September 17, 2021

ABA-IPL eNews September 2021

IP Fall Institute

IP Fall Institute

2021 IP Fall Institute 

A CLE Virtual Program

The ABA Section of Intellectual Property Law proudly presents its annual IP Fall Institute, a virtual CLE Program, to be held September 28-30.

This year's IP Fall Institute will feature virtual CLE programs covering various specialty areas and the emerging IP law issues that you need to know for your practice.

Experience these exciting CLE programs:

  • A 40-Year Review of IP Royalty Rates and Deal Structures
  • The IP in API
  • Tracking IT All: IP and Data Privacy and Security Issues for Digital Health Technologies
  • Keeping it Legal – NFTs and Smart Contracts
  • Driving Forward with Autonomous Vehicles and IP
  • Ethical Risks and Best Practices for Working with Foreign Associates
  • IP Licensing in Sports
  • IP Legal Issues Surrounding Streaming Digital Content

Announcing New Keynote Speaker Program Feauring: 

Stephen Lee
Chief Intellectual Property Counsel 
Target Corporation
Minneapolis, MN

Kim R. Jessum
Associate General Counsel
Chief IP Counsel US & Secretary Heraeus, Inc and Global Legal Business Partner Heraeus Medical Components
Yardley, PA
(Moderator)

The virtual program will be just a few CLE programs a day.  Schedule your work activities around attending dynamic CLE programs providing the newest developments and emerging issues of IP law.  

Don’t miss this exceptional institute. Register today, and visit the IP Fall Institute web page for detailed information.

Thank you to our sponsors

Sponsors of IP Fall Institute

Sponsors of IP Fall Institute

Attorney Wellness Committee announces presentation series

The Attorney Wellness Committee invites all ABA-IPL Section members to the first in a series of interesting and thought-provoking presentations on  Friday, October 15, 2021 at 9amPT / 10amMT / 11amCT / 12pmET.

As a fabulous and fitting end to our October IP Well-Being Week, please join us for a Q & A Session with Patrick Krill, Principal & Founder of Krill Strategies. Attorney Krill is the researcher/author of the groundbreaking 2016 ABA Commission on Lawyer Assistance Programs/Betty Ford/Hazelden study that identified the current rates of substance use disorders and mental health issues facing the legal profession.  Attorney Krill is also the co-author of the recent article entitled “Stress, drink, leave: An examination of gender-specific risk factors for mental health problems and attrition among licensed attorneys” which looks at data from California and D.C. attorneys regarding stress, anxiety, problematic alcohol use and the gender disparity around these issues. We will look at some of the highlights from the recent study and also consider best practices/where we go from here to improve the health and well-being of our profession.

All Section members are encouraged to join this committee to lend their voices, support, and participation. For more information or to join this new committee, visit the Attorney Wellness Committee web page.

Kim Jessum takes helm as new Section Chair

Kim Jessum, Philadelphia, PA, was sworn in as the new Section Chair during the 2021 ABA Virtual Annual Meeting. 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. She 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.

Thad Chaloemtiarana elected as Chair-Elect; Steve Caltrider elected as Vice Chair of Section

Thad Chaloemtiarana, Chicago, IL was elected as Chair-Elect of the Section. Previously, he was Vice Chair of the Section. Mr. Chaloemtiarana is a former member of the Section Council. He served as 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 division 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.

Steve Caltrider, Indianapolis, IN was elected as Vice Chair of the Section. Mr. Caltrider previously served two terms on the Section Council. He is a member of the Amicus Briefs Committee. He served as Division Chair and Division Vice Chair of the Patents Division. He served as Chair of the Special Committee on Biotechnology, Chemistry, Medicine, and Pharmacology, the Special Committee on WHO Intellectual Property Policy, the Patent Legislation Committee, the Patent Inter Partes Proceedings Committee and the Plants Committee. He has been Section Liaison to the ABA Health Law Section and the ABA Health Law Coordinating Group. He has served as a member of the Patent Law Reform Task Force, and the Content Advisory Board.

ABA to host Equity Summit: Advancing Diversity, Equity, and Inclusion in the Legal Profession and Beyond

Announcing the ABA Equity Summit: Advancing Diversity, Equity, and Inclusion in the Legal Profession and Beyond—being held virtually September 27-30, 2021. 

The Equity Summit will include first access to a fireside discussion with U.S. Supreme Court Associate Justice Sonia Sotomayor along with 5 CLE programs, 4 Ted-style Talks, and 3 Workshops on an array of diversity, equity, and inclusion (DEI) topics: e.g., interrupting implicit bias, COVID-19’s impact on DEI/legal profession, DEI & Ethics, recruiting/retaining lawyers from diverse backgrounds, creating an inclusive workplace and practice, and leveraging your personal brand to build DEI and leadership. The Equity Summit will also include a virtual networking component and tour/presentation from the National Civil Rights Museum.

