Entries by Daryl Lim

Change | Continuity

UIC Law’s IP Center concluded its “13th Annual Ethics in the Practice of IP Law Seminar” last Friday. Bill McGrath, doyen of the Chicago copyright bar and long-time associate director of the IP Center, created the event to focus on an important but overlooked area of IP practice.
 
Over thirteen years, the seminar has come of age and has evolved to stay responsive to the needs of our community of stakeholders. Bill passed the torch to our inaugural IP Law Fellow, Kyle Serilla, who in turn passed it on to his successor Adam Ernette.
 
The ethics seminar is special because it allows our IP Law Fellow to be the principal organizer for the event, from speaker selection, from topic conception to speaker selection. This Friday’s event was even more special because it was the first time our IP Law Fellows, past and present, each moderated a session – one on mental health and wellness and one on diversity, equity and inclusion. It was a proud moment for me to see them handling themselves well in navigating the panel discussion through difficult conversations on each of these issues.
 
During my closing remarks, I told the audience that the ethics seminar marks my final event as IP Center director. Gary Friedlander, retiring as a senior vice-president at TransUnion this summer, will join the IP Center and bring over twenty years of experience to lead the IP program in its next chapter. Gary delivered the opening remarks as an advisory board member (a role he will relinquish when he becomes interim director), providing a bookend to my remarks. Gary is well-placed to succeed. Please join in me cheering him on.
 
The ethics seminar is, therefore, significant in at least two ways. First, it represents the kind of event that should increasingly become a mainstay. Attorneys, judges, academics, and students need to keep up to date and be equipped to deal with issues that go beyond legal doctrine. They need to know how to lead a sustainable and rewarding professional life and be good citizens in the IP ecosystem. Second, it demonstrates how continuity in change at the personnel level can be well-coordinated, harmonious, and forward-looking.

June 13, 2022 by

Zurich | AI & IP

Just returned from Zurich where I spoke at a multilateral meeting on AI and IP, co-organized by the University of Zurich’s Center for IP & Competition Law (CIPCO) and the Swiss Federal Institute of IP (IPI), Switzerland’s national IP agency. Like many of you venturing abroad this summer, it was my first trip abroad in over two and a half years!

In my keynote address on enforcement issues, I observed that each country must balance internal stakeholder interests with its national aspirations. For example, China and the US have different histories and legal traditions from each other and from smaller nations, like Singapore and Switzerland.

I observed governments are actively seeking to promote innovation through AI-friendly initiatives. One example is the USPTO’s AI /ET Partnership, focusing on quantum computing, synthetic biology, blockchain, and virtual reality. Another is Singapore’s AI toolkit companies can use to show AI systems are accountable, transparent, safe and do not discriminate based on attributes such as race or gender, which was recently launched in Davos at the World Economic Forum in May. As blocks become available, governments put them into play and then continue to build a regulatory system on that. These approaches show a general preference for incremental and informed evolution rather than overturning established precedent and settled business expectations.

Trust-building between stakeholders and across borders will be key in the next lap. Data is the new oil. Without trust, businesses and governments will not have the data they need to train their algorithms properly and provide next-generation services to all of us as consumers and citizens.

In this context, my remarks addressed three key questions:
How does AI change IP infringement?
How does AI change IP exemptions?
How does AI change collective rights management?

Kudos to Prof. Dr. Peter Picht, Chairman, Center for Intellectual Property and Competition, and Prof. Dr. Felix Addor, Deputy Director General and General Counsel of the IPI, as well as Head of Legal & International Affairs Division, for assembling a slate of international representatives from IP offices, academia, and industry willing and able to engage in the rigorous conversations that this important topic deserves.

Photos (Clockwise): Delivering my keynote, view from the conference hotel, with Alessandro Curioni, VP Europe and Africa and Director IBM Research and Felix Addor, with participants on an impromptu tour of the university by Prof. Dr. Florent Thouvenin, the university’s beautiful foyer (above), and the law library (below), and a selfie with Beat Weibel, Chief IP Counsel & Group Senior Vice President, Siemens, Wissenschaftliche Assistentin Caroline Kopp and Lehrassistent Valerie Brunner.

June 13, 2022 by

June 10 | Ethics in the Practice of IP: Diversity, Equity & Inclusion

“Diversity, Equity & Inclusion”

#ethics #intellectualproperty #dei #mentalwellness
https://bit.ly/3QcMoQ8
Topics include:
. In-house and law firm DEI initiatives: One-size-fits-all?
. Measuring success in DEI initiatives
. The role of bar associations in DEI initiatives
. The Mansfield Rule: What attorneys need to know
Moderator/Panelist: Kyle Serilla, CIPP/US, Attorney, Chiacchio IP, LLC
. Laith Abu-Taleb. Abu-Taleb, Chief Strategy Officer & General Counsel, Mori
. Esther Lim, Partner & Chief Diversity and Inclusion Officer, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
. Idris McKelvey, Vice President – Patent Group, The Estée Lauder Companies Inc.
. Daniel R. Saeedi, CIPP/US, Partner, Taft Stettinius & Hollister LLP
. Maureen R. Smith, Partner, Fitch, Even, Tabin & Flannery LLP

June 10, 2022 by

June 10 | Ethics in the Practice of IP: Mental Health & Wellness

We have liftoff! #ethics #intellectualproperty #dei #mentalwellness
https://bit.ly/3QcMoQ8
“Mental Health and Wellness”

