green booklet
2019-2020
NYIPLA Board of Directors ................................................................................................................ 2-3 Year in Review by Kathleen E. McCarthy ........................................................................................... 4-7 Annual Meeting ............................................................................................................................... 8-12 Committee Reports .......................................................................................................................... 13-30 Annual Report of the Treasurer ........................................................................................................ 31 98th Annual Dinner in Honor of the Federal Judiciary ........................................................................ 32-33 Hot Topics in Intellectual Property Law ............................................................................................. 34 One-Day Patent CLE Seminar ........................................................................................................... 35-36 Events ............................................................................................................................................. 37-40
www.nyipla.org
ASSOCIATION ANNUAL REVIEW
Treasurer Abigail Langsam
Gene W. Lee
Douglas R. Nemec
2019 - 2020 Board of Directors
Irena Royzman
KATHLEEN E. MCCARTHY NYIPLA President 2019 - 2020
Immediate Past President Peter E. Thurlow
Marian Underweiser
Patrice P. Jean
President-Elect Colman B. Ragan
Robert J. Rando
President Kathleen E. McCarthy
First Vice President Robert M. Isackson
Marc J. Pensabene
John T. Moehringer
Second Vice President Heather M. Schneider
Alicia A. Russo
Standing: Robert J. Rando, Irena Royzman, Marc J. Pensabene, Patrice P. Jean, Gene W. Lee, Douglas R. Nemec, Alicia A. Russo, John T. Moehringer Sitting: Dyan Finguerra-DuCharme, Peter E. Thurlow, Colman B. Ragan, Kathleen E. McCarthy, Heather M. Schneider, Abigail Langsam
Secretary Dyan Finguerra-DuCharme
members
officers
By: kathleen e. mcarthy, NYIPLA President
2019 - 2020 Year in Review
So much happened, both planned and unplanned, during the year that the NYIPLA entrusted me with the role of President. Despite many unexpected challenges, the Association stayed true to its mission, accomplishing many of its goals: The Association is established to maintain the honor and dignity of intellectual property law, including patents, trademarks, copyrights and trade secrets; to promote the development and administration thereof; to advance the education of the members of the bar and the public in that field of law; and to cooperate with foreign associations in harmonizing the substance and interpretation of international conventions for the protection of intellectual property. These accomplishments would not have been possible were it not for the dedication, hard work and creativity of our members and the tremendous efforts and organizational skills of NYIPLA’s trusted association management consultants, Feikje van Rein and her team at RRR Associations. I am indebted to all of you for your help and support and honored to have served as NYIPLA President from May 2019 to May 2020. What now feels like the most significant happening of the year was actually an event that did not happen, as we had to postpone our signature social event, the Annual Dinner in Honor of the Federal Judiciary. Due to restrictions in place to address the global pandemic, we were unable to gather in person in March 2020, as our association has for nearly 100 years, to honor the public service, hard work and dedication of our federal judges at our annual dinner. Nevertheless, looking back over the year, it is clear that even without the dinner the Association fostered many opportunities for its members, through our various continuing education programs and forums, to interact with and express our appreciation for our federal judges outside of the courthouse, to learn from their experiences and share with them our experiences, and to communicate with them about the challenges we all face practicing intellectual property law in a world of rapidly-changing technology and unexpected remote participation challenges. In the past year, the Association was honored with the presence of numerous current and former federal judges who generously donated their time for the benefit of our members and the continued development of the law. The association hosted and sponsored numerous events in which our federal judges participated, supported and organized by our committees: the Honorable Kara Stoll, Circuit Judge of the U.S. Court of Appeals for the Federal Circuit, served as a Keynote Speaker for our 35th Annual Joint Patent Practice Seminar in May 2019; the Honorable P. Kevin Castel and the Honorable J. Paul Oetken, U.S. District Court, Southern District of New York, and the Honorable Brian M. Cogan, U.S. District Court, Eastern District of New York, served as judges for our 6th Annual Summer Associate Second Circuit Moot Court argument addressing important patent issues based on the Supreme Court TC Heartland and Alice/Mayo decisions in July 2019; the Honorable Maryellen Noreika, Judge, U.S. District Court for the District of Delaware, the Honorable Charles Bullock, Chief Administrative Law Judge, U.S. International Trade Commission, and the Honorable John Lifland (Ret.), U.S. District Court for the District of New Jersey, participated in a panel discussion entitled “Patent Litigation: A View from the Bench” in September 2019; the Honorable Faith Hochberg (Ret.), U.S. District Court, District of New Jersey, the Honorable Gregory Sleet (Ret.), U.S. District Court for the District of Delaware, and the Honorable Shira Scheindlin (Ret.), U.S. District Court for the Southern District of New York, served as panelists at a diversity scholarship event sponsored by our sister association, the NYIPLEF, in October 2019; the Honorable Richard Sullivan, U.S. Court of Appeals for the Second Circuit, participated in our President’s Forum on Online Platform Liability held at the Second Circuit Courthouse in December 2019; the Honorable P. Kevin Castel, U.S. District Court for the Southern District of New York, participated in an online webinar providing views from the bench relating to addressing COVID-19 in April 2020; and the Honorable Leonard P. Stark, Chief Judge of the U.S. District Court for the District of Delaware, participated in an online webinar providing views from the bench relating to addressing COVID-19 in May 2020. In turn, the Association continued to offer its support to the federal judiciary through its very active Amicus Brief Committee, always busy intently studying IP issues percolating in the courts and submitting dozens of amicus briefs on important intellectual property law issues, including the following during the past Association year alone: United States Patent and Trademark Office, Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office v. Booking.com B.V., No. 19-46, February 19, 2020. Brief of Amicus Curiae New York Intellectual Property Law Association in Support of Respondent. Arthrex, Inc., v. Smith & Nephew, Inc., Arthrocare Corp., No. 18-2140, December 30, 2019. Brief for Amicus Curiae New York Intellectual Property Law Association in Support of Intervenor's Petition for Rehearing En Banc. Thryv, Inc., FKA Dex Media Inc., v. Click-to-Call Technologies, LP, et al., No. 18-916, October 18, 2019. Brief of Amicus Curiae New York Intellectual Property Law Association in Support of Respondents. Athena Diagnostics, Inc., Oxford University Innovation Ltd., and Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V. v. Mayo Collaborative Services, LLC, DBA Mayo Medical Laboratories, and Mayo Clinic, No. 19-430, October 18, 2019. Brief of Amicus Curiae New York Intellectual Property Law Association in Support of Petitioner. Laura Peter, Deputy Director, Patent and Trademark Office v. Nantkwest, Inc., No. 18-801, June 25, 2019. Brief of Amicus Curiae New York Intellectual Property Law Association in Support of Respondent. Booking.com v. United States Patent & Trademark Office, et al., No. 18-1309, May 16, 2019. Motion for Leave to File Amicus Curiae Brief and Brief of New York Intellectual Property Law Association as Amicus Curiae in Support of Petitioner. With the postponement of our dinner, we were unable to present in person our Outstanding Public Service Award to the Honorable Roslynn Mauskopf, the Chief Judge of the United States District Court for the Eastern District of New York. Chief Judge Mauskopf spent more than 30 years in public service, serving first as an Assistant District Attorney in New York County, next as Inspector General of the State of New York, and then as the U.S. Attorney for the Eastern District of New York before being appointed to the federal bench in 2007. In her 13 years as a federal judge, Chief Judge Mauskopf handled many intellectual property cases ranging from patent cases involving wet filter technology to trademark cases involving marks as famous as ROLLS ROYCE and copyright cases involving plush toys called PILLOW PETS. Chief Judge Mauskopf is a keen supporter of associations like the NYIPLA, consistently volunteering to provide us with her humor, grace and wisdom at intellectual property law events. The NYIPLA is proud to recognize Chief Judge Mauskopf with this well-deserved Outstanding Public Service Award and is looking forward to the time when we can present Chief Judge Mauskopf with the award in person. NYIPLA also had many opportunities throughout the year to acknowledge the central roles in our intellectual property law system of the United States Patent and Trademark Office and the United States Copyright Office and our members welcomed opportunities to interact with both offices on important patent, trademark and copyright policy initiatives. We will soon be honored by the participation of Andrei Iancu, the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, in a webinar presentation planned for June 2020. On the day of our Annual Meeting in May 2019, we presented a roundtable discussion providing an “Update on Copyright and Trademark Legislation and Enforcement,” as well as a panel discussion on “PTAB Estoppel, Post-SAS: Perspectives” from the PTAB Chief Judge and Practitioners.USPTO officials also participated in our Trademark Law Committee’s annual Trademark Update: A Discussion with a USPTO Policy Maker and a TTAB Decision Maker in March 2019. We offered written comments on trademark and copyright initiatives to the USPTO, the Congress, and the Copyright Office though the efforts of our Copyright Committee and our Trademark Committee. We kicked off the Association year at our Annual Meeting on May 14, 2019. At our dinner, we were honored to present the Inventor of the Year Award to Dr. Sharon Shacham of Karyopharm Therapeutics, who was recognized for her significant research that led to the development of an oral cancer treatment, Selinexor, and provided us with inspiring remarks regarding her journey as an inventor. We also honored the recipients of the Conner Writing Competition, with the First Place prize going to Kelsie Kelly of Brooklyn Law School and the Second Place prize to Samantha Zurcher of Boston College Law School, as well as the NYIPLEF Diversity Award winners, Patrick Lee of St. John’s University School of Law, and Jasmine Whyte of Columbia Law School. The Trademark Committee presented its popular annual half day program in July 2019. The event featured a Keynote Address from Lesley Fair, Senior Attorney, Federal Trade Commission’s Bureau of Consumer Protection, on the state of the law and good practice with regard to advertising claims.Panels were presented on Trademarks In Bankruptcy: The Supreme Court Finally Speaks; an update from the TTAB with a presentation by the Hon. Mark A. Thurmon, Deputy Chief Administrative Trademark Judge, TTAB; Great White North Cheat Sheet: What You Need To Know About The Amended Canadian Trademarks Act; Generic But Incontestable? A Trademark Paradox; Recent Developments—Ethics in Trademark Practice. The Fashion Law Committee also presented a robust panel discussion and debate on the issue of Drawing the Line Between Trademark Use and Fair Use in the Context of Style and Product Namesin