value and foundation of your membership. We are proud of the many benefits that are coming to you seamlessly, and we are excited about new opportunities to serve you.

This eNews features content related to books in our portfolio of more than 60 titles in all areas of IP. in This issue also presents selections from our high-profile Landslide® magazine delivered bi-monthly as part of your membership.

Because practice guidance is an important part of the Section’s promise to you, watch for these offerings and more:

Landslide® magazine, May/June 2020

Landslide® magazine, May/June 2020

  • Your May/June issue of Landslide magazine on "Best Practicing" is on its way
  • Launch of the IPLSPRING CLE Series is coming soon – nine programs coming in May and June to get the CLE credits you need.
  • New IP TALKS Podcast Series including “Addressing the COVID-19 Pandemic: Tips for Practicing IP Law from Home.” Listen to powerful 18-minute "Ted-style" talks by renowned and influential IP speakers; this series is free to Section members.  
  • Free monthly webinars coming in May include an IP Legislative update, protecting trade secrets during COVID-19, and cyber security. Send us your webinar topic ideas for what you would like to see covered in these programs to Abby.Phillips@americanbar.org.

During this time that is both challenging and invigorating, you can count on the ABA-IPL Section to provide content, information and education for you and your practice. The Section looks forward to serving you and our IP community, including through steadfast advocacy for our profession. We appreciate how much our membership is staying connected while we all engage in social distancing, and we cannot wait to see you in person when the times comes.

---George W. Jordan III
Chair, ABA Section of intellectual Property Law

Commercialization of IP Rights in China

One of the key issues that sparked the U.S.-China trade war involves intellectual property (IP). While the focus has been on forced technology transfers as well as outright theft of IP, there is another way in which technology flows into China. Every year there are many routine business transactions where a foreign owner of IP willingly and lucratively transfers its IP to China via licensing.

In this complex field, unlike with private enterprises in the United States, the political and structural background for the transactions, as well as the various laws and regulations, apply to licensing. China has a strategic plan for the importation and domestic development of technology. Any successful transaction must fall under and support the Chinese government’s overarching goal of going from a technology importer to self-sufficiency and, ultimately, to be a technology innovator.

An understanding of the rules as well as an historical insight into how the Chinese government views these transactions is critically important for practitioners.

NEW! Commercialization of IP Rights in China  

Read this related article from Landslide magazine: “Practical Tips for Trademark Protection in China”

Trade Secret Litigation Under the Uniform Trade Secrets Act

Three important litigation issues under the Uniform Trade Secrets Act (UTSA) are: (1) Is the information at issue a trade secret under the UTSA? (2) Did the defendant’s conduct constitute misappropriation under the UTSA? (3) Is the plaintiff entitled to an injunction, damages, and/or attorney’s fees under the UTSA (collectively the Trade Secret Issues)?

The new federal Defend Trade Secrets Act (DTSA) does not preempt state trade secret law under the UTSA, and many new, federal DTSA actions are still being brought in state courts under the UTSA; in those state actions, judges are frequently required to consider any of the 760 out of-state published UTSA cases that construe the same provisions of the UTSA that are at issue in those state actions.

UTSA claims are also being filed in most federal DTSA actions, and federal judges in the DTSA actions are frequently required to consider any of the out-of-state published UTSA cases that construe the same provisions of the UTSA that are at issue in such federal actions. Most federal courts are looking to UTSA cases to interpret the DTSA which seeks to create uniform federal trade secret law.

As stated in the legislative history of the DTSA, “This . . .legislation will provide a single, national standard for trade secret misappropriation with clear rules and predictability for everyone involved” (emphasis added). Senate and House Judiciary Committee Reports, pp. 14, 6, respectively.

Section 8 of the UTSA states: “This act shall be applied and construed to effectuate its general purpose to make uniform the law with respect to the subject of this Act among states enacting it.”

Uniform construction of the UTSA can thus benefit from attorneys litigating UTSA claims in state and federal court and judges seeing in-depth analysis of the trade secret issues in the 49 jurisdictions.

Just Published: The Law of Trade Secret Litigation Under the Uniform Trade Secrets Act, Second Edition

See these Landslide articles: Trade Secret Diligence in M&A

“What to Expect When You’re (Not) Expecting Misappropriation”

ANDA Litigation

The Drug Price Competition and Patent Term Restoration Act, commonly known as the “Hatch-Waxman Act,” in reference to the Act’s two congressional sponsors, Senator Orrin G. Hatch (R-Utah) and Henry A. Waxman (D-CA), reflects a compromise in the pharmaceutical industry in an effort to balance patent exclusivity against market competition.  This 1984 Act introduced amendments to the Federal Food, Drug and Cosmetic Act and the Patent Act of 1984,including provisions for an abbreviated process for the Food and Drug Administration’s (FDA) approval of generic versions of patented pharmaceuticals by the filing of an Abbreviated New Drug Application (ANDA), and a right to initiate patent litigation against an ANDA applicant submitting an ANDA with the FDA having a Paragraph IV certification.  Paragraph IV ANDA (or Hatch-Waxman) patent litigation was thus born.  Branded and generic pharmaceutical companies have employed the law ever since in a constant struggle to shape the landscape of the governing patent and regulatory regime and the marketplace for FDA-approved patented and generic drugs.

