#iplspring 2014

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ABA-IPL USPTO Trademark Ex Parte & Inter Partes Joint Committees

By Sean Cooper

Last week, I joined the United States Patent and Trademark Office (USPTO) Trademark Ex Parte and Inter partes committees at their joint committee meeting at 29th Annual ABA Intellectual Property Law Section Spring Conference. Chair of the Ex parte committee, Francine D. Ward (@Francineward) of the Law Offices of Francine D. Ward,  and Chair of the Inter partes committee, Erik Pelton (@tm4smallbiz) of Erik M. Pelton & Associates, were both kind enough to let me sit in on the joint meeting.  Both committees are very active and have been instrumental in furthering the presence of Trademark attorneys within the Section of Intellectual Property Law.

The Ex parte committee covers practice before the USPTO “with respect to the preparation, filing, and prosecution of trademark applications, the registration of trademarks, and other ex parte trademark matters not within the scope of other committees.” Some of those matters include the administration of trademark examination of the USPTO and ex parte appeals to the Trademark Trial and Appeal board (TTAB). Similarly, the Inter partes committee covers various aspects of inter-parties proceedings before the USPTO TTAB, “including the administration of the Board and its fees and services,” and issues relating to the TTAB Manual of Procedure and the Trademark Rules of Practice.

At the meeting, both committees discussed their recent actions and policy initiatives as well as a few upcoming events. One of those events is the "ABA-IPL Trademark Day: Behind the Scenes at the USPTO" on September 18, 2014. “The program will feature presentations from Trademark Office officials on topics such as electronic application filings, USPTO website tools, TTAB filings and procedures, and more, as well as a live TTAB hearing in the afternoon.“ More information on this and other committee events are available to members of these committees.

Follow these links to view each committee’s web page and learn more about the Ex parte and Inter-parties committees:

USPTO Operations Relating to Trademarks and Ex Parte Trademark Practice

USPTO Inter-Partes Trademark Practice

  The USPTO Trademark  Ex Parte & Inter Partes joint meeting was covered by the following Law Student Reporters:  Sean Cooper (@CoopsIPLawBlog) from Widener University School of Law - Harrisburg and Phillip Turner (@phillip__turner) from Belmont University College of Law.

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters. 

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#CLE Review: Characters and the Law

By Phillip Turner

Great Cesar's Ghost Batman!...Your Batmobile can be protected under copyright law.  I learned many new things including the need to protect characters is a good thing. As speaker and VP of @DCComics noted, "If no one is infringing our characters, then no one is caring about our characters."  Well said.  

Thursday Afternoon's CLE prevented the usual after-lunch nap with a series of great, entertaining presentations that covered all aspects of "Characters and the Law."  To recap, here were the moderator and speakers:

Moderator: David Postolski, Day Pitney LLP, Parsippany, NJ

Speakers: Thomas Crowell, Lane Sash & Larrabee LLP, White Plains, NY Jay Kogan, DC Entertainment, New York, NY Cydney Tune, Pillsbury Winthrop Shaw Pittman LLP, San Francisco, CA

The packed crowd was enthusiastic and attentive throughout the CLE.  On Twitter there were lively commentary from audience members. 

@LegallySparkly If we weren't awake before this panel, we are now! Scream noise played with Frankenstein images; tv themes, etc. #IPLSpring

@Schubert921 OMG Jay Kogan talking about recent Conan Doyle lawsuit argument, greatly discussed in my Note, I'm geeking out so hard right now #IPLSpring

@DianaRemarks Jay Kogan on characters & law: Do any law schools offer Family Guy & the Law yet? #iplspring

@EvanSheres Cyndy Tune @pillsburylaw - Grant of rights in characters must include terms on distribution channels, territories, platforms #IPLSpring

@braunovan Consider giving approval rights to bare bones screenplay as a way to appease subject of bio #iplspring #iplprotip

 The best resource I found for a detailed re-account of the cases highlighted during the CLE is Legal Protection Available to Characters and Character Licensing Objectives.  Cyndey Tune added a great perspective on protection of your characters to prevent unwanted uses (e.g. children characters in adult movies) as well as using contracts as a protection tool.  Thomas Crowell delivered a great presentation concentrating on real-life people as characters.  I think reality TV stars may be characters before they sign the contracts, but Thomas informed us that clients need to read over all the provisions of the contracts.  Some shows may want to "embarrass" people on purpose. 

It was also a pleasure and delight to have David Postolski as moderator.  Check out his interview with me to learn more about David.  Overall, Characters and the Law was a nice escape, but superbly informative and extremely relevant.  I look forward to the next great character - real or fictional - that will fight for their copyright.

The Characters and the Law CLE was covered by Phillip Turner, a first-year law student at Belmont University College of Law in Nashville, Tennessee.

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters.

