ASSOCIATION ANNUAL REVIEW
NYIPLA Board of Directors ............................................................................................................ 2 - 3
Year in Review by Peter Thurlow ................................................................................................... 4 - 6
Annual Meeting ........................................................................................................................... 7 - 11
Committee Reports ...................................................................................................................... 12 - 28
Annual Report of the Treasurer ..................................................................................................... 29 - 30
97th Annual Judges Dinner ............................................................................................................ 31 - 34
Day of the Dinner CLE Luncheon .................................................................................................. 35 - 36
Hot Topics in Intellectual Property Law .......................................................................................... 37
One-Day Patent CLE Seminar ........................................................................................................ 38 - 39
Events ...........................................................................................................................................40 - 43
Alicia A. Russo
2018 - 2019 Board of Directors
Douglas R. Nemec
Robert J. Rando
First Vice President
Colman B. Ragan
Standing: Robert J. Rando, Dyan Finguerra-DuCharme, Mark H. Bloomberg, Marian Underweiser,
John T. Moehringer, Irena Royzman, William J. McCabe, Douglas R. Nemec
Sitting: Annemarie Hassett, David Leichtman, Kathleen E. McCarthy, Peter G. Thurlow, Colman B. Ragan, Robert M. Isackson
Mark H. Bloomberg
Peter G. Thurlow
Peter G. Thurlow
2018 - 2019
Kathleen E. McCarthy
Immediate Past President
John T. Moehringer
Second Vice President
Robert M. Isackson
William J. McCabe
Heather M. Schneider
2018 - 2019
Year in Review
By: Peter G. thurlow, NYIPLA President
I was truly honored to be the President of the New York Intellectual Property Law Association (NYIPLA) from May 2018 to April 2019. When I became President, I asked the members that attended my inaugural meeting to be “active.” During my term, I believe the NYIPLA was particularly active especially on PTAB and Trademark matters, legislative action, amicus briefs, and other related intellectual property issues. The credit for the dynamic nature of the Association goes to its dedicated members, the committee chairs, Officers, Board of Directors, and to the Executive Office staff and their fearless leader, Feikje van Rein. Thank you all!
In an effort to encapsulate the significant events during my term, I have provided a few highlights below of some of the work done by our committees and of the Annual Dinner in Honor of the Federal Judiciary held on March 22, 2019.
The 2018 Inventor of the Year Award was presented at NYIPLA’s Annual Meeting on May 15, 2018, where the Association honored the Award Winner, Michael Kass, Ph.D. Dr. Kass was recognized for his work at Pixar, where he developed technology for simulating clothing, posing models, simulating depth of field, creating realistic faces, making painterly animation and building a compelling physical robot for the animated film Wall-E. Dr. Kass has made innovative contributions to image processing, animation, and modeling through physical simulation and optimization. His achievements enabled Pixar to animate stories featuring humans with a degree of realism of motion that would not have been possible with traditional methods.
At the first Board meeting held in May 2018, I recommended, and the Board subsequently agreed, to support the joint IPO-AIPLA Section 101 legislative proposal to address the uncertainty in the Section 101 area that was created since the U.S. Supreme Court’s Alice and Mayo decisions. As part of this endeavor, we worked with the Boston Patent Law Association, the New Jersey Intellectual Property Law Association, the National Association of Patent Practitioners, and the Philadelphia Intellectual Property Law Association to garner their support. As President, I attended several meetings at the U.S. Patent and Trademark Office and in Congress to voice our support for the joint IPO-AIPLA Section 101 legislative proposal. The Legislative Action Committee (LAC), chaired by Jeffrey Butler and Anthony Lo Cicero, with ample assistance from Annemarie Hassett, NYIPLA Past President, and Chris Israel, representative, American Continental Group (NYIPLA lobbying group in Washington, D.C.) provided valuable feedback to the Senate and members of Congress.
On June 28, 2018, Charles Macedo, Co-Chair of the newly-formed PTAB Committee, participated in the USPTO’s 2018 PTAB Judicial Conference in Alexandria, Virginia. This was the first in a series of Judicial Conferences being hosted throughout the country by the PTAB. The event was well attended and demonstrated the PTAB's commitment to continue to communicate with and seek input from stakeholders. In addition, the PTAB Committee had an active year as it prepared comments in response to the USPTO’s revised claim construction rule making, which were submitted to the USPTO on July 9, 2018, and separately, hosted a USPTO PTAB event on October 4, 2018, regarding updates from the USPTO on the implementation of the SAS U.S. Supreme Court decision and other important PTAB matters.
On July 11, 2018, the Association held its 5th Annual Summer Associate Second Circuit Moot Court Argument CLE which discussed the legal issues in the hypothetical Empire Distribution Inc. v. Twentieth Century Fox Television case. Summer associates from several NYIPLA member firms presented their arguments to three distinguished judges in the Southern District of New York court room and gained valuable experience arguing before the judges. It was an amazing event!
On July 17, 2018, the NYIPLA held its annual Hot Topics in Intellectual Property CLE program with a specific focus on providing an update on important trademark matters. The Honorable Gerard Rogers, Chief Judge of the USPTO’s Trademark Trial and Appeal Board, gave the keynote address. Other topics discussed during the meeting included Brexit and litigation finance.
On September 27, 2018, the USPTO’s China IP team and NYIPLA co-hosted the China IP Roadshow: What New York Businesses Need to Know. The program was held at Benjamin N. Cardozo School of Law and directed to U.S. companies obtaining IP protection in China. The USPTO hosts similar China IP programs around the country.
On October 16, 2018, NYIPLA took a break and had some fun at the Lucky Strikes bowling alley in Midtown Manhattan. This event was a social gathering for its members and a way to kick-off its mentoring program. During this and other fun events, we encourage younger NYIPLA attorneys to become active members as they are the future leaders of the Association.
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 (ABC), which coordinates the activities of the Association in the preparation and filing of briefs amicus curiae.
