#CLE Recap: Latest Developments in Trade Secret and Non-Compete Law

By: Melissa Lauretti (@MelissaL2015)

In today’s competitive marketplace, organizations are prepared to invest time and resources in protecting their trade secrets as it is estimated that companies in the United States lose $160 to $480 billion each year due to trade secret misappropriation. Recently, there have been legislative efforts at the federal level to enhance the protection of trade secrets, namely by creating a federal civil cause of action for trade secret theft. While many companies support the expansion of post-misappropriation remedies, organizations must also proactively protect their confidential information by educating their employees and implementing industry best practices.  

The CLE program “Latest Developments in Trade Secret and Non-Compete Law” provided attendees with an overview of legislative efforts to enhance the protection of trade secrets at the federal and state levels, highlighted legislative activities and court rulings related to the enforceability of non-compete agreements in various states, discussed legislative developments in the areas of social media and cyber espionage, and described best practices for protecting trade secrets at the corporate level. Robert Milligan, Partner in the Litigation and Labor & Employment Departments of Seyfarth Shaw LLP and Co-Chair of its Trade Secrets, Non-Compete and Computer Fraud group served as the program’s moderator. Katherine Perrelli, Partner and Chair of Seyfarth Shaw’s national Litigation Department; Jerry Cohen, Partner at Burns & Levinson, LLP; and Karen Tompkins, Senior Legal Counsel, Employment at Stryker Corporation shared their insights as panelists.

Federal Legislative Activity

Presently there is no federal civil cause of action for trade secret misappropriation, so plaintiffs are often resigned to vindicating their rights in state courts. However, there are bills pending in the United States Senate and House of Representatives that, if enacted, would provide a federal civil cause of action for trade secret theft. The panelists discussed the merits of these pieces of legislation. For example, the Defend Trade Secrets Act of 2014 would allow a federal judge to seize the misappropriated trade secret, but it is questionable as to whether this remedy is practical given that it may be difficult to accomplish. The Trade Secrets Protection Act of 2014, which was introduced in the House of Representatives in July 2014, refines the seizure provisions in the Defend Trade Secrets Act of 2014 and provides trade secret owners with extensive remedies for trade secret misappropriation.

In terms of the relationship between trade secrets and cyber crimes, the legislature has considered a number of bills intended to deter cyber espionage. The Deter Cyber Theft Act, which is still pending in the legislature, would enable the President to block the importation and sale of products that contain misappropriated intellectual property that foreign producers obtained from United States companies through the Internet. Similarly, the Cyber Economic Espionage Accountability Act, which is also pending, would allow United States authorities to penalize criminals supported by foreign governments for cyber-spying and theft.  

State Legislative Developments

At the state level, there has been increased activity in the trade secrets and non-compete arenas. Texas became the 48th state to adopt the Uniform Trade Secrets Act; New York and Massachusetts are the only states that have not yet adopted a version of the Act. This past legislative session, the Massachusetts legislature considered a bill to adopt the Uniform Trade Secrets Act. Although the legislation failed, panelist Katherine Perrelli noted that it is likely that discussions will continue in the next legislative session. 

In terms of non-compete agreements, there are various nuances and differences among states. The legislatures of New Jersey and Maryland proposed bans on enforcing non-compete agreements against employees who claim unemployment, while legislatures in Massachusetts and Minnesota considered restrictions and bans on non-compete agreements. Given the differences in the enforcement of non-compete agreements among states, it is particularly important for multi-state employers to remain abreast of legislative developments. Seyfarth Shaw’s 2014-2015 50 State Desktop Reference: What Employers Need to Know About Non-Compete and Trade Secrets Law is one resource that employers can use to remain informed of the diverse non-compete landscape, and attendees received copies of this publication at the CLE session.

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Best Practices for Protecting Trade Secrets and Drafting Non-Compete Agreements

In light of the present legal and legislative landscape, the panelists provided attendees with practical tips for protecting trade secrets and drafting non-compete agreements. According to a 2013 Symantec/Ponemon study that surveyed 3,317 employees, half of the employees who left their jobs retained their employers’ confidential information, and forty percent of those individuals planned to use that information in their new roles. Thus, educating employees about the importance of protecting company information is a vital part of an organization’s protection and enforcement process.  