The resulting effect of the Hatch-Waxman Act on the law controlling the pharmaceutical market and its participants remains unsettled.  As a hybrid of two already complex areas of law, U.S. patent and FDA regulatory law, Hatch-Waxman patent litigation is highly involved, and as with any statutory text, is only the starting point.  Hatch-Waxman patent litigation has evolved substantially over the past twenty-five years and continues to change as the controlling statutes and regulations are amended and interpreted further.  During this period, branded and generic pharmaceutical companies have struggled to strengthen their respective positions by shaping the patent and regulatory law landscape governing the use and approval of generic drugs, with one constant being the ultimate value and significant impact of the litigation on the participants.  The economic value involved in Hatch-Waxman cases commonly exceeds hundreds of millions of dollars per case, and not surprisingly, litigations are hotly contested.

Publishing this Spring: ANDA Litigation, Third Edition

Copyright Myths

Copyright lawsuits involving hit songs and even dance moves are big news.  But copyright law remains misunderstood by the public (and lawyers).  Several persistent copyright “myths” continue to prevail, including confusion of public access and public domain, protection via the “poor man’s copyright,” the necessity of registration, and if fair use can be determined by limitations on the copied work.  Explanations and corrections for both creators and content users are important for everyone to understand and follow the actual law.

"Debunking Copyright Myths" Landslide magazine, July/August 2019

Open Source

There are advantages and risks in using open source software, and best practice guidance is helpful for use and risk mitigation.  Open source software provides certain advantages by design: the software is made available for developers to use, edit, and build upon.  In turn, this provides efficiency from use of already existing software and eliminates the need for a company to spend resources to develop new software.  Software is “open source” by the conditions that the initial developer places upon the source code’s distribution and any further editing.  While many variations exist, the basic criteria include free distribution, access to source code, and further free distribution of modifications and derived works from the source code, and no discrimination against persons or groups and field of use.  These advantages must be weighed against risks of using open source software, from cybersecurity to potential breaches of the term of use and consideration of laws in different countries.

“Open Source Software and the Collaborative Culture,” Landslide magazine, March/April 2020

Reverse Confusion

The trademark doctrine of "reverse confusion" is enjoying something of a renaissance.  In a reverse confusion case, a large junior user of an infringing mark may overwhelm a small junior user's trademark rights.  Consumers are confused into believing that the junior user is related to the senior user.  Often, the preferred remedy for the senior user is damages.  This Landslide® magazine article discusses how in the "David vs. Goliath" battle, David fell out of favor – viewed as simply wanting a piece of Goliath's sizeable assets.  It posits that courts are beginning to again side with the little guy and discusses the recent saga of Variety Stores, Inc. v. Wal-Mart Stores, Inc., 359 F. Supp. 3d 315 (E.D. N.C. 2019).  As of now, Wal-Mart is again appealing the decisions against it. 

“Reverse Confusion: A Trademark Doctrine in Decline or on the Rise?,” Landslide magazine, November/December 2019

Blocking Patents

The role of blocking patents in evaluating secondary considerations for patent obviousness has received significant attention following the Federal Circuit’s Acorda opinion.  Some industry observers have described the case as setting forth a novel “blocking-patent doctrine” that may negatively impact pharmaceutical innovation.  It is valuable to look at the economic foundations of secondary considerations and blocking patents and to consider how practitioners might analyze blocking patents in light of the guidance from Acorda.  In clarifying the role of blocking patents in the context of commercial success, long-felt need, and other secondary considerations, Acorda may actually strengthen past case law, rather than setting forth a new paradigm.

“Thinking Economically about Blocking Patents: Did Acorda Create a New Paradigm?," Landslide magazine, March/April 2020

Check out the entire ABA-IPL Books Portfolio in this new brochure!

Coming Soon from ABA-IPL Publishing

  • A Legal Strategist's Guide to Trademark Trial and Appeal Board Practice, Fourth Edition, Theodore H. Davis, Jr., Editor
  • The Essentials of Japanese Patent Prosecution, Shinsuke Ohnuki and Steven G. Parmelee
  • Summary of Covenants Not to Compete, Shaun M. Van Horn, Editor

Substance Abuse and Mental Health Committee – Stay Safe and Healthy!

Taking care of our physical health is paramount. But of equal importance is our mental health during this difficult and challenging time. We hope that the information below will be helpful to you as you look for resources on well-being, virtual AA/NA meetings, and on-line therapy connections.