The Amicus Brief Committee members participated in the preparation and filing of four briefs in the Supreme Court, two in the Court of Appeals for the Federal Circuit, and one in the Court of Appeals for the Fourth Circuit. In the Supreme Court, the committee filed briefs on the merits in Mission Products Holdings, Inc. v. Tempnology, LLC (regarding the issue of how trademark license agreements should be treated when rejected by debtor-licensors in bankruptcy proceedings) and Iancu v. Brunetti (regarding the constitutionality of the Lanham Act prohibition on the federal registration of immoral or scandalous marks). The Committee also filed briefs in support of Petitions for Certiorari in RPX Corp. v. ChanBond LLC (pending, regarding standing to appeal final decisions by the PTAB in IPRs) and Regeneron Pharmaceuticals, Inc. v. Merus N.V. (denied, regarding adverse patent prosecution inferences imposed as sanctions for discovery misconduct by litigation counsel). In the Federal Circuit, the Committee filed briefs on the merits in Syngenta Crop Protection, LLC v. Willowood, LLC (regarding both the definition of infringement under §271(g) of the Patent Act and whether FIRFA precludes copyright protection for the required elements of pesticide labels) and Return Mail, Inc. v. U.S.P.S. (regarding the definition of the term “person” in the Patent Act and whether the government qualifies as such). Finally, in the Fourth Circuit, the Committee filed a brief on the merits in Brammer v. Violent Hues Productions, LLC (regarding proper application of the Copyright Act’s fair use analysis with respect to photographs).
During the past year, the Supreme Court ruled on one case where the Amicus Brief Committee had filed a brief on the merits, namely WesternGeco LLC v. ION Geophysical Corp. (holding, consistent with the Association’s position, that patentees may recover foreign damages proximately caused by domestic infringement). The Federal Circuit ruled on two cases where the committee filed briefs, Oracle America, Inc. v. Google Inc. (adopting the Association’s arguments regarding the transformativeness analysis with respect to the Copyright Act’s fair use analysis concerning software) and Regeneron Pharmaceuticals, Inc. v. Merus N.V. (denying Petition for Rehearing En Banc, despite the Association’s arguments). Additionally, the Fourth Circuit ruled on the one case where the committee had filed a brief on the merits, that is Brammer v. Violent Hues Productions, LLC (reversing and remanding the District Court decision for reasons consistent with the Association’s position with respect to the first two factors of the Copyright Act’s fair use analysis).
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 Briefs 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.
The Patent Litigation Committee also enjoyed an active and successful 2018-2019 committee season. The Committee sponsored and co-sponsored a number of Association-wide events, including (1) on July 25, co-hosted a happy hour with the Young Lawyers Committee; (2) on October 4, co-sponsored Adjusting Your Strategies in Preparing and Responding to Petitions Before the PTAB After SAS Institute v. Iancu with the PTAB committee, hosted by Polsinelli PC; (3) on February 6, co-sponsored a biosimilars program titled An In-House Perspective on Biologics/Biosimilars Litigation, with the Women in IP Law Committee, hosted by O’Melveny LLP, (4) on February 21, co-sponsored Improvisational Acting in the Courthouse with the Young Lawyers Committee.
During the "Day of the Dinner" Luncheon CLE held on March 22, 2019, Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office, provided opening remarks to the audience. After his remarks, Director Iancu joined a panel of judges from several district courts and the U.S. Court of Appeals for the Federal Circuit, to discuss “[t]he Current State of Innovation within the U.S. Legal System – Views on Evolving Protection for Intellectual Property Rights in the United States from the USPTO and the Courts.”
The Annual Dinner in Honor of the Federal Judiciary was held at the New York Hilton Midtown Hotel on Friday, March 22, 2019. The Honorable Kathleen M. O'Malley, Circuit Judge, United States Court of Appeals for the Federal Circuit, was presented with the 17th Annual Outstanding Public Service Award. The keynote speaker was Jon Meacham, Presidential Historian and Pulitzer Prize-Winning Author. The entertainment for the evening was provided by 30-35 teenagers from the Celia Cruz Bronx High School of Music.
2018 Annual Meeting
On May 15, 2018, incoming Association President Peter G. Thurlow welcomed members and guests at the Princeton Club of New York. Peter expressed his appreciation for outgoing president, Annemarie Hassett.
Keynote speaker: Honorable Robert A. Katzmann, United States Court of Appeals for the Second Circuit.
2018 Annual Meeting
CLE Program I
Awards Dinner Program
2018 Inventor of the Year award
Registration and refreshments
The 2018 Annual Meeting was attended by over 100 NYIPLA Members.
Julie Albert, Baker Botts
Ronald Colman, Mandelbaum Salsburg
Moderator Hon. Faith Hochberg, United States District Court for the District of New Jersey (Ret.)
2:00 PM - 3:15 PM
scotus review redefining administrative
second looks at patents
Recognized for his contributions
to the field of computer graphics.
Honorable Robert A. Katzmann
3:30 PM - 4:30 PM
Hon. Giles S. Rich diversity scholarship
CLE Program II
Peter G. Thurlow
Dr. Michael Kass
annual meeting of members
5:30 PM - 8:30 PM
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.
4:30 PM - 5:30 PM
Charles Macedo, Amster Rothstein & Ebenstien
Robert Rando, The Rando Law Firm
Moderator Hon. Faith Hochberg, United States District Court for the District of New Jersey (Ret.)
welcome nyipla incoming president
St. John's University School of Law
2018 Hon. William C. Conner
Writing Competition Awards
Nicholas Marcello & Ryan Jin
May 15, 2018
The Princeton Club, 15 west 43rd street, New york
United States Court of Appeals
for the Second Circuit
1:45 PM - 2:00 PM
5:30 PM - 6:00 PM
predictability and the standard of
review in ip cases
Award recipients at the 2019 annual meeting
NYIPLA recognized Patrice Jean for hard work and dedication to the Association. Patrice is a Partner at Hughes Hubbard & Reed. She is currently a member of the NYIPLA Programs and Women in IP Law Committees where she continuously contributed to all activities. As the Vice-President of the New York Intellectual Property Law Education Foundation (NYIPLEF), Patrice was instrumental in spearheading the 1st Annual Diversity Scholarship Event on October 2018, with the efforts of NYIPLEF President Thomas Meloro and Treasurer Walter Hanley, successfully raising over $28,000 in one night.
From Brooklyn Law School, for her paper entitled
The Price of the Patent Dance: Where Are All the Biosimilars?
Hon. William C. Conner Writing Competition
Dr. Sharon Shacham
Hon. Giles S. Rich Diversity Scholarship
Recognized for her significant research that led to the development of an oral cancer treatment, Selinexor.
second Place Winner
Inventor of the Year Award
NYIPLA was honored to present past president and practicing attorney, John Pegram with the Lifetime Achievement Award. John is a senior principal at Fish & Richardson. He is an active member who has contributed years of commitment to the Association, specially as NYIPLA's delegate to the US Bar - Japan Patent Office.
