B IOTECHNOLOGY ..................................................................................................................................................... 2
E LECTRONIC AND C OMPUTER L AW .............................................................................................................................. 3
F OOD AND D RUG ..................................................................................................................................................... 4
I NTERNATIONAL T RADE C OMMISSION .......................................................................................................................... 4
L ICENSING AND M ANAGEMENT OF IP A SSETS ............................................................................................................... 4
M ERGERS AND A CQUISITIONS .................................................................................................................................... 5
P ATENT A GENT ........................................................................................................................................................ 6
P ATENT L AW ........................................................................................................................................................... 7
P UBLIC E DUCATION .................................................................................................................................................. 7
S PECIAL C OMMITTEE ON J UDGES ................................................................................................................................ 8
T RADEMARK I NTERNET .............................................................................................................................................. 8
T RADEMARK L AW .................................................................................................................................................... 8
T RADE S ECRET L AW .................................................................................................................................................. 9
T RADEMARK L ITIGATION ........................................................................................................................................... 9
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B IOTECHNOLOGY
NLC Liaison Wen Xie, GIP Global IP
Annual Meeting:
 CLE Session – During the Annual Meeting in October, we have an awesome CLE program planned with the International Trade Commission Committee. The Joint
CLE program is Thursday, October 22, 2015, 3:30-5:50 PM. Vicki Norton and
Kwame Mensah are moderating and ITC staff attorney Brian Koo along with
Maximilienne Giannelli and Daniel Yonan will discuss whether Soteria Biosciences should enforce its patents before the ITC or in district court, and Herbert Hart is going to address what Soteria Biosciences should do to prepare for the PTAB challenges that will likely ensue.
 Informal Happy Hour – Friday, October 23, 4:30-7 PM at Stone’s Throw (Lobby Bar), the Chemical Practice and Biotechnology Committee are having another informal
Happy Hour sponsored by Evans Analytical Group and CHEMIR. You can pick up your tickets after the Biotech/ITC CLE meeting or after the Chemical Practice meeting. Alternatively, contact Laura Rainey at lrainey@eag.com to receive your tickets by mail.
Recent Events:
 On September 14, 2015, the USPTO held its
Biotechnology/Chemical/Pharmaceutical Customer Partnership Meeting. It was colocated with the Detroit Satellite Office. Topics discussed include subject matter eligibility, third party submissions, AIA 130 declarations, corrections in PCT and national stage applications, and double patenting.
 Written Comments on the Interim Guidance on Subject Matter Eligibility are due
October 28, 2015. You can submit your comments directly to the USPTO via email to2014_interim_guidance@uspto.gov. Alternatively, if you submit your comments to Ashok Mannava atashok@mannavakang.com by October 2, 2015, your comments will be considered when AIPLA formulates it written comments to the USPTO.
 Patents for Humanity is the USPTO's award program for those using patented technologies to reach the underserved. It recognizes businesses and others who use their technology to address humanitarian issues in medicine, nutrition, sanitation, energy, and improved living standards. There are no licensing or financial requirements to participate. The USPTO is seeking those who make a difference in the lives of the less fortunate. The application deadline is December 5, 2015, for the
2016 awards. Tell your inventors and clients as they might want to apply for the wonderful humanitarian benefits their patented technology provides.
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Issues Leader’s Notes – Vicki Norton:
 The PTAB, Biotech Litigation and Plant subcommittees is finishing up work on the joint Biotech-ITC CLE presentation at the Annual Meeting, in which outside counsel to Soteria Biosciences will provide strategic advice on what Soteria needs to know about the pros and cons of enforcing patents in the ITC, as well as the impact of recent PTAB decisions and the need to reassess Soteria’s patents in view of recent cases holding biotechnology patents invalid as patent ineligible or lacking written description. All of the subcommittees also continue to welcome new members and volunteers to assist with new projects, especially with postings to Soteria’s microsite. Please contact any Leader of the Biotech Committee or Co-SubChairs of the subcommittees if you are interested in participating.
For more information, contact Wen at wxie@gmu.edu.