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#CLE Preview: Trade Secrets: How Businesses Can Effectively Protect their Trade Secrets & Conduct Investigations

By: Michal-Ane McIntosh

What do Microsoft, Boeing, and General Motors have in common? Aside from being Fortune 500 companies, they have all been victims of trade secret theft. At this year's ABA-IPL Spring Conference, I have the pleasure of covering the only Trade Secrets CLE, which will take place on Thursday, April 3rd, at 3:30 p.m. "We will discuss best practices for trade secrets investigation in a digital world," says moderator Robert Milligan (@tradesecretlaws), a partner at Seyfarth Shaw LLP. 

Bruce Pixley, a computer forensics expert with a law enforcement background and founder of Pixley's Forensics Group, will discuss how computer forensics techniques like electronic fingerprinting can assist in trade secret investigations.

Luke Dembosky, a top Intellectual Property attorney for the government, will discuss the government's role in trade secret investigations.

Karen Burgess, a partner at Richardson &  Burgess LLP, will discuss the recent adoption of the UTSA by Texas.

Says Milligan: "The CLE will also be useful for learning how to coach a client through a trade secrets investigation, as well as making tactical choices in trade secrets litigation." 

If you can’t make it to the 29th Annual ABA Intellectual Property Law Section Spring Conferencethis year, you can still follow all the action by following the tweets and blog entries of the ABA-IPL’s Law Student Reporters, who will be covering all the events of the conference on Twitter. You do not have to sign up for Twitter to follow the Law Student Reporters. Just bookmark http://bit.ly/1ixVtOQ and revisit the link from April 2-4, 2014 to follow all the action.

Photo Cred: Malakh Kelevra

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#CLE Preview: Copyright: Copyright Fair Use Transformed? The Evolving Role of the First Factor in the 21st Century

By Sean Cooper

The ABA’s 29th Annual Intellectual Property Law Section Spring Conference is a little more than a week away!  

As we get closer to the conference, the Law Student Reporters are all getting more excited about the CLE panels that the we will be covering at this year’s conference.  One of the panels that I will be covering is entitled “Copyright: Copyright Fair Use Transformed? The Evolving Role of the First Factor in the 21st Century.” The panel will take place from 8:30 a.m. to 10:00 a.m. on Friday, April 4, 2014. 

Though the word “transformative” is not part of the statutory language of Section 107 of the Copyright Act, it has developed into a significant part of the fair use analysis. This CLE panel will provide a high-level discussion of the recent trends by the court to reduce the four-factor fair use test to a single “transformative use” test. One of the goals of the panel, according to presenter Nancy E. Wolff, of Cowan DeBaets Abrahams & Sheppard LLP, is to explore how this court-made analysis has led to an expansive interpretation of fair use.    

Wolff and the other panelists will also share their different perspectives and experiences in reviewing creative works under the fair use analysis. Recent cases will be discussed, including those that involve appropriation art, online image indexing, mass digitization of books, and news aggregation. As part of this discussion, the panel will provide visual examples. Wolff noted that these visuals will let the audience see “the conflict between the exclusive right to create a derivative work (which includes the right to transform a work) and the right of a secondary user to use the creator's work for a different purpose.”

Copyright practitioners, particularly those who have had to wrestle with fair use issues, will not want to miss this panel!

Moderator:

June Besek, Columbia Law School, New York, NY

Speakers:

Robert W. Clarida, Reitler Kailas & Rosenblatt LLC, New York, NY

Joseph Gratz, Durie Tangri, San Francisco, CA

Nancy E. Wolff, Cowan DeBaets Abrahams & Sheppard LLP, New York, NY

If you can’t make it to the 29th Annual ABA Intellectual Property Law Section Spring Conference this year, you can still follow all the action by following the tweets and blog entries of the ABA-IPL’s Law Student Reporters, who will be covering all the events of the Conference on Twitter.  You do not have to sign up for Twitter to follow the Law Student Reports. Just bookmark this site and revisit the link from April 2-4, 2014 to follow all the action.

This CLE program will be covered by Sean Cooper (@CoopsIPLawBlog) from Widener University School of Law - Harrisburg, Rachael Dickson (@LegallySparkly) from DePaul University College of Law, and Anna “AJ” Oakes (@ajoakes) from University of New Hampshire School of Law.

Image Credit: FLICKR / Horia Varlan

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#CLE Preview: Trademark: Best Practices in Filing & Managing Trademarks

By Sean Cooper

The trademark prosecution process can be full of pitfalls and opportunities.  These situations will be covered in much more detail at the “Trademark: Best Practices in Filing & Managing Trademarks” CLE at the ABA’s 29th Annual ABA Intellectual Property Law Section Spring Conference in Arlington, Virginia. The panel will take place from 10:15 a.m. to 11:45 a.m. on Friday, April 4, 2014. 