Lifetime Achievement Award
St. John's University
Each year the Association awards at least one scholarship to offset tuition costs of a student from a background traditionally underrepresented in the legal profession, who is interested in Intellectual Property Law, and who is currently attending a local law school.
The NYIPLA awarded its 2018-2019 Hon. Giles S. Rich Diversity Scholarship to the St. John's School of Law. They will select a scholarship recipient from among their students.
Volunteer of the Year Award
From Boston College Law School, for her paper entitled
The Patent Paradox: Challenging the
Presumption Against Extraterritoriality
First Place Winner
2018 - 2019 Committee Reports
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
cNIPA OF CHINA - US BAR
The CNIPA Committee, on behalf of the NYIPLA, collaborated with the USPTO in organizing the “China IP Roadshow: What New York businesses need to know” program at Yeshiva University’s Benjamin N. Cardozo School of Law on September 27, 2018 to review the state of Intellectual Property protection in China. The one-day program brought together experts from the U.S. government, academics, IP attorneys, and local business people to share their insights on China and IP issues that would benefit U.S. IP rights holders and help them consider strategies for IP protection and enforcement in China.
The CNIPA Committee of the NYIPLA is one of many Intellectual Property organizations that form a council of delegates to have meetings with officials from the China National Intellectual Property Administration (CNIPA, formerly the State Intellectual Property Office of PRC, or “SIPO”). The council meets yearly with CNIPA officials to discuss the state of Intellectual property between the United States and China. The council made its last trip to Beijing in the Fall of 2018, and anticipates that CNIPA will come to the United States to visit the USPTO in the Fall of this year. We hope to meet with them at that time. In the meantime, during his trip to China for attending other conferences in Beijing, the Co-Chair of CNIPA Committee, W. Jerry Liu, visited the CNIPA to meet with the CNIPA’s International Affairs Division in November 2018 and discussed possible collaborations between NYIPLA and CNIPA in the future.
co-chairs: Aron Fischer and David Goldberg
board liaison: Irena Royzman
DELEGATEs: Wansheng Jerry Liu and Brian Rothery
members: Thomas Bean, Derrick Carman, Nicole Conlon, Christopher Glancy, Gina Kim, Richard Koehl, Leslie Kushner, Christopher Loh, Allyson Mackavage, Thomas McShane, Charles Miller, Frederick Millett, Steven Purdy, Irena Royzman, Peter Sullivan, Ksenia Takhistova, William Thomashower, Kathleen Waybourn
The 2018-2019 NYIPLA Copyright Law & Practice Committee was comprised of 17 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 an in-person social event to kick off the Association year, and has since convened for monthly teleconferences featuring presentations on notable copyright decisions, including Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, et al., Rimini Street, Inc. et al. v. Oracle USA, Inc., et al., and Google LLC v. Oracle America, Inc., as well as notable copyright legislation, including the Music Modernization Act. In February, the Committee hosted a joint in-person social event with the Trademark Law & Practice Committee.
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 the pending CASE Act. The Committee also worked with the Amicus Brief Committee on authoring amicus briefs filed in Syngenta Crop Protection, LLC v. Willowood, LLC., Fed. Cir. No. 18-1614, and Brammer v. Violent Hues Productions, LLC, Fourth Cir. No. 18-1763. In addition, the Committee prepared comments on behalf of the Association in response to the Copyright Office’s Notice of Inquiry concerning efforts to modernize copyright registration.
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.
The Association has continued its strong history of representing its diverse intellectual property constituency before the courts through the activity of its Amicus Brief Committee, which coordinates the activities of the Association in the preparation and filing of briefs amicus curiae.
Since the last Annual Meeting on May 15, 2018, committee members participated in the preparation and filing of four briefs in the Supreme Court, two in the Court of Appeals for the Federal Circuit, and one in the Court of Appeals for the Fourth Circuit. In the Supreme Court, the Committee filed briefs on the merits in Mission Products Holdings, Inc. v. Tempnology, LLC (regarding the issue of how trademark license agreements should be treated when rejected by debtor-licensors in bankruptcy proceedings) and Iancu v. Brunetti (regarding the constitutionality of the Lanham Act prohibition on the federal registration of immoral or scandalous marks). The committee also filed briefs in support of Petitions for Certiorari in RPX Corp. v. ChanBond LLC (pending, regarding standing to appeal final decisions by the PTAB in IPRs) and Regeneron Pharmaceuticals, Inc. v. Merus N.V. (denied, regarding adverse patent prosecution inferences imposed as sanctions for discovery misconduct by litigation counsel). In the Federal Circuit, the Committee filed briefs on the merits in Syngenta Crop Protection, LLC v. Willowood, LLC (regarding both the definition of infringement under §271(g) of the Patent Act and whether FIRFA precludes copyright protection for the required elements of pesticide labels) and Return Mail, Inc. v. U.S.P.S. (regarding the definition of the term “person” in the Patent Act and whether the government qualifies as such). Finally, in the Fourth Circuit, the committee filed a brief on the merits in Brammer v. Violent Hues Productions, LLC (regarding proper application of the Copyright Act’s fair use analysis with respect to photographs).
During the past year, the Supreme Court ruled on one case where the committee had filed a brief on the merits, namely WesternGeco LLC v. ION Geophysical Corp. (holding, consistent with the Association’s position, that patentees may recover foreign damages proximately caused by domestic infringement). The Federal Circuit ruled on two cases where the committee filed briefs, including Oracle America, Inc. v. Google Inc. (adopting the Association’s arguments regarding the transformativeness analysis with respect to the Copyright Act’s fair use analysis concerning software) and Regeneron Pharmaceuticals, Inc. v. Merus N.V. (denying Petition for Rehearing En Banc, despite the Association’s arguments). Additionally, the Fourth Circuit ruled on the one case where the committee had filed a brief on the merits, that is Brammer v. Violent Hues Productions, LLC (reversing and remanding the District Court decision for reasons consistent with the Association’s position with respect to the first two factors of the Copyright Act’s fair use analysis).
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.
members: Soban Ahmed, Eroide Alphonse, Stephen Ankrom, Reece Brassler, Veronique Charles, Mitisha Chheda, Wayne Cox, Robert Fischer, Chantelle Gyamfi, Lindsay Korotkin, Thomas McShane, Olivera Medenica, Elliot Shine, Mitchell Stein
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.