  1. The ABA Commission on Lawyer Assistance Programs has put together a whole host of resources to help law students, attorneys and judges survive and thrive during the pandemic. Check out the CoLAP COVID-19 Well-Being resources at https://www.americanbar.org/groups/lawyer_assistance/resources/covid-19--mental-health-resources/
  2. The  National Task Force on Lawyer Well-Being [NTF], along with other participating organizations, including your very own ABA-IPL SAMH Committee, has launched the first annual Lawyer Well-Being Week, May 4-8. Attached (see above) is your invitation to participate, which includes the basic details of the Week. On the Lawyer Well-Being website (https://lawyerwellbeing.net)) look for the tab labelled “Lawyer Well-Being Week” where you'll find more information and ideas for participating. To get your thinking started, here is a list of 46 Activity Ideas - https://lawyerwellbeing.net/wp-content/uploads/2020/02/Activity-Ideas.pdf for getting involved. Once you decide how your organization will participate, if you'd like, please get in touch with Tracy Kepler [tracy.kepler@cna.com]. She will forward the information to the NTF to highlight your planned activities on the Well-Being Champions https://lawyerwellbeing.net/lawyer-well-being-champions/ page to promote your good work and give others' ideas for participation. Finally, the NTF and IPL SAMH would be grateful if you would consider spreading the word and encouraging participation profession-wide. To do so, you'll find a messaging toolkit on the website under the Awareness Messaging https://lawyerwellbeing.net/well-being-awareness-messaging/ tab.
  3. Mayo Clinic Sleep Tips: 6 steps to better sleep
  4. Sleepfoundation.org “Sleep Guidelines During the COVID-19 Pandemic”

For more information and to join, visit the Substance Abuse and Mental Health Committee web page.

Pro Bono Committee

The ABA-IPL Pro Bono Committee wants to remind everyone that notwithstanding the extraordinary time in which we are living, and all of the good deeds that one may do to help their neighbors, there remain many people facing legal challenges for which the help of a volunteer attorney would be invaluable. Legal needs have risen during the COVID-19 pandemic, including but not limited in the areas of housing, employment, consumer debt, immigration, family law, healthcare, etc.

Although the Pro Bono Committee was unable to conduct its introduction and training session on the ABA’s Free Legal Answers program at this year’s ABA-IPL Section Annual Meeting, registration for the program in your state is available online and the need for new volunteers could not be greater. Free Legal Answers is a virtual legal advice clinic project of the ABA's Standing Committee on Pro Bono and Public Service. Qualifying pro bono clients post their civil legal questions to their respective state's Free Legal Answers websites. Attorney volunteers, authorized to provide legal services in their home states, log in to the website, select questions to answer, and provide legal information and advice directly to the clients. Forty-two states now operate their own chapters of the program. Some are also offering brief training sessions in the various substantive areas seeing the most activity these days, so please do not be intimated by the possibility of being presented with a topic for which you may not currently know enough law.

To get registered and provide legal services in your state, please visit ABAFreeLegalAnswers.org and click on “Volunteer Attorney Registration.” Thank you for all you do by way of pro bono!

To join the committee, visit the Pro Bono Committee web page.

Ethics and Professional Responsibility Committee

The Ethics and Professional Responsibility Committee is working with the leadership of the Young Lawyers Action Group and Substance Abuse and Mental Health Committee to create a webinar for IPL section members on identifying and managing key ethical and mental/physical health challenges faced by practitioners and newly minted lawyers in light of stay-at-home orders and social distancing practices imposed as a result of the coronavirus pandemic. We hope to be able to present our webinar in May.

For more information or to join, visit the Ethics and Professional Responsibility Committee web page.

USPTO Post-Grant Patent Practice and Policy Committee:

AIA Trial Roundtable Discussion of In-House Concerns Surrounding Discretionary Denial, Estoppel and Forum Selection

Vice Chief Administrative Patent Judge Fink will join members of the ABA-IPL USPTO Post-Grant Patent Practice and Policy Committee for a CLE webinar sponsored by Dentons on May 27 from 4–5:30 PM ET.

The ABA-IPL Section invites you to attend this roundtable discussion of estoppel, contract forum selection clauses, and discretionary denial issues at the Patent Trial and Appeal Board (PTAB), moderated by Kevin Greenleaf. The panel will include Vice Chief Administrative Patent Judge Fink, in-house participants from Unified Patents, Michelle Callahan, and Intel Corp., Vanessa Bailey, as well as outside counsel, Jon Bowser and Ray Van Dyke. Register at the link below to attend and receive CLE credit for some jurisdictions.

https://insights.dentons.com/80/15364/landing-pages/rsvp-blank.asp?sid=blankform

For more information and to join the committee, visit the USPTO Post-Grant Patent Practice and Policy Committee web page.

High Tech and Software Patent Committee

The ABA-IPL HTSP Committee meets every third Wednesday of the month at 3pm. The next meeting is May 20, 2020 at 3pm Eastern. Susan McGahan of AT&T will discuss a recent webinar she participated in on software licensing.  Contact Chair Tammy (tammy.pennington@bakerbotts.com) or Co-Chair Matt (mhorton@foley.com) for more information.