Registration for ABA members is $69 (w/ special discounts for govt., public interest, ABA staff, and complimentary for law students). Visit the summit registration page, which includes the agenda at: ambar.org/abaequity21.

New Nominating Committee seeks input

The Section’s Nominating Committee, appointed by Section Chair Kim Jessum, welcomes members’ suggestions for candidates for Officer and Council positions. The Nominating Committee is responsible for nominating members to serve in the following 2022-2023 ABA year positions: Chair-Elect, Vice Chair, Secretary, Revenue Officer, Publications Officer, Membership Officer and CLE Officer (all for one-year terms), Section Delegate to the ABA House of Delegates (for a three-year term expiring in 2025), four new members of Council (all for four-year terms expiring in 2026), and a Young Lawyer Council Member for a one-year term.

The election for these positions will be held at the Section’s Business Meeting in August 2022 during the 2022 ABA Annual Meeting. As specified in the Section’s Bylaws, at the close of the 2022 Annual Meeting, the current Chair-Elect, Thad Chaloemtiarana, will automatically assume the office of Section Chair and the elected Officers and Council members will commence their terms.

The Nominating Committee invites all members of the Section to submit their candidate suggestions as soon as possible.    

Please direct your suggestions to the Chair or any other member of the Nominating Committee, as set forth below:

Mark K. Dickson, San Mateo, CA
650-346-6675
mdickson@phasem.com

George W. Jordan III, Houston, TX
713-651-5423
george.jordan@nortonrosefulbright.com

Veronica Canton, Chicago, IL
312-715-5744
veronica.l.canton@gmail.com

Megan Bannigan, New York, NY
212-909-6127
mkbannig@debevoise.com

Jennifer Criss, Washington, DC
202-230-5648
Jennifer.criss@faegredrinker.com

17th Annual Advanced Mediation & Advocacy Skills Institute slated for November

TheABA Dispute Resolution Section Advanced Mediation & Advocacy Skills Institute will occur virtually November 4-6. This year’s theme is “Mediation Beyond Boundaries: Competencies and Ethics in a Digital World.” Join us for an exploration of new mediation frontiers in a post-pandemic world of technologies and innovations. This three-day virtual Institute features the opportunity to learn from some of the leading authorities in the field - advocates and mediators alike shouldn’t miss it!

Plenaries will include:

  • Early Dispute Resolution -- Protocols for Smarter Processes & Swifter Outcomes
  • Effective “Persuasion” & Persuasion in Mediated Settlement Negotiations -- the Subtle Science Behind Influence
  • ODR -- The Digital Age of ADR is Here to Stay
  • Ethics in the Real World -- How the “Fourth Party” Affects Mediation Ethics
  • International Focus -- The Globalization of Mediation
  • Technology-Driven ADR -- Marketing & Branding for Results

Plenary sessions will be followed by small group discussions led by experts in the field. These discussions provide an opportunity for mediators and advocates to interact in small facilitated groups and create a unique environment to enhance your skill, knowledge and understanding of direct negotiation and third-party mediation processes.

ABA-IPL Section members receive a discounted rate! Register now to receive the $275 early bird rate (expires on October 7).

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.  

Upcoming GRIT Program on September 22 

Register for the “True Grit and Growth Mindset: The Secrets of Success for Lawyers” program on Wednesday, September 22 at 2 PM ET: https://form.jotform.com/212345504616147. The program is co-sponsored by the ABA Litigation Section Woman Advocate and Young Advocates Committees and the ABA-IPL Women in IP Law Action Group (WIP). The featured panel will discuss the science behind the grit and growth mindset, provide self-assessment tools, and share practical advice to incorporate these concepts into professional life. 

Join IAG on September 21 

Attend the next International Action Group (IAG) call on Tuesday, September 21 at 12:00-1:00 PM ET. The action group will host a guest speaker, Pieter Visagie of Adams & Adams in South Africa. Access our flyer for more information on the featured topic, “Patenting of Inventions Created by Artificial Intelligence: A Perspective from South Africa”.  

IAG meets through Zoom the third Tuesday of each month. Save the reoccurring call to your calendar.  

New ABA-IPL Podcast 

On June 11, 2021, the 2nd Circuit vacated the Federal Trade Commission (FTC) decision against 1-800 Contacts and remanded with instructions to dismiss. In this podcast our panel of insiders discuss the 2nd Circuit decision in FTC v. 1-800 Contacts. The decision represents an important development in the antitrust-IP interface area. 