The 2019 Inventor of the Year Award Committee received multiple high-quality submissions for consideration. The Committee presented its top two choices to the Board for discussion and approval, and the Board agreed with the Committee’s recommendation. At the NYIPLA Annual Meeting on May 14, 2019, the Association honored the 2019 Inventor of the Year Award Winner, Dr. Sharon Shacham.
Dr. Shacham was recognized for her work as the President and Chief Scientific Officer at Karyopharm Therapeutics, where she and her team developed Selinexor, a first in class oral Selective Inhibitor of Nuclear Export (SINE) for the treatment of cancer. SINE compounds enable tumor suppressor proteins to remain in the nucleus and promote apoptosis of cancer cells through the inhibition of nuclear export proteins, known as exportins, and specifically exportin 1.
On October 5, 2018, the FDA accepted for filing with Priority Review Karyopharm’s New Drug Application (NDA) seeking accelerated approval for Selinexor in combination with dexamethasone as a new treatment of patients with relapsed refractory multiple myeloma. The FDA recently extended the action date for Selinexor to July 6, 2019, while waiting for the results from Karyopharm’s randomized, open-label, Phase 3 BOSTON study. Top-line data are expected by the end of 2019 or early 2020.
Dr. Shacham holds a number of U.S. patents and applications, including U.S. Patent Nos. 8,999,996; 9,079,865; 9,206,158; 9,714,226; 10,173,987; and 10,202,366.
We would like to recognize and thank the entire Committee for another successful year and their excellent work researching, reviewing, and ranking the submissions. We also want to thank our Board liaison, Mark Bloomberg, for his help and guidance along this process.
co-chairs: Richard Brown and Keith McWha
board liaison: Walter Hanley Jr.
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: Jonathan Auerbach and Brian Prew
board liaison: Frank DeLucia Jr.
co-chairs: Dorothy Auth and Jeffrey Butler
board liaison: Robert Isackson
members: Catherine Chin Eng, Justine Gozzi, Mitchell Hadley, Alessandro Peschechera, Eric Yecies
co-chairs: Steven Purdy and Laura Sheridan
board liaison: Marian Underweiser
Hon. William c. Conner writing competition
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 11 submissions in 2019. This was a decrease from previous years, and we propose to evaluate and recommend strategies to increase the number of submissions for the upcoming year. 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:
1. Kelsie Kelly- The Price of the Patent Dance: Where Are All the Biosimilars? (Brooklyn Law School)
2. Samantha Zurcher- The Patent Paradox: Challenging the Presumption Against Extraterritoriality (Boston College Law School)
The NYIPLA notified the winners and arranged for the presentations to be made at the Annual Dinner.
members: Michele Antis, Jeffrey Butler, Tulloss Delk, Paul Diamond, Kevin Ecker, Joy Goudie, Joshua Harris, David Kaplan, Howard Lee, George MacDonald, Brian McCloskey, Gerard McGowan, Colman Ragan, Louis Sorell, James Sterner, Cheryl Wang
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, our principal focus has been on considering issues relating to subject matter eligibility. It is likely that legislation will soon be proposed to address the uncertainty that has been created since the Supreme Court’s Alice and Mayo decisions. The Legislative Action Committee, with the assistance of our legislative consultants, American Continental Group, has been closely monitoring the discussions relating to this legislation and has supported Pete Thurlow, who has attended several subject matter roundtables on the Hill.
Other areas of interest to the Legislative Action Committee are the numerous pending and proposed bills relating to pharmaceutical pricing, including bills aimed at altering the patent-challenge paradigm that was established years ago by the Hatch-Waxman Act, and efforts likely to result from the Administration’s push for agency reports on the subject of online counterfeiting and piracy.
inventor of the year (ioty) award
The Corporate Committee had a productive year, with regular meetings designed to provide its members with meaningful and relevant content. The Committee closed out the year with its members attending the Association’s roundtable on gender diversity in innovation, attended by Director Iancu and Professor Colleen Chien, as well as numerous Board members and Women in IP Law Committee members. The Committee also enjoyed moderated discussions of committee members from diverse industries sharing insights on key issues, such as evaluating your outside counsel and best practices for IP legal oversight. Other meetings included outside experts speaking on a variety of topics. Chris Israel of American Continental Group joined a meeting to share an update on activity in DC, and Steve Gardner and Caroline Wray of Kilpatrick Townsend shared a presentation tailored to in-house counsel on recent patent case law. The Committee also heard from USPTO personnel on IP5 international work-sharing efforts.
The Committee held its annual in-person mixer in September, inviting Young Lawyers Committee members to once again join the event. The mixer gave Committee members a welcome chance to re-connect. For 2019, the Committee will continue to deliver its members content that is useful to their practices, with plans to continue the conversation around improving diversity in innovation.
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: Gene Lee and Marc Pensabene
board liaison: Robert Rando
co-chairs: Jonathan Berschadsky and Carl Wischhusen
board liaison: Peter Thurlow
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.
The Patent Litigation Committee enjoyed an active and successful 2018-2019 committee season. We held monthly in-person lunch 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 and/or co-sponsored a number of Association-wide events, including (1) on July 25, we co-hosted a happy hour with the Young Lawyers Committee; (2) on October 4, we co-sponsored with the PTAB committee a program called, “Adjusting Your Strategies in Preparing and Responding to Petitions Before the PTAB After SAS Institute v. Iancu,” hosted by Polsinelli; (3) on February 6, we co-sponsored with the Women’s Committee, a biosimilars program titled “An In-House Perspective on Biologics/Biosimilars Litigation,” hosted by O’Melveny, (4) on February 21, we are co-sponsored with the Young Lawyers a program titled “Improvisational Acting in the Court.” For later this year into the next committee season, we are planning to sponsor a Judge’s panel. We have hosted these types of panels in the past and they are always very informative. The program is still being developed but we are currently targeting sometime in September. After an active and successful year behind us, the Committee looks forward to carrying the momentum into the 2019-2020 season.