October 2019, featuring in-house panelists. On the patent side, our Patent Practice, Patent Litigation and PTAB Committees were extremely active, presenting the November 2019 One-Day Patent CLE Seminar, with panels on Reasonable Royalties, Apportionment, and Overseas Profits: Assessing Patent Damages; Diversity Initiatives: Practical Strategies; Legislative Update; Interactive Ethics Panel: NY Social Media Guidelines; Inside View for Working with the USPTO; and, through contributions from our IP Transactions Committee and Women’s Committee, a panel on IP Transaction Panel: Patent and Non-Traditional IP Diligence in Technology Transactions, and a Keynote address from the Honorable Freda Wolfson, Chief Judge, U.S. District Court for the District of N.J. We also hosted PTAB panels in December 2019 and February 2020, entitled “PTAB’s Use of Discretion to Deny Institution of a PTAB Proceeding” and “PTAB Precedential Opinion Panel’s (POP) decision in Hulu, LLC v. Sound View Innovs.”Along with the Women’s Committee, another panel presentation in February addressed “BPCIA Litigation - Lessons from the Trenches.” Pivoting quickly to webinars this Spring, the Committees presented “Patents and COVID-19: Facts and Guidance from the NYIPLA” and “Managing International Patent Portfolios in Wake of the Coronavirus Outbreak.” Our committees also presented numerous practical webinars on topics of interest to the membership including “How & Why Clients Buy IP Services - Understanding the Marketing Conundrum;” “Law Firm Rankings - Why They Matter and How To Improve Your Results;” “What Law Firms Need to Know About the CARES Act;” “Deposition Skills;” “An Overview of District Court Responses to Coronavirus;” and a “Negotiating Skills Panel” that focused on diversity and inclusion. We also were lucky enough to be able to meet in person for many largely social occasions such as a Women in IP Law Happy Hour, an In-house Counsel – Young Lawyers Happy Hour, and a Happy Hour hosted by the NYIPLA Young Lawyers and open to all area law students. We also presented a panel discussion at St. John’s School of Law on Diverse Careers in Intellectual Property Law & Strategies for Achieving Success. In December 2019, 35 NYIPLA members and guests gathered at the Thurgood Marshal Federal Courthouse in Manhattan to discuss and debate the current state of online platform liability in the U.S. A lively discussion ensued lead by facilitators: Honorable Richard Sullivan, United States Court of Appeals for the Second Circuit providing the view from the bench; Deputy Director Derek Benner, U.S. Immigration and Customs Enforcement providing the view from law enforcement; Professor Eric Goldman, Santa Clara University School of Law providing the view in favor of continued Section 230 protection; Professor Felix Wu, Benjamin N. Cardozo School of Law providing the view in favor of increased regulation for commercial speech; Ronald Chillemi, Senior Vice President and Senior Counsel, Business Affairs, Fanatics, Inc. providing the view from a brand owner; and Chris Israel, American Continental Group, providing an update from Capitol Hill. I am deeply thankful and honored for the opportunity to serve as President and very much looking forward to continue working with the Association as we continue our efforts to fulfill its mission. Best Regards, Kathleen (Katie) E. McCarthy NYIPLA President
2:00 PM - 3:15 PM
annual meeting of members
Cocktail Reception
5:30 PM - 6:00 PM
Chris Israel, American Continental Group Anthony Lo Cicero, Amster Rothstein & Ebenstein
5:30 PM - 8:30 PM
2019 Inventor of the Year award
Hon. Giles S. Rich diversity scholarship
Hon. Scott Boalick, Patent Trial and Appeal Board Jeffrey Price, Kramer Levin Naftalis & Frankel Ksenia Takhistova, Hunton Andrews Kurth Moderator Robert Rando, The Rando Law Firm
Kelsie Kelly & Samantha Zurcher
committee meetings
welcome nyipla incoming president
Dr. Sharon Shacham
2019 Annual Meeting
United States District Court, District of New Jersey
keynote speaker
CLE Program I
2019 Hon. William C. Conner Writing Competition Awards
3:30 PM - 4:30 PM
Kathleen E. McCarthy
PTAB ESTOPPEL, POST-SAS: PERSPECTIVES FROM THE PTAB CHIEF JUDGE AND PRACTITIONERS
Annual Meeting May 14, 2019 The Princeton Club, 15 west 43rd street, New york
board meeting
4:30 PM - 5:30 PM
1:45 PM - 2:00 PM
CLE Program II
Awards Dinner Program
Registration and refreshments
On May 14, 2019, incoming Association President Kathleen E. McCarthy welcomed members and guests at the Princeton Club of New York. Kathleen expressed her appreciation for outgoing president, Peter G. Thurlow. Keynote speaker Honorable Jose L. Linares United States District Court, District of New Jersey
Recognized for her significant research that led to the development of an oral cancer treatment, Selinexor.
Update on copyright and trademark legislation and enforcement
St. John's University School of Law
Honorable Jose L. Linares
The 2017-2018 NYIPLA Copyright Law & Practice Committee comprises 16 attorneys and law students sharing the common goals of advancing dialogue on emerging issues in copyright law, supporting the various initiatives of the NYIPLA and its other committees relating to copyright law, and building a community of copyright attorneys through in-person events and regularly scheduled meetings. The Committee held a kick-off happy hour at the beginning of the year, and has since convened for monthly teleconferences focusing on notable copyright decisions, including Goldman v. Breitbart News, LLC, Fox News Network, LLC v. TVEyes, Inc., and Oracle America, Inc. v. Google, Inc., as well as pending copyright legislation, including the CASE Act of 2017 and various music reform bills. In March, the Committee hosted its second in-person meeting featuring guest speaker Nicholas M. O’Donnell, author of A Tragic Fate: Law and Ethics in the Battle over Nazi-Looted Art. Over the past year, the Committee has collaborated with other NYIPLA Committees. In particular, the Copyright Committee worked with the Legislative Action Committee to contribute to discussions on pending music reform legislation. The Copyright Committee authored a working draft of a White Paper in February of this year, providing analysis and proposed recommendations. One of the Committee’s members is presently drafting a summary of the current bill for The Report. Recently, the Committee provided feedback on a proposal for an amicus brief in Syngenta Crop Protection, LLC v. Willowood, LLC. We will also have a Committee-member speaker at the CLE program at the NYIPLA Annual Meeting on May 15 entitled Predictability & the Standard of Review in IP Cases.
First Place Winner rachel horn
Inventor of the Year Award
Amicus Brief Scope of the Committee: To coordinate the activities of the Association relating to preparation and submission of amicus briefs, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Aron Fischer and David Goldberg board liaison: Robert Isackson and Irena Royzman members: Thomas Bean, Daniel Brooks, Mark Chapman, Scott Forman, Melvin Garner, Noah Leibowitz, Jeffrey Lewis, Charles Macedo, Sara Margolis, Charles Miller, Frederick Millett, Marc Pensabene, Steven Purdy, Robert Rando, Alicia Russo, Christina Sauerborn, Ksenia Takhistova, William Thomashower, Kathleen Waybourn, Calvin Wingfield Over the past year, the Association has continued its strong history of representing its diverse intellectual property constituency before the courts through the activity of its Amicus Briefs Committee, which coordinates the activities of the Association in the preparation and filing of briefs amicus curiae. Since the last Annual Meeting on May 14, 2019, committee members participated in the preparation and filing of five briefs in the Supreme Court and one in the Court of Appeals for the Federal Circuit. In the Supreme Court, the committee filed briefs on the merits in Peter v. Nantkwest, Inc. (the Supreme Court unanimously agreed with the committee’s position that attorneys’ fees are not “expenses” payable by appellants in actions brought under Section 145 of the Patent Act), Thryv, Inc. v. Click-to-Call Technologies, LP (regarding the ability of the Federal Circuit in an appeal of an IPR final written decision to review the PTAB’s 35 U.S.C. § 315(b) time-bar determinations), and United States Patent and Trademark Office v. Booking.com B.V. (regarding when it is appropriate to consider survey evidence in evaluating whether a purported trademark is generic). The committee also filed briefs in support of Petitions for Certiorari in Booking.com B.V. v. United States Patent and Trademark Office (pending, similar to the issue in Nantkwest, regarding whether attorneys’ fees are “expenses” payable by appellants in actions brought under Section 1071(b)(3) of the Lanham Act) and Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC (denied, regarding patent eligibility in the context of medical diagnostic procedures). In the Federal Circuit, the committee filed a brief in support of the United States’ petition for rehearing en banc in Arthrex, Inc. v. Smith & Nephew, Inc. (denied, regarding the constitutionality of administrative patent judges and the Panel’s remedy of making them into “inferior officers”). The Committee has 24 official members, but roughly 45 members of other Committees have also participated in our Committee’s monthly meetings over the past year. Twenty-five of these Association members have participated as authors on the amicus briefs discussed above. During the past year, the Supreme Court ruled on four cases where the committee filed briefs on the merits, namely Peter v. Nantkwest, Inc. (see above), Iancu v. Brunetti (holding, consistent with the Association’s position, that the Lanham Act’s prohibition on registration of trademarks that are immoral or scandalous discriminates based on viewpoint is unconstitutional), Return Mail, Inc. v. United States Postal Service (holding that a federal agency is not a “person” who may petition for post-issuance review under the AIA and adopting, in part, the position advocated by the Association), and Mission Product Holdings, Inc. v. Tempnology, LLC (holding, in line with the Association’s reasoning, that under Section 365, a debtor’s rejection of an executory contract in bankruptcy, such as a trademark license, has the same effect as a breach outside bankruptcy, and that such an act cannot rescind rights that the contract previously granted). The Supreme Court also denied certiorari in cases that the Association thought should be heard, namely Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC (see above) and RPX Corp. v. Chan Bond LLC (whether the Federal Circuit can refuse to hear an appeal by a petitioner from an adverse final written decision in an IPR proceeding on the basis of a lack of a patent-inflicted injury-in-fact, when Congress has statutorily created the right for dissatisfied parties to appeal to the Federal Circuit). The Federal Circuit ruled on and adopted, in part, the position advocated by the Association in Syngenta Crop Protection, LLC v. Willowood, LLC (regarding whether the Copyright Act conflicts with the Federal Insecticide, Fungicide, and Rodenticide Act, and how to interpret Section 271(g) governing imported products). Finally, the Court of Appeals for the Fourth Circuit adopted, in part, the position advocated by the Association in and Brammer v. Violent Hues Productions, LLC (regarding copyright fair use determination). The Association’s participation in these cases ensured that the intellectual property community’s voice was heard by the courts in their deliberations on these important issues. The Amicus Brief Committee will continue its commitment to represent the Association’s interests in all areas of intellectual property law in the courts in the year to come. copyright law & practice Scope of the Committee: To consider all aspects of United States, foreign and multi-national copyright law and practice, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Tatsuya Adachi and Lauren Emerson board liaison: Kathleen McCarthy members: Matthew Abbott, Erol Akpinar, Stephen Ankrom, Jeremy Boczko, Andrew Brassler, Daniel Brooks, Deirdre Clarke, Britton Davis, Robert Fischer, David Jones, Alexandra Mitton, Christine Rosenblatt, Mitchell Stein, Joshua Weigensberg The 2019-2020 NYIPLA Copyright Law & Practice Committee