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Intellectual Property Law Section

Interest Group Calls

December 9 Licensing Interest Group Call

To participate in the meeting, the dial-in number is 855-520-7605, passcode 1211276419#.

Monthly “All Hands” Licensing IG conference call. We’ll discuss upcoming webinars and conferences, opportunities for members to get involved and Hot Topics. Please note:  Our monthly calls are the 2nd Friday of every month.


Webinar: A Global Approach to Grey Market Issues: Solutions and Remedies in Europe and in the US

Thursday, November 17, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.


The grey market–or parallel import–is typically defined as the unauthorized importing of a genuine product either intended for a different market or through unauthorized channels. Goods that flow through the grey market can have a staggering impact on the revenue, image, reputation, organization or distribution networks of a company.

Against the backdrop of increased globalization and ubiquitous international exchanges, this webinar will offer a brief outline of the approach to grey market issues in Europe and in the US and suggest some of the tools that can be used by brand owners to combat the grey market from a global perspective.

Moderator: Pete Bromaghim
Speakers: Béatrice Martinet  More Information
                Richard Nelson More Information

Webinar: Managing Influencers and Consumer Content on Social Media

Tuesday, November 22, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.
Presented by the  In-House Counsel Interest Group.


The use of endorsements and testimonials has become a marketing staple. Brands can leverage an influencer's network and reputation to promote its products and services and use social media to solicit consumer endorsements and encourage consumer interaction. While popular and effective, the use of endorsements and testimonials is replete with legal issues. When do endorsements invite FTC scrutiny? How much responsibility or control do brands actually have? Where have others crossed the line and what lessons have we learned from recent enforcement? This presentation will discuss these issues and provide practical guidance for managing risk.

Speakers: Monique Bhargava More Information
                Mark Leonard

Webinar: M&A-Friendly Technology License Agreements

Wednesday, November 30, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.
Presented by the Licensing Interest Group.


Maximizing shareholder value may mean selling the company or its intellectual property. Ensuring that the company's outbound license agreements are M&A-friendly is a paramount objective for tech company counsel. It's especially important to appreciate the unique challenges posed by an exit in the form of an asset purchase, in which the buyer leaves the seller's customer licenses in place after closing. This webinar explores those aspects of technology license agreements that are conducive to such an exit, and those aspects that are not.

Speaker: Sean Hogle More Information

Webinar: Intellectual Property Transactions in Israel

Monday, Decenber 5, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.
Presented by the Licensing Interest Group and the International Law Interest Group.


Technology and intellectual property are a significant percentage of Israel’s exports. This program will address the negotiation of transactions involving intellectual property developed in Israel or held by Israeli entities. Topics include: (1) aspects of Israeli commercial, contract and tax law significant to intellectual property transactions, (2) the role and regulations of the Israel Innovation Authority, and (3) transactions involving intellectual property developed at Israeli research, academic and medical institutions.

Speaker: Eli Greenbaum More Information

Webinar: Using Surveys and Market Research in IP Litigation

Tuesday, December 6, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.
Presented by the  Litigation Interest Group.


Surveys and other market research are increasingly used by courts in assessment of intellectual property damages. This webinar discusses a variety of survey and complimentary market research methods, how they have been used in patent and trademark cases, some guidelines for admissibility, and approaches for validating results.

Moderator: Anne-Marie Dao
Speakers: Anjali Oza More Information
                Peter Hess More Information

Webinar: Checking In On The Defend The Trade Secrets Act

Wednesday, December 7, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.
Presented by the Trade Secrets Interest Group.


On May 11, 2016, President Obama signed into law the Defend the Trade Secrets Act (DTSA)—creating the first federal civil misappropriation of trade secrets claim and marking a major milestone for trade secrets litigation. Since its passage, there has been a significant volume of DTSA cases filed across the nation, with many currently pending. This webinar takes a look at these cases to identify the type of trade secret actions that have taken advantage of DTSA, any significant opinions that have been rendered under DTSA, and what the future may bring for the next wave of DTSA cases. This will be the first State Bar trade secrets interest group webinar devoted to looking at cases since DTSA has passed, and how DTSA is impacting current trade secrets litigation. 

Moderator: Angelique Kaounis
Speakers: Robert Shwarts and Catherine Lui

Generic Competition and Innovation in the Pharmaceutical Industry: REMS Programs and Life Cycle Management/Product Hopping

Thursday, December 8, 2016, 12 noon - 1:30 p.m.

This program offers 1.5 hours participatory MCLE credit.
Co-sponosored by the Antitrust, UCL and Privacy Section.


The Federal Trade Commission (FTC) and numerous courts are currently analyzing reverse payments within the Sherman Act framework the U.S. Supreme Court set forth in FTC v. Actavis. But these analyses are only part of a much larger universe of intriguing issues being generated by the intersection of antitrust law, intellectual property, and pharmaceutical regulation in litigation across the country.  Generic pharmaceutical company, consumer, and enforcer plaintiffs have alleged that brand pharmaceutical companies abuse certain aspects of Risk Evaluation and Mitigation Strategies ("REMS programs"), which are programs the FDA sometimes requires to minimize the risks associated with certain drugs.  Plaintiffs also allege that branded drug companies violate antitrust laws when they engage in a particular business strategy relating to the timing of new product releases, a strategy that plaintiffs call “product-hopping.”  And earlier this year, a bill was reintroduced that would create a separate cause of action for the type of behavior alleged in cases dealing with REMS (the “CREATES Act”).  Our panelists will comment on these and other developments touching on the complex legal and policy issues at the crossroads of pharmaceutical regulation, IP law, and antitrust law.