To join the committee, visit the High Tech and Software Patent Committee web page.

In-house IP Committee

In-house IP Committee members wrote the article on corporate management of Open Source Software that appeared. March/April issue. As a follow up, four committee members (Donna Suchy, Susan McGahan, Adriana Luedke, and Pervin Taleyarkhan) produced the April Landslide webinar, "Practical Guidance for Managing Open Source Software Legal Risks." The Section will be hosting another CLE webinar, as part of the IPLSPRING CLE Series, on May 14 entitled "IP Transactions, Commercially Speaking," which will include speakers from in-house speaking on IP issues in commercial contracts.  

Stay Connected…

ABA-IPL Action Groups

Section members continue action group initiatives with ongoing Zoom meetings and conference calls. Participate in one or more action groups for immediate networking and leadership opportunities. Engage with your peers remotely and get involved in the ABA-IPL Action Groups

Young Lawyer Action Group (YLAG)

On April 16, YLAG hosted two speakers on its monthly call to share their thoughts and experiences to help young lawyers and law students navigate their careers during these uncertain times, and share tips and tricks on staying professionally relevant:

Scott Kelly, who graduated in 2010 as a graduating 3L without a job, after a promising summer position did not turn into an offer due to market conditions. He ended up taking an atypical path, which he will walk us through, and is now a Partner at Banner Witcoff in Washington DC. Scott's profile is available at  bannerwitcoff.com/people/skelly

Ross Hersemann who runs a virtual, solo law practice, Loading Law, in Chicago. He provides legal counsel to video game developers and entrepreneurs in the tech sector. Ross is also the Organizer of the Chicago Video Game Law Summit and an Adjunct Professor of Video Game Law at DePaul University. You can learn more about his practice at https://www.loadinglaw.com/.

In addition to discussions on navigating careers, the Young Lawyer Action Group (YLAG) hosted a successful virtual happy hour in April. There will be similar upcoming events.

For more information, or to join, visit the YLAG IPL Connect Community.

Diversity Action Group (DAG)

Get involved with ABA-IPL diversity initiatives by participating in the next Diversity Action Group (DAG) call led by Chair Shannon Proctor. Monthly conference calls are held the 2nd Thursday at 4:00 p.m. ET/ 3:00 p.m. CT/ 2:00 p.m. MT/ 1:00 p.m. PT and last about 30 minutes. DAG had successful call on Thursday, April 9, reviewing planned diversity initiatives.

Save the date for DAG’s upcoming Zoom call on Thursday, May 14 by adding the reoccurring meeting to your calendar. Become a member of the Action Group by joining the IPL DAG Connect Community.

The ABA-IPL Diversity Action Group (DAG) fosters the advancement of diverse individuals within the profession and provides diverse lawyers with clear pathways to attain leadership roles. Visit the DAG webpage for more details.

Law Student Action Group (LSAG)

As many classrooms are transitioning to a virtual environment, the Law Student Action Group (LSAG) encourages law students to stay connected with ABA-IPL. LSAG members were recently invited to join a Young Lawyer Action Group (YLAG) Zoom meeting featuring speakers, Scott Kelly, Banner Witcoff, and Ross Herseman, Loading Law. The meeting informed law students on how to navigate their careers during the Covid-19 era. The discussion covered the pitfalls of utilizing generic templates in a job search or networking efforts. Scott and Ross described how authenticity in professional outreach and a measured effort to each job application yields better results.

Interested in attending the next event? Visit the LSAG page to learn more and join.

Women in IP Action Group (WIP)

The Women in IP Action Group (WIP) recently hosted a conference call on Thursday, April 2. WIP Chair Lisa Dunner led an engaged discussion and Subcommittee Chairs provided updates on current WIP activities. Upcoming WIP announcements will be posted on the IPL WIP Connect Page.

Interested in joining network of legal professionals working together to advance diversity, expand opportunities for women, and mentor female colleagues in the field of intellectual property law? Visit the Women in IP (WIP) page to learn more and join.

International Action Group (IAG)

The ABA-IPL International Action Group (IAG) provides current legal updates, commentaries and opinions and to connect with Intellectual Property (IP) lawyers from over 75 countries. ABA-IPL International Associates are encouraged to join IAG to develop relationships with IP professionals, multinational groups, law firms, and corporate counsel.

Learn more on how to get involved on the International Action Group (IAG) page.  

IP TALKS Podcast Series

NEW! IP TALKS™ Podcast Series

Listen to powerful 18-minute "Ted-style" talks by renowned and influential IP speakers. This new series is FREE to Section Members. Get the latest on IP hot topics, new developments and best practices to stay current on the issues critical to your practice. 