comprises 17 attorneys and law students sharing the common goals of advancing dialogue on emerging issues in copyright law, supporting the various copyright-related initiatives of the NYIPLA and its other committees, and building a community of copyright attorneys through in-person events and regularly scheduled meetings. In January, the Committee hosted a joint in-person social event with the Trademark Law & Practice Committee. Throughout the year, the Committee convened for monthly teleconferences featuring presentations on notable copyright decisions, including Georgia, et al. v. Public. Resource.org, Inc., Allen v. Cooper, and Google LLC v. Oracle America, Inc., in addition to copyright legislation, including the Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2019. The Committee remains committed to engaging in public discourse concerning important copyright-related issues. In the past year, the Committee drafted comments on behalf of the NYIPLA in response to the USPTO’s NOI concerning intellectual property protection for artificial intelligence innovation, as well as the U.S. Copyright Office’s NOI concerning publication-related issues that arise in the context of the copyright registration application process. The Committee continued to advise the NYIPLA in connection with its copyright-related discussions within the broader intellectual property community, including making recommendations to the Board concerning proposed copyright legislation. The Committee also has several copyright-focused podcast episodes in the works, which will be featured as part of the NYIPLA’s Pod Bites series. Corporate Scope of the Committee: To consider intellectual property issues having an impact on in-house intellectual property counsel, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Steven Purdy and Laura Sheridan board liaison: Marian Underweiser members: Michele Antis, Michelle Burke, Jeffrey Butler, Andrew Chien, Tulloss Delk, Paul Diamond, Kevin Ecker, Stephanie Grenald, Joshua Harris, Karen Horowitz, Brian McCloskey, Gerard McGowan, Rakesh Roy, John Ryan, Mark Schildkraut, Lou Sorell, James Sterner, Cheryl Wang, Paula Wittmayer The Corporate Committee had a productive year, with regular meetings designed to provide its members with meaningful and relevant content. A highlight of the year was an in-person lunch meeting hosted by Goodwin Procter, following up on last year’s roundtable event on gender diversity in innovation. At the lunch, a representative of IPO presented on their gender diversity in innovation toolkit, and committee members continued the conversation on how to improve on this front. The Committee also heard from Volunteers of Legal Service (VOLS), who shared information on opportunities for IP-related pro bono support through their Microenterprise Project. Other meetings included outside experts speaking on a variety of topics. Chris Israel of American Continental Group once again joined a meeting to share an update on activity in DC; partners from Quinn Emanuel, Kirkland & Ellis, and Desmarais joined a panel on the topic of "What Outside Counsel Want"; and David Leason and Ed Ellis of Leason Ellis LLP led our committee in a conversation on the topic of design patent strategy for in-house counsel. The Committee held its annual in-person mixer in September, inviting Young Lawyers Committee members to once again join the event. As a new twist, we included a “fireside chat” with Corporate Committee members, sharing perspectives on career growth. Fashion Law Scope of the Committee: To consider established and developing intellectual property issues specific to the fashion industry and to make recommendations with respect thereto to the Board of Directors. co-chairs: Karla Aspiras and C. Laure Sawaya board liaison: Dyan Finguerra-DuCharme members: Erol Akpinar, Anna Antonova, Daniela Brumer, Eve Chowdhury, Lauren Ciaccio, Deirdre Clarke, Gregory DeSantis, Dwana Dixon, Simone Dvoskin, Karolina Ebel, Christine Feller, Lindsey Fleischman, Lara Giray, Murielle Henriquez, Tim Hirsch, Ryan Klarberg, Nicoletta Ranieri, Jolie Schenerman, Gabrielle Simon, Laura Tsang, Lindsey Utrata, Cheryl Wang, Hongtao Wang, Bryttni Yi The Fashion Law Committee (“Committee”) had 25 active members this year. The Committee corresponded extensively, conducted multiple meetings, contributed to NYIPLA publications and amicus briefs, and organized several CLE events. In October 2019, the Committee organized and conducted its kick-off program entitled “Drawing the Line Between Trademark Use and Fair Use in the Context of Style and Product Names” held at the offices of Pryor Cashman LLP. CLE was offered and the presentation discussed the impact of Hard Candy v. Anastasia, an 11th Circuit case that examined whether the use of a cosmetics’ company’s longstanding and famous house mark HARDCANDY by another cosmetics company as the shade name for one its products constitutes trademark infringement or a descriptive fair use. The program was well attended and had 71 registered attendees. The keynote speaker was Barbara Kolsun, a leading fashion industry attorney and a Professor of Practice of Fashion Law at Cardozo Law School in New York City where she teaches Fashion Law and related courses, and the co-editor of both Fashion Law - A Guide for Designers, Fashion Executives and Attorneys, as well as Fashion Law the first casebook covering the emerging issues in fashion law. In addition to Ms. Kolsun, the program also featured several distinguished speakers: Jessica Heiss, Vice President and Trademark Counsel for The Estee Lauder Companies Inc. and Jessica Elliott Cardon, Deputy General Counsel for Perfumania Holdings, Inc., the perfume retailer, and its related entities, including Parlux Fragrances and Five Star Fragrances. The Committee is presently planning another program in the Fall of 2020. Hon. William c. Conner writing competition Scope of the Committee: To publicize and conduct a law school writing competition on an intellectual property law topic, and to make recommendations to the Board of Directors with respect thereto. co-chairs: Richard Brown and Keith McWha board liaison: Gene Lee The Committee solicited and reviewed entries for the William C. Conner Writing Competition. The announcement of the competition was posted on the NYIPLA website in September 2018. In December 2018, notice was sent to professors at a number of law schools to ask that the writing competition announcement be posted to ensure the students were aware of the opportunity. The Committee received 18 submissions in 2019. This was an increase of 7 from the previous year, and still shy of the number of submissions that has been typically received over the last five years (~25). From those submissions, the Committee selected the top two submissions and sent them to the NYIPLA Board for its consideration. The Board agreed with the recommendations of the Committee and selected the following as first and second place submissions: Winner: Rachel Horn, "Not Just Aereo 2.0: Locast, Free TV, and Section 111’s Exemption for Nonprofit Retransmission Services" Runner-up: Danielle Marino, "An Illicit Love Affair: How The United States’ Legal Landscape Coupled With Social Media Has Created A Fast Fashion Firestorm" The NYIPLA notified the winners and arranged for the presentations to be made directly to the recipients in an online format, rather than in-person at the Annual Dinner, which was cancelled in 2020. inventor of the year (ioty) award Scope of the Committee: To consider intellectual property issues having an impact on in-house intellectual property counsel, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Brian Prew and Ksenia Takhistova board liaison: Patrice Jean The 2020 Inventor of the Year Award Committee received multiple high-quality submissions for consideration, including a couple repeat submissions. It presented its top two choices to the Board for discussion and approval, and the Board agreed with the Committee’s recommendation. At the NYIPLA Virtual Annual Meeting on May 12, 2020, the Association formally announced the 2020 Inventor of the Year Award Winner, Dr. Rajiv Joshi. Dr. Joshi, a key Technical Lead Researcher and Staff Member at the IBM Watson Research Center for over 35 years, was recognized for his pioneering work in advancing the electronic industry and improving artificial intelligence capabilities. His research led to breakthrough discoveries related to the scaling of Moore’s law, increasing the computing power of a processor, utilizing machine learning in statistical techniques for big data analysis, and improving memories for data storage capabilities. As the drive for miniaturization and computing power continued, Dr. Joshi’s discoveries in material science, including novel compounds and chemical and vapor deposition techniques, helped to achieve miniaturization of electronic circuits. As a result, Dr. Joshi’s fundamental inventions are part of almost all computing devices such as servers, mainframes, laptops, smart phones, wearable devices, healthcare electronics, and others—and have made a valuable contribution to society. Dr. Joshi’s discoveries also include techniques for predicting failure of electronic circuits utilizing machine learning, which optimize the circuit yield to minimize fabrication losses. Accordingly, his unique computer memory designs have increased data storage capability immensely. Dr. Joshi is an IEEE Fellow, a member of IBM Academy of Technology, the winner of several coveted national and international awards and an inventor with over 250 US and over 350 international patents. The inventions for which he was recognized as the 2020 Inventor of the Year include: Integrated Circuit Interconnect for Low Power, U.S. Patent No. 6943105; Predictive Failure Analytics and Applications to Machine Learning, U.S. Patent No. 8214190; and Integrated Circuit Memory and Its Usage to Hardware Accelerators for Artificial Intelligence, U.S. Patent No. 8670281. The Committee Co-chairs would like to recognize and thank the Committee for another successful year and their excellent work researching, reviewing, and ranking the submissions. We also want to thank our Board liaison, Patrice Jean, for her help, guidance and support along this process. ip transactionS Scope of the Committee: To consider issues and agreements that IP practitioners frequently encounter in connection with intellectual property and technology licensing, development, ownership, and sale including in M&A transactions, and to make recommendations to the Board of Directors regarding emerging issues and educational topics related thereto. chair: Kevin Moss board liaison: Kathleen McCarthy members: Omobolaji Bedu, Rita Berardino, Sunha Cha, Andrew Chien, Hallie Cohen, Paul Diamond, Karolina Ebel, Kevin Ecker, Robert Fischer, Yemeserach Getahun, Lara Giray, Justine Gozzi, Dov Hirsch, Patrick McClay, William Ogden, Daniel Rabinowitz, Michael Ritter, Diana Santos The IP Transactions Committee (“Committee”) has 18 active members. This past year, the Committee conducted multiple conference calls and organized a CLE event. This event took place on November 13, 2019, and was titled “Patent and Non-Traditional IP Diligence.” The Committee organized this event in collaboration with the Women in IP Law Committee. The program also featured several speakers, including Jeanne C. Curtis, Director at CDF Consulting, Nora E. Garrote, Partner at Venable LLP, Khue Hoang, Partner at Reichman Jorgensen LLP, Chloe Steadman, Vice President and Underwriter at Euclid Transactional, and Dorothy von Hollen, Vice President and Corporate Counsel for Intellectual Property at Prudential Financial, Inc. Members of the Committee participate in monthly phone calls and discuss various IP transactions-related topics. Going forward, the committee plans to continue holding monthly calls, put on another CLE panel or webinar, organize in-person meetings and a social event. Legislative Action Scope of the Committee: To evaluate proposed federal and state legislation and rules, including USPTO and Court rules, that may impact patent and other intellectual property issues; to develop positions and recommendations on the proposed legislation and rules for consideration by the NYIPLA Board of Directors; and to communicate the NYIPLA's positions and recommendations to the legislative and rule-making