December 15, 2016

ABA-IPL eNews December 2016

In this issue:

32nd Annual Intellectual Property Law Conference

Registration open for the 32nd Annual Intellectual Property Law Conference

April 4-6, 2017
Arlington, VA
ambar.org/iplspring2017

Register for the 32nd Annual Intellectual Property Law Conference, where you can learn the latest on 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 32nd Annual Intellectual Property Law Conference provides two full days of CLE programming. The programs address a comprehensive spectrum of developments in IP Law.

Wednesday, April 5

  • Ten Lessons for Patent Prosecutors from Litigation
  • Preparation for You and Your Clients to Capitalize on the New Cuban Market
  • Examining Recent Legal Issues of Augmented Reality Game Development Through the Lens of Pokemon Go
  • Hot Topics from the USPTO
  • Gripe Sites and Takedown Notices
  • Important Copyright Cases of 2016: Key Learning Points
  • Save the Date: Priority Practice Points
  • An Update from the USPTO and the TTAB Securitizing Artists' and Athletes' CareersImpact of Implied Bias on Each Facet of Your Practice
  • Effective Use of Border Enhancement Mechanisms and Blocking Injunctions in the US, Canada, and the EU
  • Intellectual Property Issues Relating to Cannabis

Thursday, April 6

  • AIA Trials Before the PTAB: Perspectives from Both Sides
  • Global Comparative Review of Prohibitions on Offensive Speech in Registered Trademarks Copyright Law and Policy Developments: Meeting the Needs of Today's Copyright Owners and Users
  • Patent Year in Review
  • Here Comes the Judge: Mock Preliminary Injunction
  • DMCA 101 PostLenz
  • The New Landscape of Trade Secrets
  • The Effect of Brexit on IP Rights and Related EU Directives, Regulations, and Laws in the Post-Brexit UK
  • Ethics in IP: Interactive Round Tables
  • What Makes A Valuable IP Portfolio? Insights from Investor Diligence and M&A Perspectives
  • Understanding Strategies for Dealing with Cyber Threats to Your Company's Crown Jewels
  • Duty of Loyalty–Avoiding Conflicts of Interest in IP Practice

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 a variety of social networking events.

Register Now      Conference Info

In cooperation with the ABA Section of Science & Technology Law and the ABA Forum on the Entertainment & Sports Industries.

Cooperating organizations: International Federation of Intellectual Property Attorneys (FICPI) and Union Internationale des Avocats (UIA).

More information!
Early registration deadline: March 15, 2017.

Sponsorship opportunities available

A wide array of valuable sponsorship opportunities are available for the 32nd Annual Intellectual Property Law 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.

Become a Sponsor

Current 32nd Annual Intellectual Property Law Conference Sponsors

Sponsors

Law student reporters sought for spring conference

LSAGLast year's law student reporters corps

Applications are now being accepted for the 7th annual Law Student Reporter program at the 32nd Annual Intellectual Property Law Conference. The program is a rewarding experience in which law students interact with and learn from IP practitioners from around the world at this annual conference in Washington D.C. In return for this experience, law student reporters report on the educational programs and conference events by creating a social media presence at the conference, live-tweeting, posting to Facebook, etc., and publishing pre-conference and post-conference blog posts. The program has grown each year and we look forward to a new group of reporters this spring.

Apply Now

For questions and more information about the program, email: lawstudentreporters@gmail.com. To apply, please visit https://goo.gl/forms/r8SysbNSm25kPbOr1.

2017 Mark T. Banner Award Luncheon

Established in honor of the late Mark T. Banner this award honors an individual or group that has made an impact on intellectual property law and/or practice. The award will be presented at the Mark T. Banner Award Luncheon on April 5, 2017 during the 32nd Annual Intellectual Property Law Conference in Arlington, VA. Learn more at www.ambar.org/markbanneraward.

Sponsored by
Premium Gold Level Sponsor Gold Level Sponsor
Banner Witcoff Senniger Powers

Mark T. Banner Honorees: Making an impact on Intellectual Property Law

Hon. Paul R. MichelHon. Paul R. Michel
2014 Honoree

Hon. Paul R. Michel served on the United States Court of Appeals for the Federal Circuit for 22 years, and as its chief judge from 2004 until his retirement in 2010. Judge Michel was nominated to the Federal Circuit by President Ronald Reagan. In his years on the bench Judge Michel judged thousands of appeals and wrote over 800 opinions, approximately one-third of which were patent cases. A frequent speaker on IP subjects, he has also testified before Congress on patent reform legislation and has served as Special Advisor to the Patent Reform Task Force. In 2012 he joined the Intellectual Property Advisory Council at the University Of Akron School Of Law. Visit ambar.org/markbanneraward to learn more about the Hon. Paul R. Michel.