In terms of safeguarding proprietary company information, it is recommended that companies:

  • conduct entrance and exit interviews with new employees;
  • educate managers and human resources professionals regarding the company-owned items that employees must return upon their departure; 
  • transparently communicate the company’s policies regarding the monitoring of employees’ electronic devices and communications to employees;
  • disable employees’ access to company and computer networks at the time of departure;
  • creature a culture of compliance and confidentiality where employees recognize the value of protecting trade secrets in a supportive and collaborative environment; and
  • share best practices within their industries.

As to non-compete agreements, express representations and clear drafting are keys to enforcement. Employers should ensure that they research states’ practices on enforcing forum selection clauses, and draft forum specification and choice of law provisions with that information in mind, including provisions concerning personal jurisdiction and representations concerning connections to the forum state. Similarly, employers should ensure that employment agreements cover full-time, part-time, and consultants in recognition of the fact that employees may fluidly shift roles within an organization. Finally, employers should ensure that employees receive sufficient consideration for signing non-compete agreements, which may vary by state; specifically, employment is sufficient consideration in many states, but in other venues, employers must give employees additional consideration, such as a bonus, before the non-compete is enforceable.

To learn more about trade secrets law and other related topics, please visit Trading Secrets, an ABA award-winning blog published by the attorneys of the Trade Secrets, Computer Fraud & Non-Competes Practice Group of Seyfarth Shaw LLP

CLE Review: Building Sustainable Industry/University Research Collaborations: Negotiating Patent Provisions of Research Agreements

Reporting by Conor Flynn

The “Building Sustainable Industry/University Research Collaborations: Negotiating Patent Provisions of Research Agreements” CLE panel reviewed the keys to building sustainable industry/university research collaborations, and some key hurdles and approaches for achieving win-win outcomes.  

This panel brought together a panel of experienced IP law practitioners including John L. Brooks, President and Chief Executive Officer of the Joslin Diabetes Center in Boston, MA; Laura DiLorenzo, Intellectual Property Counsel at BASF Corporation in Florham Park, NJ; and Bruce Weintraub, Senior Corporate Counsel in the Legal Division at Pfizer.   

As moderator, Elizabeth Rodriguez, Senior Counsel for Research and Intellectual Property at the University of Massachusetts in Shrewsbury, MA, posed several questions for the panel to discuss, giving each panelist an opportunity to answer.

Many IP issues are generated through the collaborations between university and industry researchers. Throughout the discussion, the panelists discussed a wide range of topics, including: 

  • joint inventions;
  • standing to sue;
  • ownership of inventions;
  • inventorship;
  • relationship management;
  • freedom to operate and research activities;
  • patent option rights;
  • non-exclusive license rights;
  • exclusive licenses;
  • assignments and the Bayh-Dole Act;
  • the Cooperative Research and Technology Enhancement (CREATE) Act of 2004;
  • rights to improvements and tax exempt bonded research facilities; and 
  • joint patent prosecution.

In addition to these fascinating topics, panelists offered insight into the university/industry dynamic. Research agreements between university and industry partners tend to be very long for many reasons. Like many intellectual property agreements, when designing these contracts, the parties write the terms to illustrate ownership clearly and to prepare for the worst. Perhaps the crux of the university/industry dynamic is the differing goals between the two parties — universities seek to publish, while companies want to patent. These differing goals cause problems with joint ownership. 

Take-home messages for practicing attorneys from the panel regarding joint patents are to ensure that the laws of the United States will govern, in order to avoid confusion and to ensure that there are provisions governing who is going to pay for prosecution.

From an industry perspective, companies look to strategize by looking for universities with research expertise that match up with the needs of the company. A university, on the other hand, should look for companies that match its research strengths. 

Joint ownership presents a host of problems for both the university and the company. Generally, joint ownership is viewed as the most equitable concept. However, this leads to a number of issues including making decisions on how to prosecute together. Weintraub noted that his company would overcome this problem by prosecuting and owning the IP, and then licensing it back to the University.