bodies, as approved by the Board. co-chairs: Anthony Lo Cicero and Jeffrey Butler board liaison: Robert Isackson and Colman Ragan members: Erin Austin, Dorothy Auth, Andrew Berks, Daniel Brownstone, Jennifer Deneault, Mitchell Epner, Annemarie Hassett, Michael Johnson, James Major, Daniel McGlynn, Robert Rando, Joshua Rothman, Alicia Russo, Lynn Russo, Lou Sorell, Ksenia Takhistova, Clifford Ulrich, Carolyn Wall The Legislative Action Committee continues to support the Association in monitoring proposed and pending legislation of interest to its Members and to the intellectual property committee in general. This past year a principal focus (especially through the Committee’s active Pharma Subcommittee) has been on considering issues relating to various life sciences-related legislation, including pay-for-delay settlement bills, various pharma pricing bills, and other bills proscribing so-called ‘product hopping’ and ‘patent thicketing,’ among others. We also are studying and providing guidance on COVID-19-related IP issues, including the presentation of at least one webinar on that expansive topic. Members of the Committee participated in various Roundtables (in Washington, DC) related to subject matter eligibility (Section 101). The Committee also coordinated with the Trademark Committee regarding proposed amendments designed to address concerns about fraudulent trademark applications, the “cluttering of the trademark register,” and the presumption of irreparable harm in trademark infringement cases. We also have formed an active Subcommittee reviewing and providing guidance on design patent legislation. We are actively observing and advising on the IPR Center (the National Intellectual Property Rights Coordination Center, part of ICE). patent law & Practice Scope of the Committee: To consider all aspects of patent laws and practice which affect the right of United States entities in technology, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Jonathan Berschadsky and Carl Wischhusen board liaison: Robert Rando members: George Badenoch, James Barabas, Thomas Bean, Andrew Berks, Nicholas Bertram, Daniel Brownstone, Sunha Cha, Jeffrey Colin, Mario Derevjanik, Tyler Doh, Joy Goudie, Karen Horowitz, Jose Jimenez, Fritz Klantschi, Alan Koller, John Laurence, Whitney Lott, James Major, Karen Mangasarian, Patrick McClay, Gerard McGowan, Clint Mehall, Charles Miller, Douglas Nemec, Lewis Popovski, Jason Poulos, Jeffrey Price, Gregory Rabin, Michael Ritter, Ryan Schneer, Karan Singh, Clifford Ulrich The mission of the Patent Law & Practice Committee is to monitor, study, and promulgate changes in U.S. patent law and regulations and U.S. Patent & Trademark Office (USPTO) internal practice and to publicly participate in USPTO rule making, practice changes, and policy initiatives on behalf of the NYIPLA. In pursuit of these objectives, the Committee: monitors and circulates Federal Register notices relating to USPTO rule making and practice; prepares formal submissions on behalf of the NYIPLA to Federal Register notices where the USPTO is seeking comment(s) from the public and/or practitioners; and holds monthly in-person and/or telephonic meetings to discuss recent Federal Register notices, recent USPTO announcements and practice before the Office generally, recent court decisions of note, and any other developments which affect patent practice and patent practitioners. The Committee also contributes articles to The Report, participates in NYIPLA Continuing Legal Education panels and courses, cooperates with other NYIPLA committees on issues relating to patent law, regulations, and practice. This year, the Committee continued to monitor and participate in the USPTO’s Patent Quality Initiative, which seeks to improve the quality of patents through changes to internal USPTO practices. The Committee also continued to monitor issues relating to the USPTO handling of patent eligibility under Section 101. Our Committee co-chair, Jonathan Berschadsky, led a panel discussion at the One-Day Patent CLE in November 2019 on the topic “Inside View for Working with the USPTO.” The panel included, Stefanos Karmis, the Director of the Office of Patent Quality Assurance at the USPTO and patent practitioners, including a former patent examiner. We also hosted a luncheon prior to the CLE at the request of the USPTO with Mr. Karmis and Daniel Ryman, Associate Commissioner for Patent Quality, and a number of our committee members, to discuss the Patent Quality Initiative, give feedback to the USPTO as stakeholders, and learn about future plans for addressing patent quality at the USPTO. patent Litigation Scope of the Committee: To consider legislation and rules affecting practice and procedural matters in intellectual property litigation outside the Patent and Trademark Office, and other matters relating to practice in such litigation, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Mitchell Epner and Steven Rizzi board liaison: Marc Pensabene members: Kenneth Adamo, Joseph Akalski, Erin Austin, George Badenoch, James Barabas, Nicholas Bertram, Mark Bhuptani, Anna Brook, Kenneth Canfield, Nicholas Choi, Jeffrey Colin, Neda Dadpey, Jennifer Deneault, Tyler Doh, Bindu Donovan, Chi Eng, Scott Forman, Jacqueline Genovese-Bova, Eric Greenwald, Dov Hirsch, Irene Hudson, Richard Koehl, John Laurence, Steven Luksenberg, Sara Margolis, Whitney Meier Howard, Sheila Mortazavi, Lewis Popovski, Robert Rando, Ashley Ross, Joshua Rothman, John Stellabotte, Ron Vogel, Liza Walsh, Joshua Whitehill, Jason Williams, Sebastian Zonte The Patent Litigation Committee enjoyed an active and successful 2019-2020 committee season. We held monthly teleconference meetings, which provided a regular forum for personal interaction among members and insightful discussion. Our Committee also continues to take steps to expand participation by more junior lawyers, including working with the Young Lawyers Committee. Beyond monthly meetings, we sponsored or co-sponsored a number of Association-wide events, including: On September 19, 2019, the Patent Litigation Committee of the NYIPLA sponsored a Judges Panel with distinguished jurists from three of the most important venues for patent litigation in the United States. The District of Delaware’s newest member of the bench, Judge Maryellen Noreika, was joined by Chief Administrative Law Judge Charles Bullock, the longest serving ALJ at the International Trade Commission, and retired Judge John Lifland of the District of New Jersey in an engaging discussion moderated by Steven Rizzi of King and Spalding; On February 11, 2020 we co-sponsored with the Women’s Committee, a biosimilars program titled “BPCIA Litigation – A View From The Trenches” with panelists Karen Shen, Senior Corporate Counsel, Pfizer, Heather M. Schneider,Partner, Willkie Farr & Gallagher, and Irena Royzman, Ph.D., Partner, Kramer Levin, which was moderated by Katherine Helm, Ph.D., Partner,Dechert; and On March 24, 2020, we sponsored a webinar titled “An Overview Of District Court Responses To Corona Virus” with panelists Kenneth Adamo, owner, Law Offices of KRAdamo, Irene Hudson, Partner, McGuireWoods, and Zachary Travis, Associate, Willkie Farr & Gallagher. After an active and successful year behind us, the committee looks forward to carrying the momentum into the 2020-2021 season. programs Scope of the Committee: To formulate and present a series of monthly continuing legal education programs of interest to the broad spectrum of the Association's membership, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Jonathan Auerbach and Jenny Lee board liaison: Heather Schneider members: Elana Araj, Ronald Coleman, Yemeserach Getahun, Patrice Jean, Lynn Russo, William Thomashower This year the Programs Committee continued its service to NYIPLA Members by providing high quality programs, informative presentations, and distinguished keynote speakers. Committee members have been meeting on a weekly basis to provide to plan and coordinate various programs throughout the year. Its slate of programs includes, among others, the annual Full-Day Patent Program in November, the annual summer moot court program before the Second Circuit, and various webinars in lieu of the Day of Dinner Program. The Programs Committee was honored to present, in conjunction with the Second Circuit Court of Appeals, the Sixth Annual Second Circuit Moot Court Argument CLE Program on July 9, 2019. The proceedings were held at the Thurgood Marshall Courthouse and presided over by the Honorable P. Kevin Castel, the Honorable Brian M. Cogan and the J. Paul Oetken, United States District Court Judges for the Southern District of New York and the Eastern District of New York sitting by designation. Participants from four different member firms presented oral arguments based on a hypothetical fact pattern for issues that are at the forefront in current patent litigation: (1) proper venue under the TC Heartland decision; and, (2) Section 101 patent eligible subject matter under the SCOTUS Alice/Mayo framework. We thank Board and Programs Committee Member Robert Rando for his continued efforts in making this program a success year after year. On Thursday, November 13, 2019, the NYIPLA Programs Committee hosted its annual One-Day Patent CLE Seminar at The Princeton Club, which was a success. This year’s program included five panels, a luncheon keynote speaker, and an interactive luncheon presentation. The Programs Committee was honored to have Chief Judge Freda Wolfson, District of New Jersey as the Keynote Speaker for this program and participants from the USPTO in two of our panels this year. The program began with an insightful discussion relating to reasonable royalties when assessing patent damages and addressed questions of calculating damages in patent litigation from the point of view of in-house counsel, outside counsel, and economic experts. The second panel of the day tackled the important issue of diversity and inclusion within our profession. Panelists from the USPTO, in-house and a law firm discussed issues concerning diversity, and tools and strategies for implementing diversity within organizations. The Legislative Action Committee presented a panel providing a timely update of pending and proposed legislation that could have significant impact on areas of intellectual property. Our lunchtime interactive CLE program addressed social medial use for lawyers and New York State Bar Association’s guidelines concerning social medical use. The Programs Committee also collaborated with the Patent Law Committee for a moderated panel about interactions with the USPTO and included a discussion about the inner workings of the USPTO. The panel included Stefanos Karmis, Senior Advisor for the Office of the Deputy Commissioner for Patent Quality from the USPTO. He discussed patent quality, how examiners are trained, and the resources/opportunities available to practitioners and their applicants. The panel additionally included a former patent examiner, who provided insight from the point of view of an examiner. The Women in IP and the IP Transactions Committees presented the last panel of the day discussing IP diligence in technology transactions. The Programs Committee was also honored to have slated participation from District Court Judges and the Executive Branch at the Day of Dinner Luncheon originally scheduled for March 20, 2020. That program was unfortunately postponed in view of the current COVID-19 emergency. However, the committee has worked to organize a series of webinars for NYIPLA Members providing timely updates regarding the state of litigation and patent practice in view of the current state of emergency.We thank the Patent Litigation and Patent Law Committees for providing rapid and timely updates regarding district courts’ responses to and practical guidance in managing patent portfolios in view of the current state of emergency in webinars on March 24 and 26, 2020, respectively. Additional webinars include information for law firms about the recently passed CARES Act (April 17, 2020), discussions regarding current state of the courts with Judge P. Kevin Castel of the Southern District of New York (April 23, 2020) and Chief Judge Leonard P. Start of the District of Delaware (May 5, 2020) and a discussion with Director Andrei Iancu of the USPTO (to be scheduled for May). We