“Our panel will cover a variety of trademark prosecution issues, from clearance searches to application filing to responding to office actions, as well as some international filings issues,” says presenter Erik Pelton of Erik M. Pelton & Associates, PLLC. The panelists will share information to help attorneys guide clients in selecting protectable trademarks, and will also discuss ways of preparing and managing trademark applications.

“The USPTO.gov website has a wealth of information and tools for trademark practitioners, and I will explore some of those in my presentation,” Pelton wrote, adding that the panel will be beneficial for “anyone who uses the USPTO’s online TEAS filing systems.”  Pelton and the other presenters will all be sharing the lessons they've learned over time.

Whether you are a new attorney or a seasoned trademark veteran, this panel will cover a variety of practical tips that can help make any trademark practice stronger and more efficient.

Moderator:

Francine D. Ward, Law Offices of Francine D. Ward, Mill Valley, CA

Speakers:

Matthew D. Asbell, Ladas & Parry, New York, NY

Cheryl Black, Evergreen Enterprises, Richmond, VA

Erik Pelton, Erik M. Pelton & Associates, PLLC, Arlington, VA (@tm4smallbiz)

If you can’t make it to the 29th Annual ABA Intellectual Property Law Section Spring Conference this year, you can still follow all the action by following the tweets and blog entries of the ABA-IPL’s Law Student Reporters, who will be covering all the events of the Conference on Twitter.  You do not have to sign up for Twitter to follow the Law Student Reports. Just bookmark this site and revisit the link from April 2-4, 2014 to follow all the action.

This CLE program will be covered by Sean Cooper (@CoopsIPLawBlog) from Widener University School of Law - Harrisburg and Dewight Flinch (@DewightFlinch) from Howard University School of Law.

Image Credit: FLICKR / Timothy Vollmer

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CLE Preview: Avoiding Dysfunctional Functional Claims: A Practical Look at Section 112(f)

By: Dewight Flinch Jr.

Last June, President Obama announced an executive action to improve “Clarity in Patent Claims.” In describing this executive action, the USPTO states “Despite improvements to the patent examination process and overall patent quality, stakeholders are concerned about patents with overly broad claims, especially those that use functional language to describe inventions in high-tech fields.”

In the past few months, the USPTO took steps to “improve claim clarity and scrutinize functional limitations”, including training examiners on identifying limitations that invoke 112(f), and creating a clear record when examining functional claims.

Christopher Bullard, partner at Oblon, Spivak, McClelland, Maier & Neustadt says “[t]he panel will provide a robust discussion of the role practitioners should play in establishing a clear prosecution record as to the proper scope of a claim incorporating functional language.”

Gregory Cox, Assistant General Patent Counsel at Eli Lilly and Company adds “[i]t is imperative that the USPTO continues to address the many issues associated with functional claiming, whether it be 112(f) or (a).  It simply cannot be the case that a patentee can attempt to wall off an entire area of research and development with a broad functional claim when neither the support is present in the specification and the means are available to provide an adequate description of the invention.  The public deserves to know the boundaries of the inventive subject matter protected.”

Drew Hirshfield, Deputy Commissioner for Patent Examination Policy of the USPTO explains: “[t]he USPTO recognizes that continually improving the clarity of issued patents will provide better notice to the public of the boundaries of the inventive subject matter protected and therefore, is a key component to enhancing the quality of patents and raising confidence in the patent system. Accordingly, the USPTO will continue to develop strategies to improve claim clarity and enhance the scrutiny of functional claiming to optimize patent quality.”

Alysa Youngson of Hunton & WIlliams stresses the need for practitioners to stay up-to-date: “[t]he USPTO has provided guidance on its website and has identified key PTAB decisions that involve functional claiming.  These recent PTAB decisions highlight the need for practitioners in the electrical and computer arts to know and understand the USPTO’s position on functional claiming.”

Indeed, the panelists all agree that “A key theme from the USPTO is the importance of Examiners and Applicants establishing a clear prosecution record, particularly as to the overlapping questions of broadest reasonable interpretation and the requirements set forth in 35 U.S.C. § 112, as they relate to functional claiming.  Using examples from USPTO’s Examiner training, as well as examples encountered in practice, the panel hopes to engage the audience in a lively and interactive discussion on this important topic."