Posted Now:
Addressing COVID-19 Pandemic: Tips for Practicing IP Law from Home
With Roger LaLonde, Associate, Eckert Seamans, Cherin & Mellott, LLC and Tammy Pennington Rhodes, Special Counsel, Baker Botts, LLP

Campaigns and Copyrights
With Robert Clarida, Partner, Reitler, Kailas & Rosenblatt, LLC

Coming Soon:
The Care and Feeding of Trademarks
With Hon. Jonathan Hudis, Administrative Trademark Judge, Trademark Trial and Appeal Board, USPTO

 

IPLSPRING CLE Series

Coming Soon! IPLSPRING CLE Series

Get the CLE credit you need with this special virtual programming series; bringing IPLSPRING to you..  Nine CLE programs selected from this year’s ABA-IPL Section Annual Meeting will be coming to you in May and June. 

CLE Webinars:

  •  IP Transactions, Commercially Speaking
  • Experience the Intrigue of Recent Trade Secret Law Cases
  • Honey Badger Don't Care, But the Courts Might
  • Designs that Speak for Themselves
  • Avoiding Pitfalls When Preparing International Applications
  • Standard Essential Patents & the Internet of Things
  • A Look at the USPTO's Focus on Declaration's
  • Countering the Counterfeiters
  • Hot Copyright Topics

More details to come.

Topic Suggestions?

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

ABA-IPL webinars are free to Section members

All IPL Section webinars are free to Section members from September 1, 2019 through August 31, 2020. 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 al ABA-IPL Section webinars for free during the current Association year (September 1, 2019 – August 31, 2020).

Beltway Insights: What’s Happening in DC from COVID-19 Developments to Prospects for IP Legislation

May 12, 1pm 12/Noon – 1pm ET

Hear from Kira Alvarez, the ABA-IPL Section’s Legislative Consultant on what's going on in Congress, from recently passed legislation dealing with the Coronavirus/COVID-19 crises to the prospects of upcoming IP legislation.

Moderator:
Mark K. Dickson, Phase M Legal, San Mateo, CA

Speaker: 

  • Kira M. Alvarez, ABA-IPL Section of Intellectual Property Law, Washington, DC

REGISTER TODAY

 

Putting the Genie Back in the Bottle: Protecting Trade Secrets During and in the Aftermath of COVID-19

May 19, 1pm 12/Noon – 1pm ET

Moderator:

  • Nicole D. Galli, Law offices of N.D. Galli LLC, Philadelphia, PE (Moderator)

Speakers:

  • Craig Moss, ETHISPHERE, Westport, CT
  • Andrea M. Casteter, Eli Lilly and Company, Indianapolis, IN

REGISTRATION COMING SOON

 

Cyber-security for Legal Professionals: Tips from the Trenches

May 21, 1pm 12/Noon – 1pm ET

Legal professionals have an ethical duty to be competent in keeping client data confidential. All too often, information security is not prioritized by firms. It costs money to protect data and they frequently resist budgeting for it, even though prevention is far less expensive than investigating and remediating data breaches. But there are a host of free and budget friendly tips.

Speakers:

  • John Simek, Sensei Enterprises, Inc., Fairfax, VA
  • Sharon Nelson, Sensei Enterprises, Inc., Fairfax, VA 

REGISTER TODAY

Supreme Court confirms that willful infringement is not a precondition to awarding a trademark infringer’s profits

In Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233, the Supreme Court held that proof of willful infringement under the Lanham Act is not a prerequisite for an award of infringer’s profits for a violation of Section 43(a). The Supreme Court’s decision reversed the judgment of the Federal Circuit, which was applying the law of the Second Circuit. The Federal Circuit had held that because Fossil’s infringement of Romag’s trademark was not willful, the district court was barred from awarding Fossil’s profits to Romag.

The ABA filed an amicus brief with the Supreme Court in this case, based on ABA policy adopted in 2017 (at the request of the IPL Section). The ABA’s brief, written by Travis Wimberly and Giulio Yaquinto of Pirkey Barber PLLC, argued that proof of willful infringement is not required, but may be taken into account among the equitable considerations relevant to whether a prevailing plaintiff should recover an infringer’s profits. The Supreme Court’s opinion, written by Justice Gorsuch and adopted with no dissent (but with concurring opinions by Justice Alito and Justice Sotomayor), agrees with the position in the ABA’s amicus brief, concluding that willfulness is not an “inflexible precondition” to a profits award.

2020 ABA-IPL Leadership Recognition

Section Chair George Jordan has recognized the following individuals for their accomplishment in ABA-IPL Section leadership. Recommendations were provided by division chairs, operation board chairs and action group chairs.

Eric Perrott
Eric Perrott, as Chair of the USPTO Trademark Policy & Practice Committee, has prepared countless letters to the USPTO and Congress on impossible deadlines. Despite time constraints his letters are authoritative, and he presents Section policies in positive way. He has also represented the Section at many meetings with the USPTO and Congress where he asks insightful questions.

Megan Bannigan
Megan Bannigan is Chair of the Trademark Litigation Committee. Prior to this year, Megan did not have a lot of exposure to the ABA or the Section. However, that has not stopped her from leading a very active Committee with a high volume of work product that has been in front of the Section Council. Megan has been asked to take on resolutions and present them to the Council on short notice, and has flown to Council meetings to present in person.