Access the most recent ABA-IPL Podcast to hear from our expert panel co-sponsored by the ABA Section of Intellectual Property Law and the ABA Antitrust Law Section. The panel was moderated by Eileen Cole, Partner, White & Case LLP, and featured speakers Noah Joshua Phillips, Commissioner, Federal Trade Commission, Ryan Shores, Partner, Shearman & Sterling, Gail F. Levine, Partner, Mayer Brown LLC, and Carl Goldfarb, Partner Boies Schiller Flexner LLP.  

The presentation is brought to you by the ABA-IPL Antitrust / Interface Committee.   

Connect with ABA-IPL Ambassadors

Discover how Section leaders received more from ABA-IPL membership on our Ambassador page. The featured testimonies provide insights on how ABA-IPL members strengthened their intellectual property (IP) network and made an impact through ABA-IPL Action Groups and Committees. Each action group and committee has a corresponding community on IPL Connect, where Section members can network and engage in lively discussions. Whether you’re interested in receiving updates on the latest in IP law or getting involved in key IP policy decisions—committee and action group involvement offers opportunities to learn, connect, and/or present.

Learn more about how to maximize your ABA-IPL membership.

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, 2021 through August 31, 2022. Don’t forget to sign-up and check them out.

ABA-IPL provides compelling CLE-accredited webinars that cover a broad range of IP issues. Mark your calendars for these upcoming webinars. Watch the events page on the Section website for information on all upcoming programs and events, and to register. As a special benefit of your membership in the ABA-IPL Section, you are able to participate in all ABA-IPL Section webinars for free during the current Association year (September 1, 2021 – August 31, 2022).

Cryptocurrency, Blockchains, Bitcoins and Non-Fungible Tokens

September 16 at 1pm – 2:30pm EST
Lets chat about what non-fungible tokens ("NFTs") are, why NFTs are so popular these days, and how NFTs relate to intellectual property.

Speakers:

  • Malgorzata “Gosia” Kulczycka, Hickman Becker Bingham Ledesma, LLP, San Jose, CA
  • Eric Dokter, Viering, Jentschura & Partner, Munich, Germany

Register Today

Developing a Patent Portfolio for AI Technologies

October 7-  1pm-2pm EST

There are many misconceptions regarding AI and patents, such as "AI is not worth pursuing protection because software is not patentable" and "it is always better to keep AI as a trade secret." This program is intended to dispel some of these misconceptions and provide general guidance and principles to consider as attorneys seek to help their companies develop meaningful AI patent portfolios.

  • Paul Hunter, Foley & Lardner LLP, San Diego, CA (moderator)
  • Amol Purohit, Chime, San Francisco, CA
  • Stephen Myers, People.ai, San Francisco CA
  • Alison Jimerson, Philips, Cambridge, AL

Register Today 

Landslide Webinar: Breaking Down the Current State of Trademark Functionality Law

October 19 -  1pm-2:30pm

Trademark functionality is one of the most important but also unsettled areas of trademark law. Recent decisions continue to inject uncertainty into the state of the law. This webinar will provide practitioners with a comprehensive update on the current scope of trademark functionality and practical advice for addressing functionality in both prosecution and litigation.

  • Alessandra Masciandaro, Debevoise & Plimpton New York, NY (Moderator)
  • Courtney Thompson , Fredrikson & Byron, P.A., Minneapolis, MN
  • Brent Radcliff, Taylor English Duma LLP, Atlanta, GA
  • Howard Shire, Troutman Pepper Hamilton Sanders LLP, New York, NY

Register Today 

Legal and Tax Considerations for a Remote Inventor World

October 28 -  1pm -2:30pm

With innovators collaborating in new ways to enable continued research and development, a number of legal, ethical, and tax implications may arise. This program will discuss some potential "traps" for the unwary,  as the world transitions to a "new normal" in our protection of intellectual property.

  • David Postolski  Gearhart Law LLC, Jersey City, NJ (moderator)
  • Nechama E Kozlowski, Prager Metis, New York, NY
  • MaCharri Vorndran-Jones, Eli Lilly, Indianapolis, IN

Register Today

Section Advocacy

Comments to USPTO on Generic.com Terms after USPTO v. Booking.com

On August 12, the Section sent comments to the USPTO regarding Examination Guide No. 3-20, “Generic.com Terms after USPTO v. Booking.com.” The letter noted that the Section supports the Supreme Court’s ruling in USPTO v. Booking.com and appreciates the USPTO’s efforts to update examination procedures in light of that ruling. The letter also noted that the Section is concerned that the evidence highlighted in the guidelines for analyzing genericness would lead to results that are not in harmony with Booking.com.