Moderator:

Christopher Bullard, Oblon, Spivak, McClelland, Maier & Neustadt LLP, Alexandria, VA

Speakers:

Drew Hirshfeld, U.S. Patent & Trademark Office (@uspto), Alexandria, VA

Gregory A. Cox, Eli Lilly and Company (@LillyPad), Indianapolis, IN

Alysa N. Youngson, Hunton & Williams LLP (@Hunton_Williams), Washington, DC

Image Credit: Illustration by Barbara Kelley

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#CLE Preview: “Science & Technology: The Impact of Regulatory & Industry Standards on Patents Sponsored by the ABA Section of Science & Technology Law”

ABA 2013 Annual Meeting, Intellectual Property Section

Thursday, April 3 | 10:15 a.m. - 11:45 a.m | Crystal Gateway Marriott Hotel, Arlington, VA

By Jaewoo Cho (@cjaewoo82)

As technical interoperability standards became critical elements of mobile telephones, laptop computers, digital files, and thousands of other products in the modern economy, the need for understanding and staying up-to-date with intellectual property laws and current issues related to standards is as important as ever.

This CLE program will cover the impact of regulatory & industry standards on patents. Standard Setting Organizations (SSOs) have a large impact on our economy, especially in the area of science and technology since many of those SSO standards describe goods or activities linked to a patent infringement dispute. As the role of SSOs in our economy has increased, so have the number of related patent disputes.

During the CLE program, the panel speakers will be discussing 1) the economic and societal value of standards, 2) standards as infringement evidence for products and activities, 3) menus, ranges, and the inexactness of standards, 4) exclusions, injunctions and the public interest, 4) preemptive strikes for standards, 5) damages considerations for standards cases, 6) the risk of losing the patent by attacking a Standard, and 7) international approach to patents and standards. The Panel will also discuss about the Abbreviated New Drug Application (ANDA).

The program will be moderated by Michael A. Hawes, partner at Baker Botts LLP in Houston TX. Additional program speakers include Jorge Contreras (@contreraslegals) at American University Washington College of Law in Washington, DC; David R. Hale, TD Ameritrade in Columbia, MD; Jessica R. Herrera–Flanigan (@jesirae) at Monument Policy Group in Washington, DC; and Michael Kinch at Yale University in West Haven, CT.

If you can’t make it to the 29th Annual ABA Intellectual Property Law Section Spring Conference this year, you can still follow all the action by following the tweets and blog entries of the ABA-IPL’s Law Student Reporters, who will be covering all the events of the Conference on Twitter. Also, if you’re not a twitter user, you can still follow the Law Students’ real-time reporting and conference-goers’ tweets by bookmarking http://bit.ly/ IPLSpring and revisiting the link during April 2-4, 2014.

The “Science & Technology: The Impact of Regulatory & Industry Standards on Patents Sponsored by the ABA Section of Science & Technology Law” CLE program will be covered by the following Law Student Report: Jaewoo Cho (@cjaewoo82), a third-year law student at American University Washington College of Law.

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4th Annual Law Student Reporters Program

The Law Student Action Group of the American Bar Association Section of Intellectual Property Law presents the 4th Annual Law Student Reporters Program

  The Law Student Action Group (LSAG) is excited to announce the return, for the fourth year in a row, of the American Bar Association’s Section of Intellectual Property Law (ABA-IPL) Law Student Reporters Program.  The Law Student Reporters (LSR) program was created to provide an opportunity for law students to attend ABA-IPL's IP programming while engaging and interacting with IP practitioners from around the world at the largest ABA-IPL event of the year -- the Intellectual Property Law Conference in Washington, D.C. The conference will take place April 2nd - April 4th at the Crystal Gateway Marriott Hotel in Crystal City, VA. You can find out more information about the conference at the official website, located here. This year will mark the the 29th anniversary of the conference and we want you to be a part of it!

APPLY:

We will begin accepting applications on January 8th, 2014. The deadline to return your completed application for early decision is Monday, January 27th, 2014. Applications will be accepted until February 24, 2014 although preference will be given to early applications, so get your application in as soon as possible. Download the application.

ELIGIBILITY:

- Applicants must be a member of the ABA-IPL and its Law Student Action Group. Membership for both groups is free, with your paid ABA law student membership.

- Applicants must be currently enrolled at an ABA-accredited law school.

LSR REQUIREMENTS:

Applicants must be available to attend and report on all three days of the conference.

Reporters are expected to prepare a minimum of three pre-conference posts that provide a preview of their assigned events.

Reporters must have a Twitter account and Tumblr account. You can create them for free when you apply.

Post a professional biography to the LSAG Tumblr account.

Attend and tweet during assigned CLE programs using the #IPLSpring hashtag.

Attend and tweet during assigned Non-CLE Events using the #IPLSpring hashtag.

Attend assigned ABA-IPL committee meeting(s).

Author “CLE Recap” blog articles for LSAG’s blog (sample: http://lsag-aba-ipl.tumblr.com/post/47966953610/cle-review-copyright-infringement-in-patent)

*Please  note that travel and accommodations are not provided for participants; however, most past participants have successfully received funding from their respective law schools to cover travel and accommodations in connection with the program.  Read more about getting funding from your school.

Have any questions? Feel free to reach out to Heather Schubert ([email protected]).