University tech transfer offices also play an important role in this process. When working under a research collaboration, it is important to have a faculty that is educated on patent law. Universities should also have an IP committee or steering committee. Further, it is important to have someone from a company invested in a university so that professors have a contact to quickly process.

Finally, for the practitioner, when drafting an agreement, it is important to include sections on length of options, what to do with discoveries, detailed sections on option grants including timer period for the negotiation of license to the intellectual property.

The “Building Sustainable Industry/University Research Collaborations: Negotiating Patent Provisions of Research Agreements” CLE program was covered by the following Law Student Reporters: Conor Flynn, a third-year law student at SUNY Buffalo Law School in Buffalo, NY, and Lydea Irwin, a third-year law student at University of New Hampshire School of Law in Concord, NH. 

 

Photo credit: Flickr/드림포유

Committee Recap: Trade Secrets and Interferences with Contracts Committee

By Melissa Lauretti

In light of pending federal legislation and recent court rulings, the trade secrets field is dynamic and quickly-evolving. If you would like to remain abreast of developments in the trade secrets realm and actively participate in crafting policy and educational initiatives, consider joining the ABA-IPL Section’s Trade Secrets and Interferences with Contracts Committee.

Led by Chair Robert Milligan, a Partner in the Litigation and Labor & Employment Departments of Seyfarth Shaw LLP and Co-Chair of its Trade Secrets, Non-Compete and Computer Fraud Group, and Vice Chair Martin Chester, a Partner at Faegre Baker Daniels who specializes in complex business disputes, the Trade Secrets and Interferences with Contracts Committee focuses on legal and policy issues in the trade secrets, unfair interference with contractual rights, and unfair competition fields at the federal, state, and international levels. The Committee recently completed its 2013-2014 Annual Review of Trade Secret Cases, and this year’s publication includes hacking and data theft cases, in addition to international cases.

The Committee plans to meet every other month via conference call and intends to host at least three events, which may include in-person programs and webinars, in the coming year. All are welcome to join the committee and participate in its initiatives, including early-career lawyers and law students. In April, the Defend Trade Secrets Act of 2014 was introduced in the United States Senate, and in July, the Trade Secrets Protection Act of 2014 was introduced in the United States House of Representatives. Accordingly, in addition to a formal resolution,  the Committee would like to compose a white paper that analyzes and discusses empirical evidence supporting a federal civil cause of action for trade secret misappropriation and is looking for Committee members to lead this project. 

To learn more about the Trade Secrets and Interferences with Contracts Committee or to join the Committee, please click here

The Trade Secrets and Interferences with Contracts Committee meeting was covered by Melissa Lauretti, a 3L at the University of Connecticut School of Law in Hartford, Connecticut. 

Committee Review: Patent Litigation Committee

Reporting by Conor Flynn

Committee Scope

The scope of the Patent Litigation Committee includes practice in the federal trial courts in cases involving patent issues, proposals for improvements in such practice, including decreasing costs and length of pendency of lawsuits; and cooperation with other relevant committees, as well as other ABA entities, on issues relating to the Federal Rules of Civil Procedure, federal and state local trial court rules or other trial practice issues arising under law.

Committee Leadership

Paul Morico, partner at Baker Botts, serves as the committee chair. Matthew K. Blackburn, managing partner of the San Francisco office of Locke Lord, serves as the committee vice-chair.

The Patent Litigation Committee  program was covered by Law Student Reporter Conor Flynn, a third-year law student at SUNY Buffalo Law School in Buffalo, NY.

#CLE Recap: The End of the Electronic Wars? A New Era of Creative Patent Licensing

Reporting by Lydea Irwin

"The End of the Electronic Wars? A New Era of Creative Patent Licensing," moderated by Kim Parke, brought together three speakers from very diverse backgrounds to talk about and explain cross-licensing: Jon Grossman of Dickstein Shapiro; Changhae Park, an engineer at  Freescale Semiconductor, Inc.; and Eric Grannon, an anti-trust lawyer at  White & Case.

The panel started with Jon Grossman discussing a number of cases that demonstrated the different ways courts have viewed licenses. Almost all of the issues arose from poor license drafting. The big lesson from all of Jon Grossman’s examples? Caveat Emptor. Make sure you know what you are licensing and make sure you design the license around all the potential problems.