2017-18 Young Lawyer Fellows Program applications now being accepted

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

Applicant Criteria:

  • Member of the ABA and ABA-IPL Section (currently or by time of appointment to Fellows Program)
  • Lawyer, age 32 or younger, or less than two years after the date you were first admitted to practice.
  • Previous demonstration of leadership qualities and commitment in such areas as:
    • work in the ABA-IPL Section
    • work in other bar associations and organizations
    • diversity initiatives
    • professional pro bono activities
    • outstanding academic and or professional achievement

Apply Now

Applications are now being accepted. To apply: (https://americanbar.qualtrics.com/SE/?SID=SV_bEi4lb7t58XA04J)
Resumes and completed applications are due by Friday, February 3, 2017. The fellows selected will be announced by June 1, 2017.

Jane Ginsburg to be guest speaker for Women in IP Law Action Group (WIP) conference call

Jane C. Ginsburg
Jane C. Ginsburg

Professor Jane C. Ginsburg will speak during the WIP teleconference call on January 18th at 1pm ET. Professor Ginsburg is the Morton L. Janklow Professor of Literary and Artistic Property Law at Columbia University School of Law. The discussion is informal and will likely cover areas such as the early choices she made to shape her career or that were pivotal for her career and to offer any advice to women lawyers entering their careers.

Professor Ginsburg is a past recipient of the prestigious Mark T. Banner Award presented annually by the Section for excellence in advancing intellectual property law.

For call info and more details visit the Women in IP Law Action Group (WIP) web page.

ABA-IPL Section Nominating Committee announces nominees for 2017-2018 ABA year

Robert Lindefjeld, Chair of the Section's Nominating Committee, reports that the following candidates have been nominated for the 2017-2018 Association year:

Mark K. Dickson Chair-Elect: Mark K. Dickson, San Mateo, CA. Mr. Dickson currently serves as the Section Vice Chair. He is also a member of the ABA Standing Committee on Publishing Oversight. He was Publications Officer for two years and Chair of the Content Advisory Board prior to becoming Vice Chair. He served as a member of the Board for eight years. He served as Chair of the Books Editorial Board for three years. He served on the Section Council for four years and as the Financial Officer of the Section for three years. He served as chair, co-chair and vice chair of the former Annual Publications Committee for a total of seven years. He also chaired the former Young Lawyers Committee and the former Law Students Committee and was the Law Student Division Liaison to the Section for two years.
George W. Jordan III Vice Chair: George W. Jordan III, Houston, TX. Mr. Jordan currently serves as the Section Secretary. He was Membership Officer for two years prior to that. He previously served for two years as Publications Officer. He is a former member of the Section Council. He was Chair of the Content Advisory Board and Chair of the Annual Review Editorial Board for two years. He is a former member of the ABA Standing Committee on Publishing Oversight. Mr. Jordan spearheaded the Diversity Steering Committee of the Section. He also served as Co-Chair of the Computer Programs Committee for two years.
Jonathan Hudis Secretary: Jonathan Hudis, Washington, DC. Mr. Hudis is a current member of the Section Council. He served as Continuing Legal Education Officer and Chair of the CLE Board for three years and also served a previous term on the Section Council. He also served as Vice Chair of the CLE Board. He has served as a member of the Sponsorship Committee. He has served as Chair of the Trademarks and Unfair Competition Division, and also as Vice Chair of that Division prior to that. He has been Chair of the Section's Federal Trademark Legislation Committee. Mr. Hudis also served as a member of the Content Advisory Board and the Books Editorial Board.
Adriana Suringa Luedke Financial Officer: Adriana Suringa Luedke, Minneapolis, MN. Ms. Luedke currently serves as the Assistant to the Financial Officer. Prior to this, she served on the Section Council for four years. She has 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.
L. Marisia Campbell Revenue Officer: L. Marisia Campbell Ottawa, ON. Ms. Campbell is the current Revenue Office and current Chair of the Revenue Committee. She served as vice chair and member of that committee (formerly the Sponsorship Committee) previously. She served on the Section Council for eight years. She served as Chair of the Magazine Editorial Board for two years, as Vice Chair for 2 years, and as a member for 4 years. She has served as a member of the Content Advisory Board for three years. She was Chair of the former Summer Conference Planning Committee for three years and Vice Chair of the Annual Meeting Planning Committee for one year. She served on the CLE Board for two years and the Books Editorial Board for one year. She served as the Section Liaison to the ABA Journal for three years. She was Assistant to the Section Chair for one year.
Thad Chaloemtiarana Membership Officer: Thad Chaloemtiarana, Chicago, IL. Mr. Chaloemtiarana is the current Membership Officer. He served on the Section Council for two years prior to this. He served as Chair of the Trademarks Division for two years and as Vice Chair of the Trademarks Division for two years. He served for one year as a member of the Nominating Committee. He was Chair of the Committee on Trademarks and the Internet for two years, as Chair of the Committee on Promotions and Marketing Law for two years, and Chair of the Committee on Online Service for one year.
Barbara J. Grahn Publications Officer: Barbara J. Grahn, Minneapolis, MN. Ms. Grahn is Vice Chair of the Content Advisory Board, and has served as a member of that Board for seven years. She has served on the Books Editorial Board for eight years, serving has Chair, Vice Chair and member. She served two one-year terms on the Section Nominating Committee. She served as Assistant to the Secretary for a year. She was a member of the Section Council for four years. She has chaired the International Trademark Treaties and Laws Committee, the Software Technology Committee, and the Databases Committee.
Nicole D. Galli Continuing Legal Education Officer: Nicole D. Galli, Philadelphia, PA. Ms. Galli is the current Continuing Legal Education Officer and Chair of the CLE Board. She served as Vice Chair of the CLE Board for three years and as a member of the CLE Board for three years prior to that. She served as Chair of the former Teleconference Committee in 2009-2010. She also served as a member of the Annual Review Editorial Board in 2011-2012.