also thank the Legislative Action Committee for working with us to provide a webinar regarding current and potential legislation affecting patent rights in the face of the COVID-19 epidemic (April 28, 2020). The Programs Committee has also been coordinating with other committees of the NYIPLA to help facilitate scheduling and planning of various events for the Association so that the in-person events are well-attended while we continue to deliver valuable content to our membership. The Committee solicited programming ideas and proposed dates from various committees of the Association throughout the year and facilitated collaboration and coordination between committees to provide a slate of robust programming that is logistically feasible for the Association calendar. The Programs Committee also provided additional support in the planning of various events throughout the year. The success of the Committee’s programs could not have been achieved without the hard work and dedication of all of the members of the Committee, the Committee’s Board liaison, Heather Schneider, and the NYIPLA administrative office to whom we are grateful. PTAB Scope of the Committee: To provide thought leadership in legislation, rules and litigation relating to post-issuance proceedings before the Patent Trial and Appeals Board ("PTAB"), and to make recommendations to the Board. Also to provide lectures and information on latest trends and practice pointers for practice before the PTAB and appeals from PTAB decisions. co-chairs: Kenneth Adamo and Charles Macedo board liaison: Peter Thurlow members: Mark Chapman, Linnea Cipriano, Sharon Crane, Frank DeLucia, Mario Derevjanik, Chi Eng, Eric Greenwald, Joshua Harris, Michael Johnson, Fritz Klantschi, Alan Koller, Christopher Lisiewski, Steven Luksenberg, William Marsillo, Charles Miller, Brian Murphy, Rikesh Patel, Marc Pensabene, Stuart Pollack, Jeffrey Price, Daniel Rabinowitz, Robert Rando, John Stellabotte, Chandler Sturm, Kathleen Waybourn, Margaret Welsh, Gerard Reinhardt In 2018, the Association established the Patent Trial and Appeals Board (“PTAB”) Committee to provide thought leadership regarding legislation, rules and litigation practice with respect to post-issuance proceedings heard by the PTAB, and to make recommendations to the Board in connection therewith. Since then, the Committee has attracted nearly 40 members (including counsel working in-house and attorneys in private practice) and has been active both in developing a forum where practitioners can discuss legal developments affecting post-issuance proceedings, and in providing practical recommendations to improve PTAB practice by submitting comments on U.S. Patent & Trademark Office (“USPTO”) proposed revisions to PTAB rules. Over the past year, in addition to monthly calls where the Committee discusses the latest cases and trends involving PTAB practice, it hosted two live meetings. On December 11, 2019, the Committee sponsored a panel presentation on the PTAB’s use of discretion to deny institution of a PTAB proceeding and featured Hon. William M. Fink, Vice Chief Administrative Patent Judge at the USPTO. On February 4, 2020, the Committee hosted another live lecture entitled “PTAB Precedential Opinion Panel’s (POP) Decision in Hulu, LLC v. Sound View Innovs.” that featured former PTAB Administrative Patent Judge and PTAB Committee member Brian Murphy. The Committee had another live panel planned for April 7, 2020 featuring Lead Administrative Patent Judge Michelle Akenbrand to discuss the PTAB’s motion to amend practice in PTAB proceedings along with the Precedential Opinion Panel’s (POP) decision in Hunting Titan Inc. v. DynaEnergetics GmbH & Co. KG. However, due to the pandemic, the Committee has postponed this panel until national and local health conditions permit. Additionally, several PTAB Committee members have participated in the NYIPLA’s new Pod Bites Series, which discusses current issues and developments in intellectual property law. The PTAB Committee, in conjunction with the Amicus Brief Committee, also prepared and submitted an amicus brief in Arthrex v. Smith & Nephew, Inc. on December 30, 2019 on behalf of the Association. The amicus brief encouraged the full Court to accept rehearing en banc of the October 31, 2019, Panel Decision, which declared PTAB APJs principal officers that were appointed in violation of the Appointment’s Clause of the U.S. Constitution, and implemented a “fix” going forward by removing Title 5 protections to PTAB APJs. In a split decision, the Federal Circuit denied rehearing en banc. The PTAB Committee’s activities continue to ensure that the intellectual property community actively debates important issues affecting PTAB practice, and that the intellectual property community’s voice is heard by the USPTO in their deliberations on PTAB-related issues. The PTAB Committee will continue its commitment to represent the Association’s interests at the PTAB in the year to come. trade secrets Scope of the Committee: To consider all aspects of internet and privacy law in the United States, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Laura Chubb and Mark Schildkraut board liaison: John Moehringer members: Rachel Blitzer, Douglas Nemec, Jessica Sblendorio A.2019-2020 Updates Monthly Meetings. We conduct monthly meetings. Committee member Jessica Sblendorio of Haug Partners continues to provide the Committee with an update on the latest developments regarding the Defend Trade Secrets Act and trade secrets law generally. Guest Speakers on Trade Secrets Steve Kayman, partner at Proskauer Rose LLP and professor at Brooklyn Law School, spoke for approximately 45 minutes on the topic of: Available Resources for Recovering Your Client’s Misappropriated Trade Secrets. He discussed the various options available to corporate clients to effectuate such recovery – law enforcement, courts (civil action, criminal action), etc. He also touched on the roles of outside and inside counsel in this regard. Yunchuan (“Y.C.”) Zhou, a partner at the Saelink law firm in Beijing, China, will be speaking at the May 2020 Committee Meeting for about 30 minutes on: the implications of the terms of the recent U.S./China trade deal as those terms relate to IP issues and specifically trade secrets. Y.C. was an IP judge in China for 14 years and has been in private practice since then. Trade Secret Podcast. The Trade Secrets Committee submitted five podcast segments on the topics of trade secrets, in which an in-house lawyer, former prosecutor and outside counsel weighed on practical topics. Episodes (30-40 minutes each): Cross-Committee Support. The Trade Secrets Committee has invited the Cybersecurity Committee members to attend the meetings in which we have guest speakers. trademark law & practice Scope of the Committee: To consider all aspects of trademark law and practice, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Michael Cannata and Scott Greenberg board liaison: Dyan Finguerra-DuCharme members: Giselle Ayala, James Bikoff, Jeremy Boczko, Andrew Brassler, Eve Chowdhury, Laura Chubb, Ronald Coleman, Ursula Day, Nicole Della Maggiore, Christine Feller, Nicholas Forgione, David Goldberg, Jacqueline Hatherill, Murielle Henriquez, David Jones, Brian McCloskey, Dorna Mohaghegh, Christine Rosenblatt, Mitchell Stein, William Thomashower, Hongtao Wang The Trademark Law & Practice Committee (“Committee”) had 24 active members this year. The Committee corresponded extensively, conducted multiple meetings, contributed to NYIPLA publications, amicus briefs and legislative activities, and organized several CLE events. In July 2019, the Committee organized and conducted its annual Half-Day program entitled “Hot Topics in Trademark Law.” The keynote speaker was Lesley Fair, Senior Attorney with the Federal Trade Commission’s Bureau of Consumer Protection, who addressed critical legal and practical issues concerning advertising claims. The program also featured Honorable Mark A. Thurmon, the Deputy Chief Administrative Trademark Judge for the Trademark Trial and Appeal Board, who provided a comprehensive overview and update concerning the Trademark Trial and Appeal Board, as well as several expert panels and lecturers on topics including trademarks in bankruptcy proceedings, the new Canadian trademark statute, and ethics issues pertaining to intellectual property practice. From October 2019 through March 2020, members of the Committee, on the NYIPLA’s behalf, actively participated in U.S. Congressional activities relating to potential new trademark legislation intended to deal with false claims of use within trademark applications and registrations, as well as related aspects of trademark enforcement. The Committee’s participation included attending two discussion roundtables held at the House of Representatives in Washington, related reporting to the NYIPLA Board, and the preparation of written comments which the NYIPLA submitted to Congress in connection with this proposed legislation. These activities have led to the introduction of a bill, entitled the Trademark Modernization Act of 2020, which has now been introduced on a bicameral and bipartisan basis. The Committee, together with the Copyright Law & Practice Committee, held an after-work networking and social event on January 29, 2020, at Pennsylvania 6. Members of the Committee participated in the preparation of an amicus brief submitted by NYIPLA in February 2020 in the SCOTUS case of Iancu v. Booking.com B.V., which deals with issues of genericness of claimed trademarks and the use of consumer survey evidence in such cases. On March 2, 2020, at the offices of Pryor Cashman LLP, the Committee conducted its annual CLE presentation entitled “Trademark Update: A Discussion with a USPTO Policy Maker and a TTAB Decision Maker,” presented by Kathleen Cooney-Porter, Mary Beth Mylesand Dyan Finguerra-DuCharme. The Committee is presently planning its 2020 Half-Day “Hot Topics in Intellectual Property Law” CLE program. Due to the COVID-19 pandemic, the NYIPLA has decided not to conduct this program as a single live program in July, as in other years. Instead, this program will be conducted as a series of individual webinars. The lead-off, “keynote” webinar of this series will be John Welch and Ted Davis presenting a summary of their popular annual survey of noteworthy trademark decisions on July 23, 2020. The additional presenters and topics for the subsequent webinar presentations are in the planning stages. Finally, throughout the year, members of the Committee prepared summaries of interesting and noteworthy decisions from the TTAB for inclusion in each edition of The Report. us Bar - European patent office liaison council delegates: Laura Brutman and Thomas Spath The 35th Annual Meeting of the US Bar-EPO Liaison Council was held in Washington, DC on September 24, 2019, and was attended by representatives of U.S. bar associations and IP organizations, and a former Council chair who remains professionally active. Laura Brutman and Tom Spath participated on behalf of the NYIPLA. The meeting opened with a presentation by EPO President, Antonio Campinos, who was in his second year in office, and gave a second presentation later in the day to outline the EPO's strategic plan through 2023; he also attended a private luncheon at the Washington Marriott hosted by the U.S. Bar delegation. The EPO was represented by four other top-level officials who provided the customary overview and made presentations in nine selected aspects of Office operations during the course of the day. (An index and copies of the presentations provided by the EPO are available at the Association website.) During his opening remarks, President Campinos noted that he had completed personal meetings with over 1,000 EPO staff members since taking office and that the results of a staff satisfaction survey were "not thrilling", but did provide "good engagement" by the staff. Item of Interest to US Practitioners President Campinos reported on a meeting with a group of German patent attorneys from several prominent local patent firms that had written an open letter critical of the EPO's "speedy"examination goal as adversely affecting the quality of searches and examination, and limiting the number of office actions before a Summons to Oral Proceedings is issued. He pointed out that 60% of