AIPLA SUBSTANTIVE COMMITTEE UPDATES
For news about AIPLA's substantive committees, see our NLC Liaisons'
Committee Spotlights below. For more information on any of the substantive
committees, contact the representative NLC Liaison.
AIPLA SUBSTANTIVE COMMITTEE UPDATES ....................................................................................................... 1
Biotechnology ...................................................................................................................................................... 2
International Trade Commission ......................................................................................................................... 3
IP Practice in Israel .............................................................................................................................................. 4
Patent Law ........................................................................................................................................................... 5
Public Education .................................................................................................................................................. 6
Trademark Internet ............................................................................................................................................. 7
Trademark Law .................................................................................................................................................... 7
Trade Secret Law ................................................................................................................................................. 7
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Biotechnology
NLC Liaison Wen Xie, GIP Global IP
Announcement regarding 2016 Mid-Winter Institute Licensing/Biotech/Chem
Committees CLE on Thursday January 28th from 3:30-5:30 PM:
The Licensing and IP Management of Assets, Biotechnology, and Chemical Practice
Committees will present a case study on a pioneering development, subsequently patented,
and ultimately successfully launched and marketed by a Fortune 100 company as a robust
therapeutic for an advanced stage disease - the result of collegial exchanges between US
and non-US researchers associated with different institutions, together with the efforts of a
start-up company whose mission is to develop life-saving products. Our panelists will
address best practices for portfolio management, institutional agreements, inventorship
determinations, due diligence, in-licensing, and the ultimate resolution of disputes which
can arise from the inception of research and development through various licensing
exchanges, with a promise to be stimulating, engaging, and enlightening.
 Speakers:
o Robert D. Titus from Eli Lilly
o Casie Kelly from University of California Irvine
o D.C. Toedt from The Law Office of D.C. Toedt
o Lisa Haile from DLA Piper
o J. Michael Warner from Pfizer
 We also have several Biotech Webinars planned for the Spring:
o Feb 25 (CLE): What’s Left Under 101 After Ariosa En Banc Denial
o March 10: Patent Eligibility Around The World: Latin America
 Luis Diego Castro (CASTRO & PAL ABOGADOS, Costa Rica)
 Ignacio Sanchez Echagüe (Marval, O'Farrell & Mairal, Argentina)
 Rodrigo Calderon (Uhthoff, Mexico)
 Leonor Magalhães Galvão (Magellan IP, Brazil)
o March 16 (CLE): Trade Secrets in Biotech , Biosimilars and Medical Devices
 Victoria Cundiff (Paul Hastings)
 Elizabeth Howard (Orrick)
 Austin Wang (Hologic)
 Debora Plehn-Dujowich (Prismatic Law Group, PLLC)
o April 7: Biosimilars Around the World: Europe
o May 25: Patent Eligibility Around The World: Europe and Australia
The list of speakers for the other Webinars is being finalized, but we have already received
confirmation that the USPTO will have a representative speaker at the Feb 25, 2016
Webinar on Section 101. Debora Plehn (Prismatic Law Group, PLLC) will present at the
March 16, 2016 Webinar on Trade Secrets and Holger Tostmann (WALLINGER RICKER
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SCHLOTTER TOSTMANN) will present at the April 7, 2016 Webinar on Biosimilars in
Europe.
For more information, contact Wen at wxie@gmu.edu.
International Trade Commission
NLC Liaison Andrew Strickland, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
At the Mid-Winter Institute, the ITC Committee will be involved with two sessions. First, it
will hold a full plenary (3 hour) session devoted to a variety of aspects of ITC practice
under Section 337, including its application to trademarks, trade secrets, copyrights, and
standard-essential patents. Second, the ITC Committee will hold a joint educational meeting
with the Anti-Counterfeiting and Anti-Piracy Committee called “IP Border Enforcement by
U.S. Customs and Border Protection.” The speakers include Charles Steuart, Chief of the
U.S. Customs and Border Protection (CBP), Intellectual Property Rights Branch; Paul
Pizzeck, with the CBP Fines, Penalties and Forfeitures Office at the port of New Orleans;
and Juan (JJ) Porras, a CBP Supervisory Import Specialist at the port of Laredo. They will
discuss the recordation of trademarks and copyrights, border enforcement of recorded
trademarks and copyrights, border enforcement against imports of unlawful gray-market
goods, enforcement of Exclusion Orders issued by the U.S. International Trade Commission
under Section 337, the organization of the relevant enforcement groups within Customs,
and how IP rights holders can interact with Customs officials to maximize the protection of
their IP rights.