Section Delegate to the ABA House of Delegates: (for a three-year term expiring in 2020)

Joseph M. Potenza Joseph M. Potenza, Washington, DC. Mr. Potenza is currently a Section Delegate to the ABA House of Delegates, with a term expiring in 2017. 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 2021)

James R. Davis James R. Davis, Washington, DC. Mr. Davis is Special Advisor to the Trademarks Division. He served as Division Chair of the Trademarks Division for two years. He was Vice Chair of the Division for two years prior to that. He has served as Chair of the Trademarks and the Internet Committee and as Vice Chair of that committee. For three years he was the ABA representative to the Intellectual Property Constituency of ICANN.
Jonathan R. Sick Jonathan R. Sick, Chicago, IL. Mr. Sick has been Chair of the Patents Division for two years. He was Vice Chair of the Patents Division and Special Advisor to the Patents Division prior to that. He served as Chair of the USPTO Post Grant and Inter Partes Patent Practice Committee for a number of years. He has also served as a member of the Membership Board.
Joshua L. Simmons Joshua L. Simmons, New York, NY. Mr. Simmons is the current Chair of the Copyrights Division. He served as Vice Chair of the Copyrights Division prior to that. He served as Chair of the Copyright and Social Media Committee for two years prior to that, and Vice Chair of the Copyrights and Social Media Committee for one year.
Francine D. Ward Francine D. Ward, Mill Valley, CA. Ms. Ward has served as the Vice Chair of the Copyrights and Social Media Committee for two years. She has been a member of the CLE Board for three years. She was Chair of the USPTO Operations Relating to Trademarks and Ex Parte Trademark Practice Committee, and also served as Vice Chair of that Committee. She was Vice Chair of the Information Technology Legislation Committee. She was also Chair of the former Interests of Individuals and Small Businesses Committee. She served a three-year term as a Trustee on the American Intellectual Property Education Foundation Board. She has also served on the ABA Commission on Lawyer Assistance Programs. She also served as a member of the Section Nominating Committee.

Council Member: (for a three-year term, expiring in 2020, to fill the vacancy of Jonathan Hudis)

David Postolski David Postolski, Summit, NJ. Mr. Postolski has served as the Division Chair of the Professional Issues Division for two years. He was Vice Chair of the Professional Issues Division for two years prior to that. He served as Chair of the Young Lawyers Action Group for two years, and as Special Advisor to the International Associates Action Group. He has served on the CLE Board for six years and the Membership Board for four years. He has been a member of the Sponsorship Committee (now the Revenue Committee) for three years. He served on the Section Nominating Committee. He has been the Section Liaison to the National LGBT Bar Association for the past two years. He was the Young Lawyer Division Liaison to the Section for two years.