applicants avoid Oral Proceedings and secure claims. Examiner are apparently being encouraged to consider amended claims and contact applicants' representatives promptly following submission of the Main and any Auxiliary claims in order to reach agreement and have the Summons withdrawn. As to similar complaints from the examiners, President Campinos stated: "Examiners will learn to run faster." These responses imply that President Campinos is determined to meet the goals of the EPO for a reduction in the time from filing to issue of the Initial Search Report, and in reducing the overall pendency time to grant,or other final disposition. Examination: Staffing, Goals and Achievements It was reported that the EPO presently includes a staff of 4,500 scientists and engineers,and maintains the largest patent and prior art library in the world. An incoming application file is reviewed for referral to the right examination "team" and examiner. Artificial intelligence (AI) technology is being used to identify the most appropriate division and examiner. Patentability decisions are made by at least two and sometimes three examiners in a division. The EPO's current goals are as follows: ISR and WO in 6 months: actual 4.5 months; Final decision in 15 months: actual 22.4 months; and Opposition decision in 15 months: actual 19.6 months for non-complex oppositions involving only one opposer. Quality review of prosecution histories for procedure and formalities and the quality of the search will be increased from about 750 to 1,500 annually. Developments The EPO has continued its efforts to improve productivity,even in the face of an almost 4% increase in filings over the prior year. There was an increase of more than 10% in granted patents, with a total of over 120,000 projected for 2019. Extension states were increased by 2 with the addition of Bosnia-Hertzogovina and Montenegro; Cambodia, Moldova, Morocco and Tunisia have entered as validation states and discussions with OAPI regarding validation are on-going. The translation activity continues to increase with 28,000 requests per day having been reported. PCT Practice Via the EPO It had been announced in a previous year's meeting that there would be no inflation-based annual fee adjustment for the years 2018-2020,and there was no mention at this year's Council meeting of a fee increase in the future. (In the meantime, a modest fee increase of about 4% effective 1 APR 2020 has taken effect. The EPO produces more International Search Reports (ISR) than any other PCT ISA,and 96% of the ISRs were issued in time to be included in the A1 publication. The EPO commenced the program for the early start of Chapter II examination on July 1,2019. A pilot has been initiated for IP5 offices with a combined examination report to be produced for up to 100 applications from each of the IPS offices. The recent IP5 Collaborativesearch and examination pilot program was only briefly discussed since the initial application quota had been met prior to the closing date in September 2018; participation will reopen in July 2019 for English-language applications. As indicated by the title of the pilot program, the draft ISR and WO for each application will be shared at an early stage among examiners in the IP5 offices. A favorable combined report will be a significant benefit to the applicant and could lead to much earlier issuance of the national/regional patents that could otherwise be expected. PCT Direct PCT Direct has been fully operational since last year and is available for use at all Receiving Offices; credit card payments can be made via the On-line Payment Portal. The EPO recommends that Applicants wishing to participate in PCT Direct should do so via a PCT or EPO first filing. Applicants submit the PCT Direct Letter with a track-changes copy of the application as amended based on the ISR issued by the FFO. One financial issue is that the local national office must subsidize the EPO's processing. Computer Implemented Inventions The EPO's activities in the field of software patenting, or computer implemented inventions (CII) have been reaffirmed with annual updates and improvements to the CII content in the official Guidelines of Examination. After the claims of a new application have been preliminarily identified as being directed to CII, the application is assigned to an intradisciplinary technical division and three examiners are designated to review the case both initially and during prosecution. Additional CII training has been put in place throughout the entire EPO operational realm, and continuing enhancement of the CII internal practice and the Guidelines is being implemented. Artificial Intelligence (AI) and Inventorship The EPO accepts in principle that inventions in the field of AI are patentable and subject to the same standards for determining novelty and inventive step as other established technical fields. Of particular importance is that AI inventions be disclosed in a manner that is sufficiently clear and complete in order to be carried out by a person skilled in the art,and the customary definitions and standards will be applied to these statutory terms. In answer to the question of "whether AI can be recognized as an inventor," the EPO has determined that the "inventor" must be a person and the one who makes a contribution to the invention's conception. A programmer or the person who trains Al will be considered as an inventor and should be identified in the Request as such. It was also noted that based on information exchanged at a conference attended by representatives of other patent offices, it appeared that a generally consistent and uniform approach to the examination and patenting of AI has been developed. Cooperation with Standards Development Organizations (SDOs) In the past, the EPO's reliance on industry standards development documentation has apparently been challenged on the basis that it was not publicly available, i.e., that it was secret or confidential information among the members of the standards setting organization. The status has now been clarified by way of agreements with the SDOs. At the end of 2017,over 3 million documents from these sources were in the database and available to EPO examiners and in that year there were nearly 22,000 citations of standards documents,representing an increase of more than 12% over 2016. In one earlier analysis (2015), it was estimated that up to 12% fewer patents were issued as a result of standards documentation citations. User-Driven Early Certainty (UDES) The EPO's so-called "Early Certainty" Initiative is based upon the premise that expediting the examination of applications and issuing decisions in oppositions is better for both applicants by enabling timely and well-reasoned decisions and help secure investment, especially for small entities. The asserted benefits to the public are (1) providing a better overview of the state of the art to innovating competitors and (2) avoiding "blind spots" in long-pending European patent applications. (In this context, see the discussion under the EPO's consideration of the option to defer examination.) The three principal goals which the EPO has set for itself are reporting the search within six months, completing examination (on average) within 12 months and in concluding oppositions in non-complex cases within 15 months. The backlog of examination requests for 2018 was estimated at approximately 160,000,with a projected issuance of 210,000 examination reports, achieving a net decrease in the backlog of 50,000 applications. Productivity increases are apparently being achieved by providing incentives to examiners to move new cases along, in some instances by issuing a summons to oral proceeding at a relatively early stage. As mentioned at the beginning of this report, a group of European patent attorneys from several well-known German law firms signed an "open letter" expressing concern that the examiner incentive program had a potentially deleterious effect on the quality of both the search and the examination, and could result in a less then thorough assessment of cases by the Office. us Bar - japan patent office council delegates: Raymond Farrell and John Pegram The following is the report to the Board of the NYIPLA US Bar—JPO Liaison Council delegates, John Pegram and Raymond Farrell: The biennial delegation trip of the US Bar—Japan Patent Office Liaison Council to Tokyo for meetings with the Japan Patent Office and the Intellectual Property High Court was held on October 17-18, 2019. At the Japan Patent Office (JPO), the US Bar delegates were updated with presentations by the JPO on recent JPO statistics and initiatives; the Hantei (advisory opinion) system for Standards Essential Patents (SEPs); the newly refreshed J-PlatPat patent database; Recent Revision of the IP Act in Japan; and JPO Examination Case Examples of AI-related Inventions. US Bar delegates presented on recent developments of the USPTO and US Congress; PTAB Updates; and Patent Eligibility in the US. The meeting with the JPO concluded with a free discussion of US Bar experiences practicing before the JPO and JPO tips and observations for US applicants. The US Bar/JPO Liaison Council hosted a reception for JPO meeting participants and Judges of the IPHC at the Tokai University Club. As with prior delegation trips, the US Bar Liaison Council also conducted a second day of meetings at the Intellectual Property High Court (IPHC) with IPHC judges. Following opening remarks by the Chair of the Council and Judge Yoshiyuki Mori of the IPHC, the IPHC gave presentations on a Recent Grand Panel Judgment on Damages Calculation, Case No. 2018 (Ne) 10063, decided June 7, 2019; and Establishment of the Inspection System and IP Mediation in Japan. The US Bar delegates presented on Patent Infringement Damages Calculations in the US.; and an Update on Patent Eligibility in the US. The next meeting with the JPO in the US has not been scheduled yet due to the COVID-19 circumstances. If there are any patent prosecution or enforcement issues that NYIPLA members would like to raise to the JPO, please contact either John Pegram or Ray Farrell for consideration and conveyance to the JPO during our next meeting with them. Women in ip law Scope of the Committee: To facilitate and empower women in their practice of intellectual property law, and to make recommendations with respect thereto to the Board of Directors. co-chairs: Alexandra Awai and Jessica Copeland board liaison: Abigail Langsam members: Michele Antis, Elana Araj, Rita Berardino, Rachel Blitzer, Michelle Burke, Alexandra Burushkina, Veronique Charles, Laura Chubb, Linnea Cipriano, Hallie Cohen, Neda Dadpey, Stephanie DelPonte, Jacqueline Genovese-Bova, Justine Gozzi, Stephanie Grenald, Irene Hudson, Jung Min Kim, Whitney Lott, Karen Mangasarian, Whitney Meier Howard, Suzanna Morales, Sheila Mortazavi, Amanda Rabbat, Ashley Ross, Diana Santos, Christina Sauerborn, Carolyn Wall, Liza Walsh The Women in IP Law Committee had a successful year in 2019-2020, hosting CLE and networking events, in addition to committee meetings. On November 13, 2019, during the One-Day Patent CLE Seminar, the Committee coordinated a panel on “IP Transaction Panel: Patent and Non-Traditional IP Diligence in Technology Transaction.” The program was moderated by Jeanne Curtis, Director of CDF Consulting and the panel included Nora Garrote, Partner at Venable, Khue Hoang, Partner at Reichmann Jorgensen, Chloe Steadman, VP and Underwriter at Euclid Transactional and Dorothy von Hollen, VP and Corporate Counsel at Prudential Financial. On December 3, 2019, the Committee co-hosted a “Negotiation Skills” panel with the Young Lawyers Committee at Willkie Farr & Gallagher’s New York office. This program focused on overcoming stereotypes and implicit bias during negotiations, and the panelists actively engaged with the attendees, including many women and diverse attorneys. These panelists included Kathy Holub, a lawyer and consultant who teaches negotiation at Columbia and Harvard, Christina Licursi from Wolf Greenfield, Rebecca Waldman from Dechert, and Eugene Chang from Willkie. The panel was moderated by Maegan Fuller from Cadwalader. On February 11, 2020, the Women in IP Law and Patent Litigation Committees co-hosted a panel discussion entitled, “BPCIA Litigation-Lessons from the Trenches,” at