Topics include:
. Balancing billable and non-billable hours as a junior associate.
. Becoming a community or thought leader in your practice area.
. Managing success and failure.
. Transitions to partnership, in-house, and leaving the legal profession.
. Working remotely and abroad.
Moderator/Panelist: Adam Ernette, IP Law Fellow, Center for Intellectual Property, Information & Privacy Law, University of Illinois School of Law
. Rachel Carnaggio, Partner, Holland & Hart LLP
. Rachel Hunnicutt, Attorney-Advisor, FDA Regulatory Law Division, JAG, U.S. Army Medical Research & Development Command
. Kenneth Matuszewski, CIPP/US, Associate, Goldberg Segalla
. Dr. Rita Sanzgiri, Patent Attorney (Life Sciences), Eli Lilly and Company
. Dardoh Skinner, Associate, Pirkey Barber PLLC

June 10, 2022 by

Goodbyes | Lunch with Nancy Freitag and Jamie Chriqui

Few professors have lived through an institutional change as significant as those of my colleagues and me at an institution known for 120 years as the John Marshall Law School. In 2019, we became UIC John Marshall Law School, Chicago’s first and only public law school and the 16th college of an R1 university with 34,000 students.

The merger opened up new avenues to collaborate across departments. It also gave faculty from the law school unprecedented access to university level-leadership mentorship opportunities and decision-making. I had the honor and privilege of experiencing both – with the faculty administrator leadership program for two years and, concurrently, with the university promotion and tenure committee for three years.

Grateful for the opportunity to catch up over lunch with Nancy Freitag, who served as Vice-Provost for Faculty Affairs and Jamie Friedman Chriqui, who served as Committee Co-Chair. No one did more than the two of them to make deliberations of the hundreds of candidate applications we received over those three years fair, efficient, and even enjoyable. We have all moved on since. Nancy now serves as Head of Pharmaceutical Sciences at the College of Pharmacy, and Jamie serves as Senior Associate Dean at the School of Public Health. As for me, I look forward to working with my new colleagues both within the law school and across the Penn State community in the next chapter of my career.

June 1, 2022 by

Goodbyes | Lunch with Adam Kelly

The John Marshall Law School, now known as UIC School of Law, has its share of inspiring alumni. Adam Kelly is one I had the privilege of working closely with for over a decade. Over the years, he became a wise and trusted counsel for initiatives for the law school’s IP program.
The legal community affirmed Adam’s extraordinary dedication to professionalism, ethics, civility and excellence with the prestigious 2022 American Inns of Court Professionalism Award for the Federal Circuit. The American Inns of Court Celebration of Excellence will honor Adam and his fellow recipients at the Supreme Court of the United States in Washington, DC on October 29, 2022. Details here: https://bit.ly/3t9UdfD.
Of the five recipients from the Federal Circuit since 2012, Adam is the youngest. Of the other four, three are senior judges from the Federal Circuit, and one is the late Don Dunner, doyen of the patent bar and former chair of our advisory board. I mentioned to Adam that we could both be very proud to count three of the five recipients as our board members. UIC Law and its extraordinary 80-plus years of a rich legacy of achievement in intellectual property law is something to be cherished and handed down from one generation to the next.

June 1, 2022 by

Thinking Internationally About IP and Dispute Resolution | What Every Lawyer & Corporate Counsel Should Know

Join us on Thursday, August 11, to learn the overlooked role of specialist mediators, strategies for cross-border SEP disputes, how to design national IP master plans and more! The discussion features well-known and well-respected panelists from across the nation and around the world.

The seminar will also be Gary’s and my first event with our new affiliations. It promises to be a memorable, engaging, and insightful time. Hope to see you there!

Event details here: https://bit.ly/3N8LthJ.

June 1, 2022 by

World Trademark Review | Report on “Trademark Confusion Revealed: An Empirical Analysis”

Uncertain trademark infringement rules cause negotiations to break down, harming both brand owners and potential licensees. They also act as a drag on dispute resolution, compliance, and social equity. The rational response must be a call for clarity in the law.

Whether the courts’ analysis of confusion will evolve in the future depends on how quickly they can absorb and apply new research. Judges and lawyers are very busy people. They usually focus on the task at hand using the tools at hand, which is completely understandable.

This is where publications like World Trademark Review (WTR) are crucially important because they distill new knowledge and make them accessible to judges and lawyers – both digestible and within their radar.

Kudos to WTR Senior Reporter Victoria Arnold-Rees for her article “Three tips for US litigants: court rulings on likelihood of confusion unpicked,” for doing precisely that. She does an exemplary job navigating through complex legal doctrine and empirical data to offer stakeholders the most relevant and immediately applicable insights.

You can read Victoria’s piece here: https://www.worldtrademarkreview.com/article/three-tips-us-litigants-court-rulings-likelihood-of-confusion-unpicked (Subscription required) and my article here: https://bit.ly/3PO0zLr

May 30, 2022 by

Goodbyes | McAndrews, Held & Malloy

Our partnerships with IP, tech, and privacy attorneys in the Chicago community enrich every aspect of our work. They teach our students, share insights at our conferences throughout the year (and invite us to speak at theirs!), financially support our initiatives, and take the time to help us strategize the next iteration of legal education.

A personal thank you to McAndrews Held and Malloy, and especially Christopher Carani, Alex Menchaca, Sharon Hwang Jaster, and Dunstan Barnes for your support and encouragement over the years! You help us exemplify the best aspects of what law schools and firms can achieve together.

May 25, 2022 by