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.
members: Kenneth Adamo, Mark Baker, James Barabas, Steve Baughman, Kenneth Canfield, Derrick Carman, Catherine Ching Eng, Jennifer Cieluch, Nicole Conlon, Mitchell Epner, Lauren Fornarotto, Isaac Gelbfish, Peter Gergely, Ryan Hersh, Michael Johnson, Leslie Kushner, Thomas Landman, Bernadette Lopez, Steven Luksenberg, Douglas Nemec, Richard Parke, Larry Rosenthal, John Stellabotte, James Sterner, Thomas Vetter, Ron Vogel, Stuart Yothers
members: Thomas Bean, Andrew Berks, Nicholas Bertram, Daniel Brownstone, Michael Carmen, Andew Chien, Justine DelVechhio, Isaac Gelbfish, Joy Goudie, Khue Hoang, David Kaplan, Fritz Klantschi, Jason LaBerteaux, Thomas Landman, Tanya Leavy, Jenny Lee, Oliver Li, Steven Luksenberg, Karen Mangasarian, Brian McCloskey, Gerard McGowan, Jason Poulos, Jeffrey Price, Larry Rosenthal, Ryan Schneer, Elliot Shine, Antoaneta Tarpanova
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. We worked with the Programs Committee to conduct a panel on Section 101 moderated by our co-chair, Jonathan Berschadsky, at a One-Day Patent CLE Seminar. The panel included both in-house counsel and law firm attorneys, who summarized and discussed recent Federal Circuit decisions relating to Section 101. The Committee participated in a roundtable discussion with this organization’s Ad hoc Committee on Section 101 and has provided comments on legislative proposals. The Committee participated in meetings on the USPTO Patent Quality Initiative with representatives of the USPTO. We are currently studying revised USPTO guidelines on patent eligibility under Section 101 and functional claim language under Section 112.
patent law & Practice
co-chairs: Jonathan Auerbach and Jenny Lee
board liaison: Colman Ragan
members: Kenneth Adamo, Mark Baker, Jacob Baldinger, Steve Baughman, Jonathan Berschadsky,
Derrick Carman, Catherine Chin Eng, Peter Gergely, Jung Hahm, Joshua Harris, Ryan Hersh, Khue Hoang, Robert Isackson, Fritz Klantschi, Richard Koehl, Jason LaBerteux, Andrew Larsen, Gene Lee, Yan-Xin Li, Christopher Lisiewski, Lisamarie LoGiudice, Bernadette Lopez, Charles Miller, Frederick Millet, Brian Murphy, Marc Pensabene, Jeffrey Price, Robert Rando, Robert Roby, John Stellabotte, Jonathan Stroud, Peter Sullivan, Ksenia Takhistova, William Thomashower, Peter Thurlow, Clifford Ulrich, Thomas Vetter, Kathleen Waybourn, Joel Weiss
members: Andrew Berks, Mark Bloomberg, Patrice Jean, Robert Rando, Lynn Russo, William Thomashower, Thomas Vetter
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.
This year the Programs Committee continued its service to NYIPLA Members by providing high quality programs, informative presentations and distinguished keynote speakers. Its slate of programs includes, among others, the Full-Day Patent Program, the Day of Dinner Program, and the Annual Moot Court program before the Second Circuit.
The Programs Committee was honored to present, in conjunction with the Second Circuit Court of Appeals, the Fifth Annual Second Circuit Moot Court Argument CLE Program on July 11, 2018. The proceedings were held at the Thurgood Marshall Courthouse and presided over by the Honorable Stewart D. Aaron, the Honorable Robert W. Lehrburger and the Honorable Ona T. Wang, United States Magistrate Judges for the Southern District of New York sitting by designation. Participants from four different member firms presented oral arguments based on a hypothetical fact pattern derived from a case awaiting a decision on a petition for certiorari to the Supreme Court: Empire Distribution Inc. v. Twentieth Century Fox Television (No. 17-1383). 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 15, 2018, 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 four panels, a luncheon keynote speaker, and an interactive luncheon presentation. The Programs Committee was honored to have participation from the judiciary and the Federal Bureau of Investigations FBI at this program. The program began with a timely discussion between Special Agents from the FBI and in-house counsel from various industries about what patent practitioners need to know about ethically handling client’s confidential information in the digital age. The Keynote Speaker, the Honorable Colleen McMahon, Chief Judge for the United States District Court for the Southern District of New York, gave an engaging speech regarding women and diversity in the legal profession and shared some insights from her own career to inspire those in attendance to be more confident and seize opportunities.
This program also allowed the Programs Committee to work with other organizations and substantive committees of the NYIPLA and showcase their depth of knowledge and contributions to the Association. The second panel of the day, which was organized with JAMS, discussed the ins and outs of arbitrating a patent dispute, with seasoned arbitrators from JAMS, including Hon. Garrett Brown, Hon. John C. Lifland and Thomas Creel. The Women in IP Law committee presented an eye-opening interactive diversity CLE regarding implicit bias and tools to mitigate unintended implicit bias in the legal profession. The Programs Committee also collaborated with the newly formed PTAB committee and the Patent Litigation committee for a moderated discussion regarding the changing interface between administrative proceedings, e.g., PTAB proceedings, and patent litigation in the district courts. The last panel of the day included a discussion regarding the constantly evolving standards for patent subject matter eligibility under Section 101 across different industries, which was organized in collaboration with the Patent Law & Practice Committee
The Programs Committee was also honored to have participation from Circuit and District Court Judges and members of the Executive Branch at the Day of Dinner Luncheon on March 22, 2019, regarding the current state of innovation within the U.S. legal system and views from both the USPTO and the courts regarding the evolving protection for intellectual property rights. The program kicked off with a keynote speech from Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office. The program also featured a lively discussion moderated by Annemarie Hassett with a distinguished panel of judges with some of the busiest patent dockets and Direct Iancu. The panel of judges included the Honorable Raymond T. Chen, Circuit Judge, United States Court of Appeals for the Federal Circuit, Honorable Ruben Castillo, Chief Judge, United States District Court for the Northern District of Illinois, and Honorable Richard G. Andrews, Judge, United States District Court for the District of Delaware.
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 and the NYIPLA administrative office to whom we are grateful.
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: Frank DeLucia Jr. and Charles Macedo
board liaison: Peter Thurlow
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 over 40 members (including counsel working in-house and 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 US Patent & Trademark Office (“USPTO”) proposed revisions to PTAB rules.