John McKeown
John McKeown, as long-time chair of the International Trademark Laws Committee has spearheaded projects on plain packaging; the USMCA; Brexit and other international matters.

Roger Lalonde
Roger LaLonde was responsible for drafting and helping obtain Council approval of the report and resolutions on GDPR and WHOIS. He is currently working on state privacy legislation to obtain access to WHOIS registrant information. He is a leader in the Trademarks and the Internet Committee.

Tammy Pennington Rhodes
Tammy Pennington Rhodes has been instrumental in revitalizing the Section’s free webinar program. Her energy, enthusiasm and ideas in developing the webinar program have been amazing. In addition to her work on the CLE Board, she has served as Chair of the High Tech and Software Patent Committee, where she has conducted monthly meetings with outside speakers presenting. She also worked on development of AI-related policies for the Section. She has also served as Vice Chair of the Patent Litigation Committee, and as a member of several other committees. She is a member of the IP West Planning Committee for 2020 and was instrumental in securing several speakers for the IP West 2019 program and raising sponsorship revenue for the event.

Jeff Jacobstein
Jeff Jacobstein took the lead on the report and resolution relating to the special ANDA patent venue statute which ultimately made its way up to the ABA House of Delegates, which in turn adopted the resolution as ABA policy. This resolution got recommitted at least once and required a lot of work first to get it past the Section Council and then to get it approved by the ABA. This was a significant policy achievement for the Patents Division this year. 

Matt Horton
Matt Horton worked on the comments that the Section submitted to the USPTO on issues surrounding the patentability and ownership of inventions generated by artificial intelligence. He took the lead on the task force that prepared those comments, as well as another letter on artificial intelligence to the World Intellectual Property Organization. The comments have been used as a springboard for CLE programs on AI.

Geoff Goodale
As Vice-Chair of the new Anti-Counterfeiting and Piracy Committee, Geoff Goodale spearheaded a task force that drafted comments on the state of counterfeit and pirated goods trafficking through online third-party marketplaces and recommendations for curbing the trafficking in such counterfeit and pirated goods that the Section submitted to the Trump Administration in the Fall of 2019. The comments were favorably reviewed and are reflected in the Report on Combating Trafficking in Counterfeit and Pirated Goods that the U.S. Department of Homeland Security issued in January 2020. Geoff also helped organized a program on Countering the Counterfeiters: Tips & Strategies to Combat Counterfeiting & Promote Brand Protection that is a part of the IPL Spring virtual series.

ABA-IPL Section Nominating Committee Announces Nominees for 2020-2021 ABA year

Donna P. Suchy, Chair of the Section’s Nominating Committee, reports that the following candidates have been nominated for the 2020-2021 Association year:

Chair-Elect: Kim Jessum, Philadelphia, PA. Ms. Jessum is current Vice Chair of the Section. She served as the Section Financial Officer for four years. She served as Continuing Legal Education Officer and Chair of the Continuing Legal Education Board for three years. She served as the Chair of the Annual Intellectual Property Law Conference and Chair of the Teleconference Committee for two years each. She was Chair of Section’s the former Committee on Copyrights and the Internet. She also served for three years as Chair of the former Young Lawyers Committee and was a founder of the Young Lawyer Fellows program. Outside of the Section, she is currently a member of the ABA Standing Committee on Technology and Information Systems, ABA Annual Meeting Program Planning Committee, and Litigation Section Judicial Intern Opportunity Program National Co-chair and was previously a member of the ABA Standing Committee on Specialization, ABA Standing Committee on Technology and Information Systems, and ABA Standing Committee on Continuing Legal Education and liaison to the Standing Committee on Membership.

Vice Chair: Thad Chaloemtiarana, Chicago, IL. Mr. Chaloemtiarana currently serves on the Section Council. He served Membership Officer of the Section for two years, and as Vice Chair of the Membership Board for three years. He also served as Vice Chair of the Diversity Action Group for three years. He was Chair of the Trademarks and Unfair Competition Division for two years and Vice Chair of that Division for two years. He has been a member of the CLE Board, the Membership Board and the Revenue Committee. He currently serves as Co-Chair of the Young Lawyer Fellow Advisory Committee. He has chaired several committees in the Trademarks Division. He is the current Liaison to the National Asian Pacific American Bar Association.

Secretary: Adriana Suringa Luedke, Minneapolis, MN. Ms. Luedke has served as Secretary for two years. Prior to this, she served on the Section Council for four years. She previously served as Section Secretary for three years. She has been the Chair of the Patents Division, and the Section Liaison to the ABA Commission on Women in the Profession. She has served as Chair of the former Division on Meetings and Resolutions. She has also been Chair of the Committee on Patent System Policy Planning, the Committee on Government Relations to Patents and the Young Lawyers Committee, and has served as Program Vice Chair for the Annual Intellectual Property Law Conference and Program Co-Chair of Section activities at the ABA Midyear Meeting.