E
LECTRONIC AND
C
OMPUTER
L
AW
NLC Liaison Maria T. Ianiro, Rankin, Hill & Clark LLP
ECLC and the USPTO Electrical Groups are presenting "Partnering in Patents" program on
October 21, 2015 at the USPTO main campus. The program has been approved for CLE credit. Additional information can be found on the AIPLA website: http://www.aipla.org/learningcenter/AM15/Pages/2014PIP.aspx
At the AIPLA Annual Meeting, ECLC and IP Practice in Japan will present a joint program focusing on patentable subject matter standards and best practices for computerimplemented inventions in the US, Japan, China and the EPO, on Thursday, October 22.
As always, ECLC is soliciting articles for the next ECLC newsletter. If you have any short articles or items of general interest for the newsletter, please send such articles and/or information to Mike Dunnam (mDunnam@bakerlaw.com), Francisco Castro
(Francisco.castro@arentfox.com) or Per Larsen (phlarsen@hollandhart.com).
For more information, please contact Maria at ianiro@rankinhill.com
.
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F OOD AND D RUG
NLC Liaison Joshua A. Davis, Fitzpatrick, Cella, Harper & Scinto
The Food & Drug committee is hosting a panel discussion on biosimilars at the Annual
Meeting titled “Biosimilars are Off and Running: A Litigation and Regulatory Update”. The panel is scheduled for October 23 at 3:30-5:30pm.
For more information, please contact Joshua at jdavis@fchs.com
.
I NTERNATIONAL T RADE C OMMISSION
NLC Liaison Andrew Strickland, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
The ITC Committee will join the Biotech Committee at the Annual Meeting on October 22 to present a joint panel titled “Whether to Pursue Enforcement of Soteria Bioscience’s [a hypothetical company’s] Patents before the ITC and/or District Court, and Preparing for
PTAB Challenges to Soteria’s Pre-AIA and Post-AIA Patents.” ITC Committee speakers for this session are Max Giannelli (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) and
Daniel Yonan (Sterne, Kessler, Goldstein & Fox). In addition, Brian Koo will join as a voice from OUII (although of course not necessarily speaking for OUII).
On June 25, 2015, we held a panel discussion discussing some of the unusual or unexpected
Ground Rules found at the ITC and their experiences navigating them. Each practitioner focused on one ALJ and highlighted a few of that ALJ’s more interesting rules. The panel also offered tips avoiding common pitfalls when encountering them.
The ITC Committee will be hosting an upcoming panel discussion with some of the
Commissioners’ Attorney-Advisors to discuss their role in ITC investigations. While no date is set, we plan to present this discussion within the next six months.
The Committee is in the process of planning future meetings and is looking for Committee members interested in helping plan, organize, and/or speak on a variety of topics. If you are interested in participating (or know someone who would be), please email Andrew
Strickland at andrew.strickland@finnegan.com
.
L ICENSING AND M ANAGEMENT OF IP A SSETS
NLC Liaison Dave Gosse, Fitch, Even, Tabin & Flannery
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The committee is actively working on content for the Mid-Winter Meeting and has formed two subcommittees to develop content relevant to IP licensing.
 The Case Law Review subcommittee has posted write-ups of Azure Networks v. CSR and Kimble v. Marvell. More summaries will be posted as relevant cases issue.
 The Forms subcommittee is developing a collection of annotated sample agreements, including license and covenant-not-to-sue agreements.
For more information, please contact Dave at dgosse@fitcheven.com.
M ERGERS AND A CQUISITIONS
NLC Liaison Margaret A. Abernathy, Baker & Hostetler LLP
The Mergers and Acquisitions (M&A) Committee encourages discussion and investigation of IP related-issues that can arise in transactions, including mergers, acquisitions and divestitures. The M&A committee is a relatively new AIPLA committee and the primary goals of this year are to institute regular programming and educational resource access for our committee members.
The M&A Committee has a leadership team that includes the subcommittee chairpersons active in the committee and the NLC Liaison. The subcommittees are: Brown Bag
Educational Sessions, Clause Bank Subcommittee, Stated Meeting Planning Committee,
Advanced Programming Committee, Force Majeure Subcommittee, Professional Programs
Committee and the Online Programs Committee.