For instance, on October 4, 2018, the Committee sponsored a panel presentation on the impact of the SAS Institute decision on strategies to prepare, file, and respond to PTAB Petitions. The panel featured Hon. William M. Fink, Vice Chief Administrative Patent Judge at the USPTO. On May 14, 2019, the Committee hosted a follow-up panel entitled “PTAB Estoppel, Post-SAS: Perspectives from the PTAB Chief Judge and Practitioners.” At this event, Hon. Scott Boalick, Chief Judge of the PTAB, discussed with practitioners the challenges posed by interaction of the SAS Institute decision with inter partes review (IPR) estoppel provisions, as well as practical considerations regarding successful challenge and defense strategies developed in recent PTAB proceedings.
Additionally, the PTAB Committee submitted detailed comments in response to the USPTO’s “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board.” The comments generally supported the USPTO’s proposal to change the claim constructions standard in PTAB trials from the “broadest reasonable interpretation” standard to the “Phillips” standard. The PTAB Committee also submitted detailed comments in response to the USPTO’s “Request for Comments on Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board.” While the comments acknowledged that current motion to amend (“MTA”) process in AIA trials should be modified to make it more useful and fair to petitioners and patent owners alike, the comments pointed out with particularity how the proposed changes to MTA practice create the risk of other problems (e.g., regarding estoppel) and require more thought before implementation.
The Committee’s activities have thus ensured 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.
i. Monthly Meetings. We have been continuing with 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.
ii. Trade Secret Podcast.
As reported in the Fall, we are working to put together a podcast series of 5-7 episodes of 20-30 minutes each. We have now nailed down our topics and more importantly, our interviewees:
1. In-house best practices perspective – our own, Mark Schildkraut of BD
2. Internal Investigations – outside counsel David Almeiling of O’Melveny
3. Law Enforcement perspective – Brian Levine of DOJ
4. In-house regulatory perspective – Erez Libermann of Prudential
5. U.S. District Court Trends 2 years Following Enactment of the DTSA - David Almeiling of O’Melveny
6. Trial Strategies – Tony Sammi of Skadden
7. Judge’s Perspective- retired Honorable Gregory Sleet
We are finalizing the interview questions and plan to complete the interviews by the end of June. Then we will roll out the podcast series over a period of weeks.
iii. Cross-Committee Support. Should another Committee want support from the Trade Secret Committee – e.g., Cybersecurity, Young Lawyers or Women in IP Law – to advance a CLE, a networking event or something else, we’d be happy to help out.
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: William McCabe
trademark law & practice
co-chairs: Michael Cannata and Scott Greenberg
board liaison: Dyan Finguerra-DuCharme
members: Rachel Blitzer, Veronique Charles, Ralph Dengler, Kevin Ecker, Dwight Kennedy, Thomas Landman, William McCabe, Daniel McGlynn, Douglas Nemec, Jessica Sblendorio, Eric Yecies, Stuart Yothers
members: Soban Ahmed, Shiran Bayin, James Bikoff, Heather Bowen, Reece Brassler, Pina Campagna, Veronqiue Charles, Mitisha Cheeda, Natasa Colovic, Wayne Cox, Ursula Day, David Einhorn, Nicholas Forgione, Christopher Glancy, David Goldberg, Lindsay Korotkin, Michael Kraich, Olivera Medenica, Terra Melson, Dorna Mohaghegh, Suzanna Morales, Gabrielle Nagler, Sanskriti Singh, Mitchell Stein, Antoaneta Tarpanova, William Thomashower
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.
The Trademark Law & Practice Committee (“Committee”) had 28 active members this year. The Committee corresponded extensively, conducted multiple meetings, contributed to NYIPLA publications and amicus briefs, and organized several CLE events.
In July 2018, the Committee organized and conducted its annual Half-Day program entitled “Hot Topics in Intellectual Property Law.” The keynote speaker was Hon. Gerard Rogers, Chief Administrative Trademark Judge, Trademark Trial and Appeal Board, USPTO. In addition to Judge Rogers, the program also featured several expert panels and lecturers on topics including copyright liability for website operators, blockchain technology, TTAB updates, litigation finance, copyright, and EU updates.
Members of the Committee participated in the preparation of amicus briefs submitted by NYIPLA in two SCOTUS cases, Mission Product Holdings v. Tempnology, LLC, which was submitted in December 2018 and deals with trademark licenses in bankruptcy proceedings, and Iancu v. Brunetti, which was submitted in February 2019, in a case weighing the constitutionality of the Lanham Act provision refusing registration of marks that are immoral or scandalous.
On January 14, 2019, the Committee held an in-person meeting at the offices of Quinn Emanuel Urquhart and Sullivan followed by a CLE presentation entitled “Trademark Disputes Pitting Fictional Entertainment Works Against ‘Non-Fictional’ Businesses”, presented by David Leichtman, Kaydi Osowski and Cory Struble.
The Committee, together with the Copyright Law & Practice Committee, held an after work networking and social event on February 28, 2019, at Pennsylvania 6.
In March 2019, the Committee prepared public comments for the NYIPLA to submit to the USPTO in connection with the USPTO's proposed rule to require foreign-domiciled trademark applicants and registrants to use a U.S.-licensed attorney.
On May 1, 2019, the Committee held an in-person meeting at the offices of Pryor Cashman LLP followed by a CLE presentation entitled “Trademark Update: A Discussion with a USPTO Policy Maker and a TTAB Decision Maker,” presented by Hon. Cindy B. Greenbaum, Matthew G. Galan and Dyan Finguerra-DuCharme.
The Committee is presently planning its 2019 Half-Day “Hot Topics in Intellectual Property Law” CLE program, which will be held on July 18, 2019, at The Princeton Club. The Committee has confirmed several dynamic speakers for the program to discuss several topics of interest, including trademark issues in bankruptcy proceedings, the new Canadian trademark statute, and ethics issues pertaining to intellectual property practice.
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.
co-chairs: Scott Forman, Eric Greenwald, and Lindsay Korotkin
board liaison: Heather Schneider
members: Michelle Antis, Laura Chubb, Jennifer Cieluch, Nicole Colovic, Nicole Conlon, Ursula Day, Stephanie DelPonte, Dyan Finguerra-DuCharme, Lauren Fornarotto, Justine Gozzi, Stephanie Grenald, Patrice Jean, Leslie Kushner, Tanya Leavy, Allyson Mackavage, Karen Mangasarian, Tara Melillo, Margaret Mortimer, Lauren Nowierski, Amanda Rabbat, Brenda Rivera, Karen Sabaski, Gabrielle Simon Nagler, Cheryl Wang
us Bar - European patent office liaison council
Women in ip law
co-chairs: Jessica Copeland and Abigail Langsam
board liaison: Irena Royzman
delegates: Laura Brutman and Thomas Spath
delegates: Raymond Farrell and John Pegram
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.