Financial Officer: Rob Lytle, Redmond, WA. Mr. Lytle is currently the Financial Officer-Elect. According to the Section bylaws, he will automatically assume the position of Financial Officer for a two-year term in 2020-2021 and in 2021-2022, so technically this is not a nominated position or one that is up for election in 2020-2021. Mr. Lytle formerly served as a vice-chair of the Patents Division. He has served on the Books Editorial Board for three years. He was co-chair of the Trade Secrets and Interferences with Contracts Committee for two years.

Revenue Officer: Susan McGahan, Bedminster, NJ. Ms. McGahan is the current Revenue Officer. She previously served as Vice Chair of the Revenue Committee of the Section and as a member of the committee for five years. She served as Section Secretary for two years. She served as Membership Officer for four years and Chair of the Membership Board. She has also served as Chair of the former Division on Meetings and Resolutions and for three years as Financial Officer of the Section. She served a total of five years on the Section Council. Ms. McGahan has also chaired the former Division on Professional and Section Relations, and the former Division on Publications. Prior to that, she served as Chair of the Young Lawyers Committee and the Membership Committee. She served a three-year term as Trustee to the American Intellectual Property Law Education Foundation Board of Trustees.

Publications Officer: Steven E. Gillen, Cincinnati, OH. Mr. Gillen has served as the Publications Officer for two years. He has served as Chair of the Books Editorial Board for four years and as Vice Chair of that board prior to that. He is a current member of the Content Advisory Board. He served as Chair of the Copyrights and New Technologies Committee for two years and served as Chair and Vice Chair of the Copyright Litigation Committee.

Continuing Legal Education Officer: David Postolski, Summit, NJ. Mr. Postolski is the current Continuing Legal Education Officer. He served as a current member of the Section Council prior to that. He serves as a Vice Chair of the CLE Board, where he has been an active member for many years. He has served as Division Chair of the Professional Issues Division for two years, and Vice Chair of that Division for two years. He served as Chair of the Young Lawyers Action Group and Special Advisor to the International Associates Action Group. He has served on the Revenue Committee, the Membership Committee and the Nominating Committee. He was the Young Lawyers Division Liaison to the Section for two years, and Liaison to the National LGBT Bar Association for two years.

Membership Officer: Kevin Greenleaf, Lovettsville, VA. Mr. Greenleaf is the current Membership Officer. He has served five years on the Amicus Brief Committee. He served as Chair of the USPTO Post Grant and Inter Partes Practice Committee and as Vice Chair of that committee. He served as Chair of the Patent System Policy Planning Committee and as Vice Chair of that committee. He served on the Magazine Editorial Board for four years. He was Vice Chair of the IP Transactions and Licensing Committee for one year.

Section Delegate to the ABA House of Delegates:

(for a three-year term expiring in 2023)

Joseph M. Potenza, Washington, DC. Mr. Potenza is currently a Section Delegate to the ABA House of Delegates, with a term expiring in 2020. He has served as a Delegate since 2015. He served as Section Chair, Chair-Elect and Vice Chair prior to that. He is a past Publications Officer and former Chair of the Content Advisory Board. He served on the Section Council for four years, and as Section Secretary for three years. Mr. Potenza is a former member of the ABA Standing Committee on the Federal Judiciary and was a long-standing member of the ABA Standing Committee on Publishing Oversight and a Special Advisor. Previously, Mr. Potenza was Program Chair of the Annual Intellectual Property Law Conference and Co-Chair of the former Summer IPL Conference. He also served as Chair of the Litigation, Alternative Dispute Resolution and Related Issues Division, and the committees on Patent System Policy Planning, Public Information, Trial and Appellate Rules and Procedure, and Young Lawyers. Mr. Potenza is also a former Chair of the ABA Section of Science & Technology Law.

Council Members: (for a four-year term, ending in 2024)

James Bikoff, Washington, DC. Mr. Bikoff is current Chair of the Trademarks and Unfair Practices Division. Prior to this position, he served as Vice Chair of the Division for two years. He is currently serving a three-year term as the Section’s representative on the Intellectual Property Constituency of ICANN. In previous years he has chaired the Trademark Litigation Committee, and the Trademark Legislation Committee. He was a member of the Anti-Piracy Task Force.

Keisha Hylton-Rodic, Washington, DC. Ms. Hylton-Rodic is current Vice Chair of the USPTO Ex Parte Patent Practice and Policy Committee. She has served as Liaison to the ABA Section of Health Law for a number of years, as well as Liaison to the ABA Health Law Coordinating Group. She Chaired the USPTO Post-Grant and Interpartes Patent Practice Committee for two years and the Patents in the Chemical and Life Sciences Committee for two years. She served a three-year term as a Trustee on the Board of the American Intellectual Property Law Education Foundation. She has served as a member of the Diversity Action Group, the CLE Board and the Membership Board.