This past year in review, the M&A Committee not only established these subcommittees, it also:
 launched its first committee-wide brown bag educational session,
 submitted a plan for a road-show in 2015 directed to IP issues in transactions,
 held a social for committee members in the D.C. area, and
 established a social media presence to link members for networking and discussing issues of interest.
This upcoming year, M&A Committee is looking forward to:
 assisting the NLC in planning the NLC annual retreat in March of 2016 in Austin, TX,
 hosting a brown-bag series at least quarterly,
 involving more members actively in the committee,
 presenting at the AIPLA Road Show mentioned above, and
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 increasing engagement of committee members on social media for the committee.
For more information, please contact the chair, Carey Jordan at ccjordan@mwe.com
. We would love to get you plugged into this committee. We are still looking for two volunteers to serve as liaisons.
Check out the committee microsite: http://www.aipla.org/committees/committee_pages/MandA/Pages/default.aspx
P
ATENT
A
GENT
NLC Liaison Steve Holzen
The Patent Agent Committee has successfully scheduled six “Continuing Education Series” for Patent Agents. These are conducted monthly via teleconference and are open to all patent agents. Our first call was held on May 28 and we will hold one more in November.
The topics include: Agent Privilege; Inter Partes Review – Lessons Learned; IP
Commercialization; Patent Pro Bono Program; European Patent with Unitary Effect and the
Unified Patent Court; What Can An Agent do?
We are currently in discussions with others to hold additional teleconferences on the following topics: “Patent Agents need mentors too - How AIPLA can help; how the Global
Dossier will impact your workflow”; “Comparison of US and EP practice on software patents”; “The International Application - how to draft an application to reduce the need for amendments”.
Our committee has also provided volunteers to help write papers to accompany the CLE session mock trial entitled “Putting the New PTAB Rules and Regulations into Practice,” which will be jointly held by the Mentoring, Patent Agent, Patent Law, New Lawyers, and
Inter Partes Review Proceedings Committees at this year’s Annual Meeting in October.
We have received great feedback from the committee members who thanked us for our efforts and asked us to keep it going. We have all noticed a significant uptick in interest in our committee. Additionally, our committee has built a Facebook page from scratch. The page went from zero “likes” in December of last year to over “500 “likes” now.
For more information contact Steve at sholzen@srr.com
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P ATENT L AW
NLC Liaison Joshua Kresh, Shearman & Sterling LLP
We are seeking volunteers to help with several initiatives. Look for news in the next few months or join the committee to get emails.
The Committee will be putting on a substantive CLE at the Annual Meeting covering PTAB rules and Regulations
The Committee’s quarterly Newsletter is always looking for articles on developments relating to the patent system.
The Patent Policy subcommittee has bi-monthly conference calls and is usually looking for volunteers
The Committee recently put on a series of roadshows with the USPTO covering AIA trials.
Thanks to Patrick Lai for helping with bench briefs for one of the roadshows
The Committee has recently formed a 101 subcommittee which will be providing comments on the PTO’s updated guidelines.
For more information, please contact Joshua at jkresh@law.gwu.edu.
P UBLIC E DUCATION
NLC Liaisons Danielle Coleman, Morrison & Foerster LLP
The Public Education Committee continues its university outreach to educate students on aspects of IP law through the USPTO University Outreach program.
The Committee welcomes submission of substantive content regarding IP issues for its website. The Committee also is seeking volunteers to serve as web masters or administrators to edit the website. Any members interested in contributing substantive content or working on the website can contact Danielle at dcoleman@mofo.com
.
Planning for World IP Day 2016 is underway. Events celebrating World IP Day will be held around the country. If you are interested in participating in an event in your area, please contact Elise Selinger, at eselinger@dfw.conleyrose.com
.
For more information, please contact Danielle at dcoleman@mofo.com
.
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S PECIAL C OMMITTEE ON J UDGES
NLC Liaisons Jennifer McCollough, U.S. District Court for the Eastern District of Texas and
Ajeet Pai, Vinson & Elkins LLP
The Special Committee on Judges will be hosting a joint breakfast with the Women in IP committee at the Annual Meeting in October.