The Women in IP Law Committee had a successful year in 2018-2019, hosting CLE and networking events, in addition to committee meetings. On November 15, 2018, during the One-Day Patent CLE Seminar, the Committee hosted a discussion on Implicit Bias and its impact on the legal profession. Abigail Langsam and Stephanie Grenald led an interactive quiz-show-style presentation, walking though the basics of implicit bias, its effects on lawyers, and potential steps to mitigate those effects.
On February 6, 2019, the Women in IP Law and Patent Litigation Committees co-hosted a panel discussion entitled, “An In-House Perspective On Biologics/Biosimilars Litigation,” at O’Melveny & Myers LLP. This program included a panel discussion about biologics litigation from the unique perspective of in-house counsel. Panelists included Kristan Lansbery (Senior Director, Assistant General Counsel, Patents, Regeneron Pharmaceuticals, Inc.), Tara Rahemba (Senior Director, Patent Counsel, Alexion), Karen Stoffan (Director, IP Litigation, Merck), and Lori Wolfe (Associate General Counsel, North America IP Litigation, Teva Pharmaceuticals). Hassen Sayeed (O’Melveny) moderated the discussion.
Throughout the year, the Committee also held telephonic and in-person committee meetings (as well as a roof-top social gathering in September) 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.
There has been no meeting of the US Bar—Japan Patent Office Liaison Council since our last report to the Board. The last meeting of the Council was held on October 22, 2018, in Washington, DC, which was the final meeting that Ray Farrell presided over the Council as its Chair. As noted in our previous report, at that meeting the JPO delegation was led by Director General of the JPO Patent Examination Department, Takashi Yamashita. Recently, the Council held a planning tele-conference to begin planning for the next Council meeting, which will take place in Tokyo in either September or October of this year. It is expected that in addition to meeting with the Commissioner of the JPO and the international policy team, the Council will also be meeting once again with the IP High Court of Tokyo. 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.
The Young Lawyers Committee started off the year with an event at Hofstra Law School that included two panels and a networking reception. The subjects of the panels were “Diverse Careers in IP Law and Strategies for Achieving Success,” and “IP Considerations for New IP Practitioners and Non-IP Attorneys.” The Committee then hosted a panel on litigation finance, entitled “Speaking the Language of Litigation Finance: What Your Partners Don’t Know.” Panelists discussed how litigants and law firms use litigation finance, the role of litigation counsel in facilitating financing arrangements, and the use of litigation outcome metrics in pre-litigation diligence.
The Young Lawyers Committee continued its tradition of joining other committees for networking over happy hours. Members attended mixers with the Corporate Committee and Women in IP Committee.
The NYIPLA was represented at the 34th Annual Meeting of the Council that convened at the EPO in Munich on October 12, 2018. The Council was founded as a forum for the candid exchange of views with the EPO by a large cross-section of U.S. patent practitioners concerning their experience and problems encountered in their dealings with the EPO, as well as suggesting areas in which changes might be undertaken to improve the practice. The present, US applicants constitute 26% of the EPO's users, which far exceeds any other national user group.
The meeting was hosted by the new President of the EPO. Antonio Campinos, who assumed the office on July 1, 2018, succeeding former President Battiselli. Mr. Campinos has extensive experience in the management of European IP institutions having served as the head of the Portuguese IPO beginning in 2000 and then of the European Union IPO (OHIM) from 2010-18. A total of thirteen EPO representatives participated in the Council meeting and presentations were made to the delegates from the US Bar by seven high-level managers and heads of directorates covering nine subject areas.
One issue of potential interest to US applicants and practitioners that was discussed is a proposal to permit the deferral of the EPO's examination of new applications upon the request of applicants. The deferral period would be limited, e.g., to three years, and in the interim interested third parties could petition for the commencement of examination upon a showing of a substantial interest. Such an intentional delay is argued by some to be against the public interest in having prompt access to the results of examination that would define the potential scope of the applicant's rights. This proposal is in contrast to the EPO's long-standing goal of continuing to reduce the time between filing and the first examination report.
In accordance with custom, the 35th Annual Meeting of the Council will be held in Washington, DC and program planning is currently underway. NYIPLA members having questions or concerns regarding EPO practice issues for consideration at the next Council meeting can submit them to Tom Spath (email@example.com) or to our new co-representative Laura Brutman (firstname.lastname@example.org).
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.
us Bar - japan patent office council
members: Mark Bhuptani, Heather Bowen, Justine DelVecchio, Gina Kim, Yan-Xin Li, Pat McClay, Tara Melillo, Dorna Moheghegh, Margaret Mortimer, Gerald Porter, Brenda Rivera, Neeti Sachdev, Ryan Schneer,
Michael Sebba, Gabrielle Simon Nagler
97th Annual Dinner in Honor of the Federal Judiciary
Standing: Colman B. Ragan, Hon. Leonard P. Stark, Heather M. Schneider, Robert M. Isackson, David Leichtman
Sitting: Hon. Sharon Prost, Hon. Kathleen M. O'Malley, Peter G. Thurlow, Jon Meacham, Kathleen E. McCarthy, Hon. Ruben Castillo
he New York Intellectual Property Law Association held its 97th Annual Dinner in Honor of the Federal Judiciary on March 22, 2019, at the New York Hilton Midtown Hotel. President Peter Thurlow welcomed the honored guests, members of the NYIPLA, and their guests. The Association’s Seventeenth Annual Outstanding Public Service Award was presented to the Honorable Kathleen M. O'Malley, Circuit Judge for the United States Court of Appeals for the Federal Circuit. The Keynote address was given by Jon Meacham, award-winning journalist, Presidential Historian and Pulitzer Prize-Winning Author. Musical entertainment was provided by a choir group from the Celia Cruz Bronx High School of Music.