Comments to USPTO on patent eligibility jurisprudence study

On September 2, the Section sent comments to the USPTO in response to a Federal Register Notice calling for comments on the “Patent Eligibility Jurisprudence Study.” The comment letter provided factual information regarding patent subject matter eligibility from a variety of governmental sources to explain the impact of its jurisprudence on jobs, the economy, and U.S. innovation. Further, it restated recently passed ABA-IPL approved positions, including the Section’s testimony before the U.S. Senate Judiciary IP Subcommittee, as well as three recent previous letters to government entities further providing the Section position.

ABA-IPL Divisions and Committees for 2021-2022

All Section members are encouraged to review the committees and select and join those on which they wish to serve, and which are of interest to them. If you are already a member of one of the existing committees, you are carried over as a member in the new association year.

Patents Division

  • Patent Legislation Committee [join]
  • International Patent Laws Committee [join]
  • USPTO Ex Parte Patent and Policy Practice [join]
  • USPTO Post Grant Patent Practice and Policy Committee [join]
  • Chemical and Life Science Patent Committee [join]
  • Patent Litigation Committee [join]
  • Patent System Planning Committee [join]
  • High Tech and Software Patent Committee [join]

Trademarks Division

  • Trademark Legislation Committee [join]
  • International Trademark Laws Committee [join]
  • USPTO Trademark Practice and Policy Committee [join]
  • Trademark Litigation Committee [join]
  • Trademarks and the Internet Committee [join]
  • Advertising and Marketing Law Committee [join]

Copyrights Division

  • Copyright Legislation Committee [join]
  • International Copyright Laws Committee [join]
  • Copyright Office Affairs Committee [join]
  • Visual Arts and Dramatic Works Committee [join]
  • Copyright and Social Media Committee [join]
  • Copyright and Emerging Technology Committee [join]
  • Music and Performing Arts Committee [join]
  • Copyright Litigation Committee [join]
  • Literary Works Committee [join]

Specialized IP Law Division

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

Professional Issues Division

  • Law Practice Management Committee [join]
  • Pro Bono Committee [join]
  • Ethics and Professional Responsibility Committee [join]
  • Attorney Wellness Committee [join]

Business and Trade Division

  • IP Transactions and Licensing Committee [join]
  • International Trade Commission Committee [join]
  • China IP Issues Committee [join]
  • Government IP Rights Committee [join]
  • Monetization and Valuation of IP Committee [join]
  • In-House IP Committee [join]
  • Anti-Counterfeiting and Piracy Committee [join]

Become a Voting Committee Member

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.

NEW FROM ABA-IPL

Author: Marc H. Greenberg

Author: Marc H. Greenberg

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

Author: Chris Scott Graham

Author: Chris Scott Graham

Protecting Trade Secrets Before, During, and After Trial, Second Edition

Editor: H. Wayne Porter

Editor: H. Wayne Porter

Drafting Patents for Litigation and Licensing, Fourth Edition

ABA membership available for groups

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

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

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  • Enjoy dedicated account service from a team of ABA specialists to serve your unique needs

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

Promote Yourself as a Proud Member of the ABA

Put your ABA Membership to work by displaying the new ABA Member Logo to signify your commitment to excellence in the practice of law.

As an ABA Member in good standing, you are encouraged to use this distinguished mark in professional activities to set yourself apart from non-member practitioners in the marketplace.

The ABA Member Logo may appear on:

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Start Using the New ABA Member Logo Today!

www.ambar.org/memberlogo

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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Online: (1) Go to the ABA homepage ( www.americanbar.org), (2) Login, (3) Locate MyABA link (top left of the page), (4) EDIT within the profile module, and (5) update email address.

Section Officers

CHAIR
Kim R. Jessum
Heraeus, Inc.
Philadelphia, PA

CHAIR-ELECT 
Thad Chaloemtiarana
Pattishall
Chicago, IL

VICE-CHAIR
Steve P. Caltrider
Eli Lilly and Company
Indianapolis, IN

SECRETARY
Joshua Simmons
Kirkland & Ellis
New York, NY

FINANCIAL OFFICER
Robert Lytle
Microsoft
Redmond, WA

FINANCIAL OFFICER-ELECT
Paul Morico
Baker Botts LLP
Houston, TX

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

PUBLICATIONS OFFICER
Darrell G. Mottley
Banner & Witcoff, Ltd.
Washington, DC

MEMBERSHIP OFFICER
Sharon A. Israel
Shook, Hardy & Bacon LLP
Houston, TX

CLE OFFICER
Janet Hendrickson
Stinson LLP
St. Louis, MO

SECTION DELEGATES TO
THE HOUSE OF DELEGATES

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

Joseph M. Potenza (2023)
Banner & Witcoff, Ltd.
Washington, DC

William L. LaFuze (2024)
McKool Smith
Houston, TX

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

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