Changhae Park started off his discussion with the statement “I am not a lawyer.” Mr. Park then discussed the history of patent ‘wars’ and licensing, including the Sewing Machine War in the 1850s, the Diaper War in the 1990s, and the Reaper War, which had a forced settlement at the beginning of WWI, and had pre-presidential Abraham Lincoln representing the winner of the case. He emphasized that when fighting over electronics patents you should think of the life cycle of the product, as the patent at issue could be outdated by the time the case is over.

Last, but not least, Eric Grannon began with a lesson on the Sherman Act, which has been applied to cross-licenses and patent pools. Cross-licenses can be anti-competitive or pro-competitive. They can be anti-competitive especially when the licenses are between competitors, but they can also pro-competitive by encouraging investment, research, and development.

The question and answer section of the CLE brought up the new license on transfer agreements. Mr. Park described them, and Mr. Grossman said that courts will likely uphold them. Mr. Grannon said that any antitrust matters would depend on the restrictions written into the licenses.

Reporting on this #CLE was done by Lydea Irwin, a third-year JD/MBA student at the University of New Hampshire.

Photo credit: Flickr/RaSeLaSeD - Il Pinguino

#CLE Recap: Patent Challenges Before the USPTO: Lessons Learned

Photos and reporting by Lydea Irwin

Choosing the right proceeding for a patent challenge can be… a challenge. Should you file in district court or file with the PTO? What type of proceeding should you file? With these questions in mind, the panel at “Patent Challenges Before the USPTO: Lessons Learned” gave some great advice for filing patent challenges.

Speakers Denise DeFranco, Greg Morris, Todd Walters, and Hon. Michael Tierney and moderator Jon Grossman discussed the challenges and benefits of inter partes reviews,and post-grant reviews, Denise DeFranco led off the discussion with a wonderful review of the costs of filing with either the district court or the PTO. The overall theme of her lesson was that filing with the USPTO is better for several reasons. While the fees for filing with the PTO can be high, the costs of litigating in front of the district court will likely add up to a lot more. Also, district court litigation can take up to three years, while PTO challenges must be completed within 18 months.

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 Todd Walters spoke next about the timing necessary for patent challenges. His key take-away: pay attention to the timing of your challenge. Inter partes review has a filing deadline of 12 months from the date the complaint was served. Counter-claims may also start a deadline clock, so pay attention when filing them too. Also, don’t file your challenge at the last minute. You might have a question that someone at the USPTO needs to answer, and if you wait till the last minute there may not be anyone available to answer your question.

 The costs of post-grant proceeded can be complicated, but Greg Morris broke it down. His main message was that having district court proceedings and PTAB proceedings at the same time does not lower costs; it also makes things significantly more complicated.

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From left: Judge Tierney, Greg Morris, Denise DeFranco, Todd Walters (not pictured: Jon Grossman)

Judge Tierney was there to answer any questions the panel and the audience had for him. Towards the second half of the CLE, the speakers traded off quickly and continued to check in with Judge Tierney. He answered a lot of questions about what judges do and do not read, the best ways to get multiple claims in without spending too much money or going over the page limit, and how to use experts and discovery.

For more information on this CLE, check out the slides used which are available through the ABA-IPL’s smart phone application. Also check out the tweets posted live during the event from @PatenlyLydea and conorflynn

Reporting on this #CLE was done by Lydea Irwin, a third-year JD/MBA student at the University of New Hampshire, and by Conor Flynn, a third-year law student at SUNY Buffalo.

#CLE Recap: Dress Up Your Brand: Litigating and Managing Trade Dress Portfolios Across Different Industry Sectors

Reporting and photography by Melissa Lauretti

The adage “do not judge a book by its cover” emphasizes the importance of not drawing conclusions based on superficial impressions. But industry leaders recognize that consumers often make purchasing decisions based on their initial impressions of a product or service. As a result, many organizations invest substantial resources in protecting the trade dress associated with their goods.