Young Lawyer Council Member: (for a one-year term expiring in 2018)

Anna J. (AJ) Oakes Anna J. (AJ) Oakes, Rochester, NY. Ms. Oakes is a current Young Lawyer Fellow of the Section. She currently serves as Chair of the Law Student Action Group, as Vice Chair of the Promotions and Marketing Law Committee, and also as Vice Chair of the Pro Bono Committee. She has also served as a member of the CLE Board.

Scott F. Partridge Section Chair: According to Section bylaws, Scott F. Partridge, Houston, TX, current Chair-Elect, automatically assumes the office of Chair for the 2017-2018 Association year. Mr. Partridge currently serves as the Section Chair-Elect, and served as Vice Chair prior to this. He served as a member of the Section Council for four years. Prior to his being on the Council, he served as a Delegate-at-Large to the ABA House of Delegates. He was a member of the ABA Board of Governors and the Board Liaison to the Section for three years before that. He has served as Liaison from the Section to the ABA Section of Science & Technology Law for four years. He also served as a Section Delegate to the ABA House of Delegates from the Section of Science & Technology Law for six years. Mr. Partridge is a past Chair of the Section of Science & Technology Law. He also served on the Executive Committee of the ABA Section Officers Conference and chaired the SOC Finance Committee.

The Section's Nominating Committee, appointed by the Section Chair Donna Suchy, is composed of:

Robert O. Lindefjeld, Chair
Pittsburgh, PA

Lisa A. Dunner, Vice Chair
Washington, DC

Janet Hendrickson
St. Louis, MO

Darrell G. Mottley
Washington, DC

Jameson Ma
Washington, DC

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, August 11, 2017.

SIPO hosts second meeting of ID5 in Beijing

SIPO hosts second meeting of ID5 in Beijing

The State Intellectual Property Office of the People's Republic of China (SIPO) hosted the second annual meeting of the Industrial Design 5 Forum (ID5) in Beijing, China on November 1-2. The forum consists of representatives from the 5 largest offices that protect industrial designs: the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the European Intellectual Property Office (EUIPO). The forum focuses on improving consistency in registration policies, cataloging office practices, promoting interoperable procedural frameworks, and protecting emerging designs such as graphical user interfaces (GUIs), animations and other new technology designs.

In addition to updates from the individual offices, the delegates discussed 12 projects that were approved for further study. The projects include: a competitive study of practices regarding product indication; a catalog of view and drawing requirements; analysis of economic factors and their effect on design filings; a compilation of common design statistics; a study of design classification conventions and practices; a catalog of eligibility for design protection; creation and maintenance of the forum website at www.id-5.org and id-five.org; a study of requirements for priority claims; a study of requirements for grace periods; a comparative study of partial designs; and a study of the feasibility and development of an electronic priority document exchange.

Representatives from various users groups attended the second day of the meeting, including ABA-IPL, INTA, IPO, and Marques. Tracy-Gene Durkin, Vice Chair of the ABA-IPL Design Committee represented the section at the meeting. The next meeting will be in 2017 and will be hosted by EUIPO in Alicante, Spain.

Patent Legislation Committee

Maxim ("Mac") Waldbaum, a member of the Patent Legislation Committee, organized a Webinar exploring recent developments in NPE-Related Actions at the USPTO and in Litigation. The Webinar is scheduled for Friday, December 16, 2016 from 1:00 pm - 2:30 pm EST. During the Webinar, experts representing NPEs and those who defend companies against NPEs will discuss recent successful/unsuccessful attempts before the USPTO, International Trade Commission, and in the courts in NPE-related proceedings.

Issues that will be explored during the webinar include: Is the present status acceptable? Should we search for more creative solutions? Should this activity be segregated from more routine patent legal disputes? Should a separate valuation of the patents involved in NPE litigations be different from other cases?

The panelists for this webinar are:

  • Lora Moffat, Radical Fencing, New York, NY (Moderator)
  • Christopher Colvin, Eaton & Van Winkle LLP, New York, NY
  • Jonathan Stroud, Unified Patents Inc., Washington, DC
  • Timothy Salmon, Empire IP LLC, Parsippany, NJ

Register and participate in this webinar.