Dechert’s New York office. This program included a lively panel discussion about recent experience with biosimilar litigation, from the perspective of in-house and outside counsel involved. Panelists included Karen Shen from Pfizer, Heather Schneider from Willkie Farr & Gallagher, Irena Royzman from Kramer Levin. Katherine Helm from Dechert moderated the discussion. Throughout the year, the Committee also held telephonic and in-person committee meetings at which members actively and generously contributed to planning and executing this year’s events. The Committee thanks all NYIPLA members who contributed to and participated in this successful year. young lawyers Scope of the Committee: To address the concerns and needs of minorities, women and newly-admitted lawyers, and to report with respect thereto to the Board of Directors. co-chairs: Eric Greenwald and Maggie Mortimer board liaison: Marc Pensabene members: Tatsuya Adachi, Anna Antonova, Omobolaji Bedu, Mark Bhuptani, Alexandra Burushkina, Veronique Charles, Nicholas Choi, Nicole Della Maggiore, Justine DelVecchio, Simone Dvoskin, Nicholas Forgione, Jung Min Kim, Christopher Lisiewski, Patrick McClay, Alexandra Mitton, Dorna Mohaghegh, Devin Newman, Ryan Schneer, Michael Sebba, Karan Singh, Stephanie Smith, Chandler Sturm, Laura Tsang, Joshua Whitehill, Sung Min Yoon, Sebastian Zonte Despite the shortened year, the Young Lawyers Committee hosted multiple innovative programs and welcomed new members. YLC kicked off the 2019-2020 year with a festive mid-summer happy hour that had over 40 attendees. In October, YLC partnered with St. John’s University School of Law to sponsor a career-focused panel at the law school, entitled “Diverse Careers In Intellectual Property Law & Strategies For Achieving Success.” Then, in a first-of-its-kind program, YLC joined forces with the Women in IP Committee to host an interactive negotiation skills panel that attracted in excess of 30 attendees. The panel featured a Columbia University professor and partners from Dechert, Wolf Greenfield and Willkie Farr & Gallagher, for whom this program was their first with NYIPLA. And in February, the Committee added another skills-based program to the calendar—“Deposition Skills: Video Stop.” This program featured a panel of experienced practitioners playing, pausing and analyzing video clips from famous depositions to discuss emulable styles and techniques of taking and defending attorneys. The YLC continued its tradition of networking over happy hours with a mixer with the Corporate Committee in September. The Committee brought in close to a dozen new members in the 2019-2020 year, including first-year associates and students from New York City law schools.
The Association, in conjunction with the New York Intellectual Property Law Education Foundation (NYIPLEF) present the Hon. Giles S. Rich Diversity Scholarship every year. The scholarship was named in honor and memory of The Honorable Giles S. Rich, NYIPLA President, 1950-1951. Each year, the scholarship is presented to a recipient who is interested in intellectual property and comes from a background traditionally underrepresented in the legal profession. The 2019-2020 Hon. Giles S. Rich Diversity Scholarship was presented to Patrick Lee.
JASMINE WHYTE
Dr. RAJIV V. JOSHI
Research led to breakthrough discoveries related to the scaling of Moore’s law, increasing the computing power of a processor, utilizing machine learning in statistical techniques for big data analysis, and improving memories for data storage capabilities. His inventions paved the way for high computing power for CPU’s and GPU’s, which are used for artificial intelligence. As the drive for miniaturization and computing power continued, Dr. Joshi’s discoveries in material science, including novel compounds and chemical and vapor deposition techniques, helped to achieve miniaturization of electronic circuits.
second Place Winner danielle marino
Award recipients at the 2020 annual meeting
NYIPLEF Diversity Scholarship
PATRICK LEE
Hon. Giles S. Rich Diversity Scholarship Award
2019 - 2020 Committee Reports
New this year, NYIPLEF presented the first iteration of its Diversity Scholarship. NYIPLEF’s Diversity Scholarship provides funds to diverse law students currently enrolled in a J.D. or LL.M. program at an accredited law school in the New York area, in good academic standing, and demonstrating intent to engage in the full-time practice of intellectual property law. NYIPLEF is pleased to announce this year's recipient is Jasmine Whyte, a 3L at Columbia Law School.
From Columbia Law School, for her paper entitled Not Just Aereo 2.0: Locast, Free TV, and Section 111's Exemption for Non-Profit Retransmission Services
From St. John's University School of Law, for her paper entitled An Illicit Love Affair: How the United States' Legal Landscape Coupled with Social Media Has Created a Fast Fashion Firestorm
Hon. William C. Conner Writing Competition
Podcast Topic
Interviewee
Best practices for identifying and protecting a global company’s trade secrets
Mark Schildkraut, BD, Associate General Counsel - IP Worldwide Cybersecurity Counsel Law Group
Suspicious that your trade secret may have been stolen? How to Conduct an Internal Investigation
David Almelling, O’Melveny & Myers, Partner
How to recover exfiltrated information
Brian Levine, Ernest & Young, Managing Director, Transactions Cyber Group
U.S. District Court trends after 4 Years of the Defend Trade Secrets Act (DTSA)
Trial Strategies – What plaintiffs and defendants need to think about before, during and after trial
Tony Sammi, Skadden, Partner
NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATIONS STATEMENTS OF ACTIVITIES FOR THE YEAR ENDED APRIL 30, 2020 AND 2019
NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATIONS STATEMENTS OF FINANCIAL POSITION APRIL 30, 2020 AND 2019
Friday, March 20, 2020 Message from NYIPLA President Kathleen McCarthy – 98th Annual Judges Dinner Dear Members and Friends of NYIPLA, In March 1990, I attended my first NYIPLA Judges’ Dinner and I attended nearly every year since. Over the years, I had the honor of hosting many judges and guests, including Justice Ruth Bader Ginsberg (then on the Court of Appeals for the District of Columbia) and her husband, Professor Martin Ginsberg. I always look forward to the event – planning tables and suites, inviting clients and friends, sharing past stories and making new ones, and most importantly, figuring out what to wear. Should I buy something new or recycle something from my closet? The tuxedo option seemed so much easier that I resorted to wearing one once or twice. Fast forward 30 years, and I am amazed that I have the honor of serving as President of the Association. Along with the NYIPLA officers, I spent a wonderful afternoon tasting various menu and wine options. We spent another several hours at a meeting with a huge map of the tables figuring out who is sitting where and with whom. I watched hours of videos of potential speakers to find a dinner speaker who can be serious, amusing, engaging, topical, and not too political or controversial. I went with a posse of friends and relatives to a personal shopper to play the fun game of “say yes to the dress.” I drafted and practiced my remarks, and even took lessons with a voice coach. Now, here we are. This is not the message I expected to be delivering to NYIPLA’s members and friends today. Nor is sending an email how I intended to be delivering the message. We planned to learn this afternoon from a panel of distinguished federal judges, who all enthusiastically offered to dedicate their time to provide us insight into “How Courts Are Managing Complex Intellectual Property Cases.” We planned to gather tonight as a group to celebrate and honor the public service, hard work and dedication of our federal judges, as our Association has for almost 100 years. Instead, the hotel is closed with its many employees and temporary wait staff without work, the courts are postponing nonessential conferences, arguments and trials, and we are home, worried and trying to carry on our daily work as best we can. Even though we are not where we planned to be, I ask you all to please take a few moments today to consider how privileged we are to have our federal judiciary in our system of government, with our dedicated federal judges working tirelessly to interpret our laws and administer justice with patience and diligence – even in very trying times. As members of this great Association, we are fortunate to have many opportunities through our various continuing education programs and forums to interact with our federal judges outside of the courthouse, to learn from their experiences and share with them our experiences, to offer our position as amici, and to communicate with them about the challenges we all face practicing intellectual property law in a world of rapidly-changing technology and new threats. And, we are fortunate to have the tradition of the annual Judges Dinner and it is a tradition that we endeavor to carry on with pride and with thanks. We are confident that we will have the opportunity to once again honor the federal judiciary in person and to formally bestow to our Outstanding Public Service Award upon Chief Judge Mauskopf of the U.S. District Court for the Eastern District of New York. The theme for my year as President of the NYIPLA is to encourage “outreach.” Current events may make this theme seem ironic in the physical sense of the word, but isn’t “outreach,” in another sense, now more important than ever? I have been encouraged by the way our membership has rallied and taken active steps in the face of adversity to stay the course and further the purpose of the Association, as stated in our bylaws: The Association is established to maintain the honor and dignity of intellectual property law, including patents, trademarks, copyrights and trade secrets; to promote the development and administration thereof; to advance the education of the members of the bar and the public in that field of law; and to cooperate with foreign associations in harmonizing the substance and interpretation of international conventions for the protection of intellectual property. Our committees and dedicated members have been planning webinars, sharing information and ideas, drafting responses to Copyright Office requests for comments on proposed changes to the law, scheduling and participating in committee calls to discuss intellectual property-related legislative action, drafting white papers on important issues raised by potential legislation, planning for the trademark committee’s annual half day program (including the important issue of timing for that program), planning for our Annual meeting in May (again including the important issue of how to manage that essential meeting and voting for our new Board remotely if needed), developing podcast topics and otherwise continuing to advance the goals of the Association in every way. Feikje and the office staff at RRR Associations have been diligently working on keeping NYIPLA up and running from their home offices and helping us address numerous logistics issues. Many of you have reached out to me personally with your thoughts, ideas and words of encouragement. I can’t thank you all enough, especially for your patience as we work on figuring out whether our dinner can be safely rescheduled this year. The outreach has been incredible and is most appreciated. Please keep it up, send us your ideas and let us know how the Association can help. Please reach out – even though we are not where we planned to be, there is much we can do from where we are and we are here to help. Best Regards, Kathleen (Katie) E. McCarthy NYIPLA President
98th Annual Dinner in Honor of the Federal Judiciary
8:10AM – 8:55AM
Registration and Continental Breakfast will be served
8:55AM – 9:00AM
Welcome Remarks by Kathleen McCarthy, NYIPLA President, King & Spalding
9:00AM – 10:15AM
Panel 1: Reasonable Royalties, Apportionment, and Overseas Profits: Assessing Patent Damages Moderator: Lynn Russo, Associate, Hughes Hubbard & Reed Andrew Carter, Managing Director and COO, Ocean Tomo Jean Dassie, Associate, Gibbons Christine Meyer, Managing Director and Chair of IP Practice, NERA Economic Consulting Michael Shanahan, Vice President and General Counsel, General Patent Corp.