Rivka Monheit, Atlanta, GA. Ms. Monheit is Chair of the International Patent Laws Committee. She previously Chaired the Patent Legislation Committee for two years and served as Vice Chair of that Committee for two years. She is a member of the Standing International IP Task Force, and the Section 101 Task Force.

Richard Stark, New York, NY.  Mr. Stark has served as Vice Chair of the Specialized IP Law Division for two years. He was Chair of the Antitrust Interface with IP Rights Committee for two years and served as Vice Chair of that committee prior to that. He is a member of the Section Revenue committee as well.

Council Member: (for a two-year term, expiring in 2022, to fill the vacancy of Thad Chaloemtiarana)

Dale Cendali, New York, NY. Ms. Cendali served a previous four-year term on the Section Council from 2012 to 2016. Prior to that she served as Chair of the Division on Related Legal Issues. She served as a Vice Chair of the Copyrights Division for two years. She was Chair of the Copyright Litigation Committee for two years prior to that.

Young Lawyer Council Member: (for a one-year term expiring in 2021)

Pervin Taleyarkhan, St. Joseph, MI. Ms. Taleyarkhan is Vice Chair of the Business and Trade Division of the Section. She has served as Vice Chair and Chair of the In-House IP Committee.  She is a member of the Magazine Editorial Board, the Content Advisory Board, and the Membership Board. She is Liaison to the Association of Corporate Counsel. She is a Young Lawyer Fellow of the Section.

Section Chair: According to Section bylaws, June M. Besek, New York, NY, current Chair-Elect, automatically assumes the office of Chair for the 2020-2021 Association year.  Ms. Besek currently serves as Section Chair-Elect and served as Vice Chair previous to that. She served on the Section Council from 2005-2009 and from 2011-2015. She is the current Liaison to the ALI Restatement of Law/Copyright Project. She serves as a Liaison to the World Intellectual Property Organization Standing Committee on Copyrights and Related Rights. She is a current member of the Content Advisory Board. She served previously as Division Chair of the Copyrights Division. She was chair of the Committee on Broadcasting, Sound Recordings and Performing Artists, Chair of the Committee on Minorities in the Profession, Chair of the Government Relations to Copyrights Committee, Chair of the Copyright Office Affairs Committee, Chair of the International Copyright Treaties and Laws Committee, and Chair of the Long-Range Planning Committee. She also served as Chair of the Copyright Law Reform Task Force

The Section’s Nominating Committee, appointed by Section Chair George Jordan, is composed of:

Donna P. Suchy
Cedar Rapids, IA

Scott F. Partridge
Houston, TX

Malaika Tyson
Chicago, IL

Anna Raimer
Houston, TX

Jan Jensen
Los Angeles, CA

Additional nominations for this new position or for any position may be made by petition signed by not less than 100 members of the Section, listed by their ABA ID number. The 100 names must be representative of at least three states and must indicate that the individual has agreed to the nomination. The petition must be sent to the Chair and the Secretary of the Section and must be received by these individuals not less than four months before the elections held at the Annual Meeting. The Business Session with Elections will be held on Friday, July 31, 2020 in Chicago, IL.

ABA-IPL Divisions and Committees for 2019-2020

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.

There have been a number of new committees formed for the 2019-2020 association year, and several committees have been realigned in their respective divisions. The committee structure for 2019-2020 is listed below. All Section members are also encouraged to join the new committees.

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]

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

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

Professional Issues Division

  • Law Practice Management Committee [join]
  • Pro Bono Committee [join]
  • Ethics and Professional Responsibility Committee [join]
  • Substance Abuse and Mental Health 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]
  • Intellectual Property Asset Management Committee [join] ­ New Committee
  • In-House IP Committee [join]
  • Anti-Counterfeiting and Piracy Committee [join] ­ New Committee

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.

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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:

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Start Using the New ABA Member Logo Today!

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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

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

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

VICE-CHAIR
Kim R. Jessum
Heraeus, Inc.
Yardley, PA

SECRETARY
Adriana Luedke
Lockheed Martin Corporation
Bethesda, MD

FINANCIAL OFFICER
Will Jones
Bethlehem, PA

FINANCIAL OFFICER-ELECT
Robert Lytle
Microsoft
Redmond, WA

REVENUE OFFICER
Susan E. McGahan
AT&T
Bedminster, NJ

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

MEMBERSHIP OFFICER
Kevin Greenleaf
Dentons US LLP
Lovettsville, VA

CLE OFFICER
David Postolski
Gearhart Law, LLC
Summit, NJ

SECTION DELEGATES TO
THE HOUSE OF DELEGATES
Joseph M. Potenza (2020)
Banner & Witcoff, Ltd.
Washington, DC

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

Lisa A. Dunner (2022)
Dunner Law PLLC
Washington, DC

IMMEDIATE PAST CHAIR
Mark K. Dickson
Phase M LLP
San Mateo, CA

Contact Us:
ABA Section of Intellectual Property Law
312.988.6254
iplaw@americanbar.org
www.americanbar.org/iplaw