2019 DOD CLE Luncheon
Hot Topics in Intellectual Property
Tuesday, July 17, 2018
Princeton Club, 15 West 43rd Street, New York, NY
12:00PM – 12:45PM
Registration and Lunch
12:45PM – 1:00PM
1:00PM – 1:30PM
Keynote Address Honorable Gerard Rogers
Chief Administrative Trademark Judge, Trademark Trial and Appeal Board
1:30PM – 2:00PM
Breaking the Internet? What Unresolved Issues of "Secondary" Liability May Mean for Copyright Owners, Publishers & ISPs
Moderator: Nicholas Bartelt, Fordham IP Institute
Caleb Donaldson, Senior Copyright Counsel, Google
Lauren Emerson, Counsel, Leason Ellis LLP
2:00PM – 2:30PM
Opening the Virtual Door to All: Online Accessibility Standards
Moderator: John Egan, Partner, Seyfarth Shaw LLP
Nancy Del Pizzo, Partner, Rivkin Radler LLP
Thomas Logan, CEO, Equal Entry LLC
2:30PM – 2:45PM
2:45PM – 3:15PM
Blockchain: Deconstructing Trademarks
Martin Schwimmer, Partner, Leason Ellis LLP
3:15PM – 3:45PM
What Keeps In-House Counsel Up at Night
Moderator: Dyan Finguerra-DuCharme, Partner, Pryor Cashman LLP
Lisa Gigliotti, Vice President and Chief Trademark Counsel, L'Oreal USA
John Maltbie, Director of Intellectual Property, Civil Enforcement, Louis Vutton Americas
Brian McCloskey, Chief Patent Counsel, Avon Products, Inc.
3:45PM – 4:15PM
Brexit - Should Trademark Owners Care?
Simon Tracey, Founding Partner, Bear & Wolf
4:15PM – 4:45PM
Litigation Finance: The Basics, The Details, and the Ethics
Moderator: David Herrington, Partner, Cleary Gottlieb Steen & Hamilton LLP
Boaz Weinstein, Co-Founder, Lake Whillans Litigation Finance
Marla Decker, Managing Director, Lake Whillans Litigation Finance
4:45 PM - 4:55 PM
8:15AM – 9:00AM
Registration and Continental Breakfast will be served
9:00AM – 9:05AM
Welcome Remarks by Peter Thurlow, NYIPLA President, Polsinelli
9:05AM – 10:25AM
Panel 1: What Patent Practitioners Need to Know About Ethically Handling Client's Confidential Information in the Digital Age
Moderator: Jessica Copeland, Partner, Hodgson Russ
Michael Pollice, Special Agent, Federal Bureau of Investigation
Carrie Crot, Special Agent, Federal Bureau of Investigation
Mark Schildkraut, Associate General Counsel-Cybersecurity & IP, Becton Dickinson and Company
Sarah Statz, Senior Counsel, American Express Company
Gail Zarick, IP Counsel-Security Division, IBM Corporation
10:25AM – 10:40AM
10:40AM – 12:00PM
Panel 2: Arbitration of Patent Disputes
Moderator: Patrick J. Murphy III
Hon. Garrett Brown, Neutral, JAMS The Resolution Experts
Hon. John Lifland, Neutral, JAMS The Resolution Experts
Thomas Creel, Neutral, JAMS The Resolution Experts
Benoit Quarmby, Partner, MoloLamken
Lynn Russo, Associate, Hughes Hubbard & Reed
12:45PM – 1:15PM
Keynote Speaker Honorable Colleen McMahon, Chief United States District Judge,
United States District Court for the Southern District of New York
1:15PM – 2:05PM
Interactive Diversity CLE: Implicit Bias
Abigail Langsam, Counsel, Arnold & Porter Kaye Scholer LLP
Stephanie Grenald, Vice President-IP and Associate General Counsel, HBI Incorporated
2:10PM – 3:30PM
Panel 3: The Changing Interface between Administrative Proceedings and Patent Litigation
Moderator: Charles Macedo, Partner, Amster Rothstein & Ebenstein
Anthony Michael, Director-Litigation, Acorda
Robert Rando, Founder, The Rando Law Firm
Sean Reilly, General Counsel, Askeladden, Senior Vice President and General Counsel,
3:30PM – 3:45PM
3:45PM – 5:05PM
Panel 4: Navigating Patent Strategies in View of Recent Developments in Section 101
Moderator: Jonathan Berschadsky, Partner, Merchant & Gould
Frederich Laub, Senior Counsel, BMS
Scott Forman, Associate, Wolf Greenfield & Sacks
5:05PM – 5:10PM
One-Day Patent CLE Seminar
Thursday, November 15, 2018
Princeton Club, 15 West 43rd Street, New York, NY
2018 One-Day Patent Program
October 4, 2018
Hon. William Fink
Social Gathering for Members & Mentoring Program Kickoff Event
December 11, 2018
Special Agent Michael Pollice
Defining Your Baseline - Developing Your Professional Brand
5th Annual Second Circuit Moot Court Argument
Women in IP Law Informal Happy Hour
Mediating Patent Infringement Disputes: Current Trends and Future Consideration
Adjusting Your Strategies in Preparing and Responding to Petitions Before the PTAB After SAS Institute
September 21, 2018
Women in IP Law Committee
Economic Espionage: Protect Your Intellectual Property from Theft
January 14, 2019
Trademark Law & Practice Committee
Quinn Emanuel & Sullivan
Young Lawyers Committee Happy Hour
December 6, 2018
Women in IP Law Committee
Young Lawyers Committee
Young Lawyers & Patent Litigation Committee Happy Hour
September 27, 2018
Cardozo School of Law
October 16, 2018
September 12, 2018
When Worlds Collide: Trademark Disputes Pitting Fictional Entertainment Works Against Non-Fictional Businesses
July 25, 2018
Patent Litigation Committee
Young Lawyers Committee
January 17, 2019
Young Lawyers Committee
China IP Road Show: What New York Businesses Need to Know
July 11, 2018
Hon. Stewart Aaron
Hon. Robert Lehrburger
Hon. Ona Wang
King & Spalding
Willkie Farr & Gallagher
June 19, 2018
Hon. Garrett Brown Jr.
In-House Counsel Happy Hour (Invitation Extended to Young Lawyers Committee Members)
From Associate to Founder: Leveraging Your Firm Experience to Work for a Start-up
Improvisational Acting in the Courthouse
February 21, 2019
Patent Litigation Committee
Young Lawyers Committee
February 28, 2019
Trademark Law & Practice Committee
Copyright Law & Practice Committee
April 16, 2019
Young Lawyers Committee
February 6, 2019
Patent Litigation Committee
An In-House Perspective on Biologics/Biosimilars Litigation
April 24, 2019
Finding Our Lost Marie Curies: Gender Diversity in Innovation
Trademark Law & Practice and Copyright Committees Happy Hour