For past activities, on November 19, the ITC Committee held a meeting to discuss ediscovery at the ITC. We discussed the benefits of, and techniques for, addressing ediscovery issues early in investigations. On November 23, 2015, the AIPLA submitted
comments in response to the recent ITC Notice of Proposed Rulemaking proposing a
number of procedural changes to the ITC Rules for Section 337 investigations. The ITC
Committee provided a first draft of the comments and had significant input into the final
version of them.
For more information, contact Andrew Strickland at andrew.strickland@finnegan.com.
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IP Practice in Israel
NLC Liaison Micha Adler micha.adler.2014@lawmail.usc.edu
Planning for our March 2016 mission to Israel is in full swing and we are looking
forward to a great trip.
o Delegation Information
 Our trip is scheduled for March 20-23, 2016. We will have full days of
AIPLA delegation meetings on March 20 and 23. We are in the process of
scheduling these meetings, which we anticipate will include meetings
with the Israel Patent Office Commissioner, the IP Division of the Israel
Ministry of Justice, university tech transfer offices, innovative Israeli
companies, and various networking opportunities, including a Women in
IP networking event. We will attend AIPPI-Israel’s International
Convention on The Economy of Innovation on March 21-22 in Tel Aviv.
 Please note that AIPPI-Israel requires separate registration through their
conference planner.
o Travel Information
 Our group will be staying at the David Intercontinental Tel Aviv Hotel,
located at 12 Kaufman Street, Tel Aviv. This is the same hotel that AIPPIIsrael is using and will be the venue for the March 21-22 Convention.
 While you are not required to stay at this hotel, keep in mind that this
location will be the central meeting place for our delegation and we will
be departing from / returning there each day that we have AIPLA
delegation meetings. To maximize our time in Israel we will depart for
our delegation meetings fairly early on Sunday March 20 and Wednesday
March 23.
o If you have any questions, comments, or suggestions in the interim, please feel
free to reach out by email to Rivka (rivka.jungreis@tevapharm.com) or David
(dcolb@stc.co.il).
Our committee is co-presenting a conference next month together with NYU Law
School’s Engelberg Center on Innovation Law & Policy. We have already confirmed a
number of terrific speakers and panelists with expertise regarding innovation clusters
in Israel, Silicon Valley, and elsewhere and will be examining what lessons can be
learned in terms of developing innovation ecosystems in New York City and other
regions.
o This FREE conference will take place at NYU Law School on the morning of
Friday, February 26, followed by an optional subsidized networking lunch.
o Confirmed speakers include:
 Fiona Murray (Associate Dean of Innovation, MIT Sloan)
 Dan Breznitz (Professor of Innovation Studies, University of Toronto’s
Munk School of Global Affairs)
 Zur Shapira (Professor of Entrepreneurship, NYU’s Stern School of
Business)
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Phil Budden (Senior Lecturer, MIT Sloan)
Frank Rimalovski (Executive Director, Innovation Venture Fund)
David Rose (CEO, Gust)
Michael Burstein (Assistant Professor of Law, Cardozo Law School)
Registration to the conference is now open. Please visit the link below to
register:
http://www.aipla.org/learningcenter/AIPLANYUInnovation/Pages/Program.as
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Patent Law
NLC Liaison Joshua Kresh, Shearman & Sterling LLP
The Patent Law committee provides an open community for the exchange of ideas and
concerns on U.S. patent law and underlying policy, disseminates information on recent
developments in patent law, develops educational programming on patent law for the
membership and policy leaders, assists other committees with developing educational and
other programming, identifies to the membership and AIPLA important issues of patent
law, and assists with developing positions on issues of patent law to be advocated by the
AIPLA. The committee will do so without regard to any particular technology.