Register Today

For further information on the committee or to join the committee, visit the Patent Legislation Committee web page.

Trademark Litigation Committee

On November 11, 2016, at the Section's Fall Leadership Meeting, the Trademark Litigation Committee presented to the section council a resolution regarding nominative fair use. The resolution was primarily aimed at addressing the four-way circuit split regarding how to evaluate nominative fair use. The Trademark Litigation Committee is happy to report that the resolution passed and it is now Section policy that nominative fair use be treated as an affirmative defense.

In other news, the Committee has formed an anti-counterfeiting subcommittee to review an issue relating to the federal criminal anti-counterfeiting statute (18 U.S.C. § 2320) that is gaining traction in other intellectual property associations as a result of United States v. Cone, 714 F.3d 197 (4th Cir. 2013). The Trademark Litigation Committee has several other active subcommittees addressing various issues affecting trademark practice and has recently been asked to consider two more. Members interested in learning more about subcommittee opportunities can contact the Trademark Litigation Committee Chair or Vice Chair.

Join the Committee

For more information or to join the Trademark Litigation Committee, visit the committee web page.

IP Transactions & Licensing Committee

The IP Transactions & Licensing Committee is currently working with the Transfer Pricing Committee within the ABA's Section on Taxation to organize a joint panel on intellectual property taxation issues during the Section of Taxation 2017 Midyear Meeting taking place on January 19-21, 2017, in Orlando, Florida. The Committee is also developing other projects, including future CLE webinars.

Join the Committee

For more information, or to join the IP Transactions & Licensing Committee, visit the Committee web page.

Public Service: Get involved with JIOP

Judicial Intern Opportunity Program Logo

The Judicial Intern Opportunity Program (JIOP) provides internships for diverse law students, involving them in the administration of justice and enhancing the pipeline of qualified practitioners into the profession. Law students interested in applying can apply at www.ambar.org/jiop beginning November 7. The 2016 program placed 165 law students with judges for summer internships and received over 600 applications for these positions. The program placed 31 students in IP-specific positions. This year's program deadline is January 6, 2017. First-year law students may not apply until December 1, in accordance with NALP guidelines.

JIOP is possible because of our volunteers and sponsors, including Section members, judges, lawyers, other ABA groups, and members of state, local and specialty bar associations. Volunteers assist with student screening interviews, serve as panelists at program orientations and participate in local mentoring programs.

Apply Now

Sign up to become part of this year's volunteer team and assist with screening interviews. Because schedules change, we ask that you sign up to be included at the start of each new program year. For questions, please contact Suzanne.Steliga@americanbar.org.

For more information on how you can support or get involved in this year's program, please contact program director, Gail Howard, at Gail.Howard@americanbar.org.

ABA Center for Innovation fellowships available

The ABA Center for Innovation is pleased to announce that applications are now being accepted for its inaugural 2017 Fellows Program. This new program will bring creative thinkers to the Center to develop and launch new projects to address critical needs in the legal sector.

The Center for Innovation will have two categories of fellows—

NextGen Fellows are recent law school graduates who will spend one year in-residence at the ABA Headquarters in Chicago, IL. These fellows will receive a stipend of $45,000, plus benefits, during their time in the program. There are two (2) NextGen fellowships available with an August 2017 start date.

Innovation Fellows will rotate in and out of the Chicago office on a 9-12 week basis, beginning in April 2017. There is no stipend for this fellowship, but sponsorships might be available.

Detailed information about the programs, requirements, and application guidelines can be found on the ABA Center for Innovation website. The application deadline is January 31, 2017.

The Center for Innovation looks forward to hosting its first cohort of fellows next year.

FICPI U.S. Section to host annual ABC Conference in Miami

The International Federal of Intellectual Property Attorneys (FICPI) ABC (American, British, Canadian National Sections) Conference in 2017 is being hosted by the U.S. Section at the Biltmore Hotel in Miami March 12-15, 2017. Registration is now open. The Conference is not limited to FICPI members so non-FICPI members of the ABA-IPL Section are welcome to attend.

For more information or to register, visit the FICPI U.S. Section website at http://www.ficpi.us/events.php.

There is a February 1st early-bird discount available only to FICPI members. A FICPI member registering enjoys a $250 registration discount for him or herself and a $100 registration discount for each of his or her accompanying persons. Annual dues for joining FICPI via the U.S. Section are only $450. It is hoped that the early-bird discount will encourage non-FICPI members to seek membership in FICPI.