10:15AM – 10:30AM
Refreshment Break
10:30AM – 11:30AM
Panel 2: Diversity Initiatives: Practical Strategies Moderator: Diana Santos, Associate Counsel, New York Genome Center David Baker, Senior Rights & Clearences Associate, ABC News Paula Edgar, Partner, Inclusion Strategy Solutions Justine Gozzi, Special Counsel, Baker Botts Khalil Nobles, Associate, Willkie Farr & Gallagher Meredith Schoenfeld, Attorney for the Office of the Solicitor, USPTO
11:30AM – 11:55AM
Panel 3: Legislative Update Moderator: Michael Johnson, Partner, Willkie Farr & Gallagher Anthony Lo Cicero, Partner, Amster Rothstein & Ebenstein
12:00PM – 12:45PM
Lunch
12:45PM – 1:15PM
Keynote Speaker Honorable Freda Wolfson, Chief Judge United States District Court for the District of New Jersey
1:15PM – 2:10PM
Interactive Panel: NY Social Media Guidelines Ronald Coleman, Member, Mandelbaum Salsburg Jessica Copeland, Member, Bond Schoeneck & King Ira Levy, Partner, Goodwin Procter
2:15PM – 3:30PM
Panel 4: Inside View for Working with the USPTO Moderator: Jonathan Berschadsky, Partner, Merchant & Gould Elana Araj, Associate, Greenberg Traurig Andrew Berks, Principal, Berks IP Law Stefanos Karmis, Director of the Office of Patent Quality Assurance, USPTO
3:30PM – 3:45PM
3:45PM – 5:00PM
Panel 5: IP Transaction Panel: Patent and Non-Traditional IP Diligence in Technology Transactions Moderator: Jeanne Curtis, Director, CDF Consulting Nora Garrote, Partner, Venable Khue Hoang, Partner, Reichman Jorgensen Chloe Steadman, Vice President and Underwriter, Euclid Transactional Dorothy von Hollen, Vice President and Corporate Counsel, Prudential Financial
5:00PM – 5:10PM
Closing Remarks
Hot Topics in Trademark Law Thursday, July 18, 2019 Princeton Club, 15 West 43rd Street, New York, NY
One-Day Patent CLE Seminar Wednesday, November 13, 2019 Princeton Club, 15 West 43rd Street, New York, NY
12:00PM – 12:30PM
Registration and Lunch
12:30PM – 1:00PM
Keynote Address Lesley Fair Senior Attorney, Federal Trade Commission's Bureau of Consumer Protection
1:00PM – 1:30PM
Trademarks in Bankruptcy: The Supreme Court Finally Speakes Moderator: Scott Greenberg, Culhane Meadows Stuart Gordon, Rivkin Radler Richard Levy, Pryor Cashman
1:30PM – 2:00PM
TTAB Update Hon. Mark A. Thurmon, Deputy Chief Administrative Trademark Judge, Trademark Trial and Appeal Board
2:00PM – 2:30PM
2:30PM – 3:00PM
Great White North Cheat Sheet: What You Need to Know About The Amended Canadian Trademarks Act Stuart Ash, Gowling WLG
3:00PM – 3:30PM
Generic But Incontestable? A Trademark Paradox Ronald Coleman, Mandelbaum Salsburg
3:30PM – 4:30PM
Recent Developments-Ethics in Trademark Practice Tamar Bessinger, Fross Zelnick Lehrman & Zissu Emily Weiss, Fross Zelnick Lehrman & Zissu
4:30 PM – 4:40 PM
Happy Hour Hosted by the NYIPLA Young Lawyers August 1, 2019 Host Young Lawyers Committee Sponsor O'Melveny & Myers
Women in IP Law Happy Hour July 17, 2019 Host Women in IP Law Committee
2019 One-Day Patent Program
EVENTS
Trademark Update: A Discussion with a USPTO Policy Maker and a TTAB Decision Maker May 1, 2019 Speakers Hon. Cindy Greenbaum Matthew Galan Dyan Finguerra-DuCharme Host Trademark & Practice Law Committee Sponsor Pryor Cashman
Patent Litigation - A View from the Bench September 19, 2019 Speakers Hon. Maryellen Noreika Hon. Charles Bullock Hon. John Lifland Host Patent Litigation Committee Sponsor King & Spalding
6th Annual Summer Associate Second Circuit Moot Court Argument CLE July 9, 2019 Judges' Panel Hon. P. Kevin Castel Hon. Brian Cogan Hon. J. Paul Oetken Participating Firms Goodwin Haug Partners Pryor Cashman Venable Host Programs Committee
In-House Counsel Happy Hour (Invitation Extended to NYIPLA Young Lawyers) September 12, 2019 Host Corporate Committee
PTAB Precedential Opinion Panel's (POP) Decision in Hulu, LLC v. Sound View Innovs. February 4, 2020 Speaker Hon. Brian Murphy Host PTAB Committee Sponsor Amster Rothstein & Ebenstein
BPCIA Litigation - Lessons from the Trenches February 11, 2020 Speakers Karen Shen Heather Schneider Irena Royzman Katherine Helm Hosts Patent Litigation Committee Women in IP Law Committee Sponsor Dechert
PTAB's Use of Discretion to Deny Institution of a PTAB Proceeding December 11, 2019 Speakers Hon. William Fink Charles Macedo Host PTAB Committee Sponsor Amster Rothstein & Ebenstein
NYIPLA Presidents' Forum: Online Platform Liability December 5, 2019 Speakers Hon. Richard Sullivan Deputy Director Derek Benner Professor Eric Goldman Professor Felix Wu Ronald Chillemi
Negotiating Skills Panel December 3, 2019 Speaker Eugene Chang Kathy Holub Christina Licursi Rebecca Kahan Waldman Maegan Fuller Hosts Women in IP Law Committee Young Lawyers Committee Sponsor Willkie Farr & Gallagher
Drawing the Line Between Trademark Use and Fair Use in the Context of Style and Product Names October 30, 2019 Speakers Barbara Kolsun Jessica Cardon Jessica Heiss Laure Sawaya Karla Aspiras Host Fashion Law Committee Sponsor Pryor Cashman
Diverse Careers in IP Property Law & Strategies for Achieving Success October 23, 2019 Speakers Bob Donnelly David Donahue Jacqueline Hatherhill Kenneth Canfield Edward Sadtler Stephanie Grenald Partner St. John's University
Webinar: An Overview of District Court Responses to Coronavirus March 24, 2020 Speakers Kenneth Adamo Irene Hudson Zachary Travi Hosts Patent Litigation Committee Programs Committee
Trademark Update: A Discussion with a USPTO Policy Maker and a TTAB Decision Maker March 2, 2020 Speaker Kathleen Cooney-Porter Mary Beth Myles Host Trademark Law & Practice Committee Sponsor Pryor Cashman
Webinar: How & Why Clients Buy IP Services - Understanding the Marketing Conundrum November 6, 2019 Speaker Phil Cox
Webinar: Managing International Patent Portfolios in Wake of the Coronavirus Outbreak March 26, 2020 Speaker Jonathan Berschadsksy Hosts Patent Litigation Committee Programs Committee
Deposition Skills - Video Stop February 19, 2020 Speaker Patrice Jean Kimberly Maynard Kate Reardon Jasmine Whyte Host Young Lawyers Committee Sponsor Fish & Richardson
Webinar: Patent and COVID-19: Facts and Guidelines from the NYIPLA April 28, 2020 Speaker Dorothy Auth Jeffrey Butler Michael Johnson Colman Ragan Lynn Russo Hosts Legislative Action Committee Programs Committee
Webinar: Law Firm Rankings - Why the Matter and How to Improve Your Results April 8, 2020 Speakers Phil Cox Nicholas Richardson
Webinar: What Law Firms Need to Know About the Cares Act April 17, 2020 Speaker Chris Israel Host Programs Committee
Webinar: Discussion with Judge P. Kevin Castel April 23, 2020 Speakers Hon. P. Kevin Castel Jenny Lee Host Programs Committee
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