One of the committee’s primary objectives is to assist the AIPLA in its advocacy by
monitoring issues that arise concerning the substantive aspects of U.S. patent law and
bringing those issues to the attention of the membership and the AIPLA. The committee
gathers input from its members on issues involving patent law, and recommends positions
to be taken by the AIPLA. It also drafts, on behalf of the AIPLA, resolutions, and comments
in response to requests from governmental agencies concerning patent law. The Advocacy
Subcommittee (chaired by S. Gregory Herman) assists the committee in these efforts. The
Advocacy Subcommittee also monitors case law, PTO publications and NPRMs for issues
that may need to be addressed by the AIPLA and where appropriate makes
recommendations to the Amicus Committee or prepares a draft resolution for the board.
The Committees first quarterly newsletter was issued on August 5, 2013; each issue
contains articles covering activities of the committee and important developments relating
to the patent system.
Additionally the Mechanical practice subcommittee (co-chaired by Christopher Rothe and
William Pegg) has begun the process of establishing an ongoing partnership with the
mechanical technology centers at the USPTO. The purpose of the partnership is to exchange
information and ideas, to provide feedback, and to address concerns of practitioners and
examiners relating to examination of patent applications in the mechanical arts. Like
similar “partners in patenting” programs run by the Electronic and Computer Law
Committee and the Biotech and Chemical Practice Committees, our goal is to improve the
examination process, and to use the information that we learn to inform our educational
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and advocacy efforts. The subcommittee plans to hold regular conference calls and
meetings with representatives of the mechanical technology centers, and then brief the
Patent Law Committee on what it learns.
The Committee is hosting a meeting at the MWI which will discuss the recent and planned
activities of the committee and its subcommittees including programming, newsletter, §
101, § 112, and other patent law issues. Anyone seeking to get involved is encouraged to
attend.
Finally the Committee has an upcoming teleconference on February 2nd to discuss the
dangers of provisional applications that do not provide sufficient support for later filed
claims.
For more information, please contact Joshua at jkresh@law.gwu.edu.
Public Education
NLC Liaisons Danielle Coleman, Morrison & Foerster LLP
The mission of the Public Education Committee is to provide access to IP knowledge to
those outside of the IP community. The Public Education Committee continues its
University Outreach with the PTO to educate students on the importance of IP as well as IP
career options. The outreach also will include a “myth busters” discussion, addressing
myths and legends about IP law. The Public Education Committee is working with other
substantive committees to gather webinar and meeting content that can be published on
the committee’s website. In addition, the Committee is planning 2016 World IP Day events
in different regions around the United States.
If you are interested in participating in University Outreach or World IP Day events in your
area, please contact Danielle Coleman at dcoleman@mofo.com
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Trademark Internet
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
missysikorski@gmail.com
on
Trademark
Internet,
please
contact
Missy
at
Trademark Law
NLC Liaison Missy Sikorski
Don't miss the 2016 Midwinter Institute joint committee session 3:30-5:30 on Friday,
January 29th, featuring a fun panel on becoming involved in committee leadership, an
interactive breakout session and a networking reception. Check the meeting program for
further details.
For more information, please contact Missy at missysikorski@gmail.com.
Trade Secret Law
NLC Liaison Missy Sikorski
The Committee has planned a session for the 2016 Midwinter Institute. Details can be
found in the meeting program. The 2015 Trade Secret Summit held in Boston in November
was a well-attended success, and planning is underway for the 2016 Trade Secret Summit
in Atlanta. The Committee holds monthly calls to brief members on recent developments in
the law, committee announcements, and to seek volunteers for various projects. Please
contact committee liaison Missy Sikorski for more information.
For more information, please contact Missy at missysikorski@gmail.com.
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