Moderator: Anna Fabis

Speakers: Cheryl Johnson, Erika Leitzan and Rosanna McCallips

Webinar Paranoia Will Distroya – A Close Look at the Duty of Candor under Rule 56

Monday, December 19, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit in Legal Ethics. 
Presented by the Patent Interest Group.


Rule 56 provides that every individual associated with the filing and prosecution of a patent application has a duty of candor and good faith dealing with the Patent Office. This program will explore the requirements under the duty, its relationship to inequitable conduct, timing of disclosures in prosecution and before the USTPO, conflicts of interest in candor, conflicting rules, considerations in submission, and other concerns. It will also discuss the proposed new rule announced in October 2016.

Moderator: Sanjesh Sharma
Speaker: Mercedes K. Meyer


USPTO Notice of Roundtables and Request for Comments Related to Patent Subject Matter Eligibility

The United States Patent and Trademark Office (“USPTO”) seeks public input on patent subject matter eligibility in view of recent decisions by the Supreme Court and Court of Appeals for the Federal Circuit. The USPTO remains interested in feedback from members of the public to improve the USPTO’s existing subject matter eligibility guidance and training examples. The USPTO is also interested in facilitating a discussion among members of the public regarding the legal contours of eligible subject matter in the U.S. patent system. The USPTO will be facilitating these discussions by hosting two roundtable events. The first roundtable will be held on November 14, 2016 in Virginia and will be directed to receiving feedback from members of the public to improve the USPTO’s existing subject matter eligibility guidance and training examples. The second roundtable will be held at Stanford University on December 5, 2016 and will be focused on receiving feedback regarding larger questions concerning the legal contours of eligible subject matter in the U.S. patent system. The roundtables will provide a forum for discussion of the topics identified in this notice.

DATE/LOCATION for Roundtable 2:  December 5, 2016, 8 a.m. to 5 p.m., Stanford, CA. Written comments are due by January 18, 2017. ADDRESSES: Paul Brest Hall, 555 Salvatierra Walk, Stanford University

FOR FURTHER INFORMATION CONTACT: Requests for additional information regarding registration and speaker presentations should be directed to the attention of Elizabeth Shaw, by telephone at 571-272-9300, or by e-mail at Requests for additional information regarding the topics for written comments and discussion at Roundtable 1 should be directed to Carolyn Kosowski, by telephone at 571-272-7688, or by e-mail at Requests for additional information regarding the topics for written comments and discussion at Roundtable 2 should be directed to Amy Nelson, by telephone at 571-272- 8978, or by e-mail at

Amended TTAB Rules Published in Federal Register 11/7

Amended TTAB Rules Published in Federal Register. Go here for link and for chart summarizing changes.

Congratulations to the 2016 IP Vanguard Award Recipients

The Executive Committee of the IP Law Section is pleased to honor outstanding legal professionals who are spearheading new developments in the world of intellectual property. The IP Vanguard Awards were presented during a special Awards ceremony at the 2016 IP Institute, the flagship event of the Intellectual Property Law Section.

The 2016 honorees are:

In-House Counsel

image of Fred Von Lohmann

Fred Von Lohmann
Legal Director, Copyright
Google, Inc.

Private Practice

image of Heather J. Meeker

Heather J. Meeker
Technology Transactions Partner
O’Melveny & Myers LLP


image of  Honorable Ronald M. Whyte

Honorable Ronald M. Whyte
United States District Court
Northern District of California

Academic or Public Policy

image of Kevin J. Greene

Kevin J. Greene
Professor of Law
Thomas Jefferson School of Law

Thank You for Being a Section Member - Here's 6 Hours MCLE in Legal Ethics!

We're very grateful for your membership in the Section. As a token of that, we're offering six hours of self-study MCLE credit in the area of Legal Ethics. The programs are posted in our Member's Only Area.

Simply watch the programs and read the accompanying materials, and keep track of having done so. You can report this to the State Bar when it's time to demonstrate your compliance with the MCLE requirements.

One Hour MCLE Is Available in the Latest Issue of New Matter

Self-Study CLE Tests One hour of MCLE is available in the current issue of New Matter, the State Bar IP Section's quarterly magazine.

For the Spring issue, you can earn credit for the article Policing the Boundaries of Copyright: Is It Time for the Supreme Court to Step In? by William J. O'Brien. One hour of MCLE credit can be obtained by answering a set of True/False questions.

Log on to the webiste for details. Watch for other MCLE credit available in future issues of New Matter.

Did You Know You Can Track Your CLE Through Your State Bar Profile?

Log into your profile and click on CLE Summary and Tracking Tool. This summary reflects all in person and online participatory classes completed through the State Bar of California.

Note: Future releases will allow you to manually add courses completed through other providers.

Even if this summary reflects you have completed the required 25 hours of MCLE within your compliance period, you must still formally report compliance by submitting your MCLE compliance declaration through My State Bar Profile.

The Trade Secret Treatise Is Available for Order

Members $115/Non-Members $155. Go HERE for a description, and HERE to order. You will need to click on Intellectual Property.

Writers Wanted for New Matter

Inquiries about writing for New Matter, please contact

MCLE Catalog

Featured CLE Program from Our Catalog!


Did you miss it? It's available in our online catalog for CLE credit!

Ethical and Privacy Challenges in Internet Policy

Drawing from his many high profile roles in the business and legal community, Chris Kelly, former Chief Privacy Officer and General Counsel at Facebook, will provide a unique exploration of many of the ethical and privacy challenges that arise from establishing and complying with internet policy.

1 Participatory MCLE Credit in Ethics
More Information

For other Intellectual Property Law Section programs, see and select Intellectual Property Law Section.

Contact Us

We invite you to contact a member of the Executive Committee, or an Interest Group Officer. The IP Section has Interest Groups on:

Or contact the Editors of Inevitable Disclosure, Barbara Friedman and Aurelia Schultz.

The Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105