For more information, please contact Jennifer at Jennifer_McCollough@txed.uscourts.gov
or Ajeet at apai@velaw.com
.
T RADEMARK I NTERNET
NLC Liaison Missy Sikorski
Monthly conference calls are open to all members and occur on the third Wednesday of every month. Agendas are circulated via email to all committee members prior to the call. This is a great way to hear about recent developments with ICANN, the new gTLDs, and related laws, which are discussed in addition to committee activities and volunteer needs. You can add Trademark Internet to your AIPLA committee selections to receive committee listserv emails. Please be sure to check out the regularly updated content on the committee microsite, and join the new LinkedIn subgroup!
For more information on Trademark Internet, please contact Missy at missysikorski@gmail.com
T RADEMARK L AW
NLC Liaison Missy Sikorski
Commissioner for Trademarks Mary Boney Denison and Deputy Commissioner Sharon
Marsh, as well as Chief Judge Rogers and/or Deputy Chief Judge Richey of the TTAB will be speaking at the joint Trademark Committees session during the Annual Meeting in
Washington, DC. They will update us on the initiatives of their offices and will also answer questions from the audience. Check the meeting program for the committee session, as well as the great line-up of trademark-oriented educational tracks.
Planning is also underway for the June 2016 Trademark Boot Camp, a 2-day comprehensive program to cover trademark searching, applications, office action responses, TTAB proceedings, cease and desist letters, and other disputes.
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For more information, please contact Missy at missysikorski@gmail.com
.
T
RADE
S
ECRET
L
AW
NLC Liaison Missy Sikorski
The Trade Secret Law Committee has planned tracks for the 2015 Annual Meeting that can be found in the meeting program, and is also planning the two-day 2015 Trade Secret
Summit, "Ensuring Innovation and Security," to be held in downtown Boston in mid-
November.
For more information, please contact Missy at missysikorski@gmail.com
.
T RADEMARK L ITIGATION
NLC Liaison Tanya Eliason, Eliason Legal Solutions
John Crosetto of Garvey Schubert Barer is the Chair of the Trademark Litigation Committee and Kathryn Smith of Wood Herron & Evans LLP is the Vice-Chair.
The Trademark Litigation Committee does not hold regular monthly calls for its full membership. However, the Committee’s leadership participates in monthly calls to discuss trademark litigation and content branding issues. They then forward any relevant information issuing from the phone call to the full Committee via email.
The Committee continues to focus on longer term/special projects and seminars.
Volunteers are always welcome. Most immediately, the Committee is seeking volunteers for its legal standards project. This very valuable and ambitious project entails collecting trademark law from circuit courts, creating reports of the law in each circuit, and then compiling the reports into a quick reference guide for practitioners. Amazingly, the
Committee has already completed four circuits – 6th, 9th, 11th, and 2nd – but it needs your help to complete the others. The goal is to finish the project by April 2016 before the
Spring Meeting.
The Committee is also seeking volunteers for its case summary project. Volunteers are welcome to write summaries of circuit court and TTAB cases or to simply alert the
Committee to the names of recent appellate decisions with unique subject matter, outcomes, or that present twists on conventional jurisprudence. Basically, the Committee is interested in the non-headline grabbing cases that will inevitably be covered by every
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other outlet. Practice tips are also welcome. The next set of summaries and practice pointers will be published this fall on the Committee’s microsite and in AIPLA Newstand, the organization’s legal newsfeed emailed daily to subscribers. As always, writing credit is available for anyone who contributes written material to the Committee.
In addition to the standards project and the case summaries, the Committee also welcomes project ideas from volunteers. As an example, one intrepid individual recently volunteered to create a set of standard jury instructions relevant for trademark litigation. These will be posted on the Committee’s microsite.
As for seminars, the Committee presented a seminar on content branding in early
September 2015. It has no immediate plans for another seminar.
Finally, for those NLC members attending the Annual Meeting, consider introducing yourself to the group. You should swing by Harry’s Pub inside the Marriott (the location of the conference) on Thursday, October 22, at 7 pm. Enjoy libations and learn about how you can work with the Trademark Litigation Committee.
For more information, please contact Tanya at tanya.n.eliason@gmail.com
.
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