The CLE program “Dress Up Your Brand: Litigating and Managing Trade Dress Across Different Industry Sectors” provided attendees with practical tips on how to register and enforce trade dress. Douglas Rettew, Partner and Chair of Finnegan’s Trademark and Copyright Group, began the program with an overview of trade dress, which refers to the total image, or “look and feel,” of a product that is eligible for common law and federal trademark protection.   

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Douglas Rettew providing an overview of trade dress. Panelists (from left to right): Kate Asher, Alisa Hurlburt, and Sarah Lockner. 

One of the panelists, Sarah Lockner, Senior Trademark and Division Counsel with 3M Company, discussed how trade dress protection differs among 3M’s various divisions, which include Health Care, Consumer, and Electronics & Energy. As an international company, 3M must enforce and protect its trade dress in a number of countries. To receive protection, trade dress must acquire secondary meaning and distinctiveness such that consumers associate the good with one producer or source by virtue of the good’s appearance. Outside of the United States, as it can take time for goods to acquire secondary meaning in the marketplace, companies may seek to invoke copyright protection of a good’s appearance if the product’s trade dress is not yet eligible for protection.

Another issue that multinational companies may face is obtaining protection for solo-color marks, like 3M’s well-known Post-it notes. Trade dress that is premised on one color is difficult to enforce and protect, and some countries do not even recognize single color marks, which may impact a company’s branding strategy. In addition, in terms of preparing trademark and trade dress registrations, it is often easier for a mark owner to obtain protection if colors are connected to the registration. Nevertheless, from a strategic perspective, mark owners may elect to file black and white registrations as this may broaden the scope of the mark application across the color spectrum, but this approach may not work in all countries.  

While trade dress can be an effective form of protection for an owner’s intellectual property, Kate Asher, Senior Intellectual Property Counsel at Philips, which produces goods in the Healthcare, Consumer Lifestyle, and Lighting sectors, emphasized the importance of pursuing an IP strategy that directly reflects an organization’s business strategy.  Specifically, Asher recommended that companies consider a number of factors, including the organization’s objective for obtaining intellectual property protection, costs, and use, in determining the appropriate methods of protection for certain goods. For example, if a company is continually revising a product’s style and design, seeking trade dress protection may not be effective because it is unlikely that the trade dress will acquire the requisite distinctiveness. Accordingly, some companies will register design patents to protect the appearance of their goods and obtain immediate exclusivity. If the product remains in the marketplace long enough to obtain secondary meaning, then the company has the option to register for trade dress protection, which may result in products receiving substantial protection under both patent and trademark regimes. 

In the cosmetics, skin care, and fragrance industries trade dress is vital, and counterfeiting is a prevalent issue. Alisa Hurlburt, Assistant General Counsel at Elizabeth Arden, Inc. discussed ways in which Elizabeth Arden enforces and protects the trade dress of its products, including its distinctive fragrance bottles. By showing a number of side-by-side comparisons of Elizabeth Arden products and counterfeits attempting to mimic the overall look and feel of the products’ appearances, Hurlburt conveyed the importance of trade dress enforcement and the issues that counterfeiting poses for consumers.  Cosmetics and fragrance producers invest money and resources in advertising to develop their brands, and counterfeiters capitalize on producers’ investments, which results in brand deterioration and revenue losses. Organizations may produce products that are their “impression” of well-known fragrances and luxury goods, but in doing so companies must be very cautious that they are not deceiving consumers. 

Consumer opinion is particularly relevant in enforcing trade dress and litigating trade dress cases.  Juries often want to personally relate to cases, which can be a problem in litigating trade dress cases, especially when jurors are shown side-by-side comparisons of the “real” and allegedly infringing products. This is because jurors will often say that they can tell the difference between the two products after seeing the images side-by-side and would be able to tell the difference if they saw the products in a commercial setting. However, the standard for trade dress infringement is based on the similarities between the “total look and feel” of the products, and not based on individual consumers’ opinions after seeing side-by-side comparisons in a courtroom setting. 

Even before the trial stage, it may be advantageous for brands to conduct consumer surveys as these tools are vital to mark enforcement and protection. Consumer surveys must include many questions that connect the good to the source such that the survey results reflect that consumers associate the product with one source. Although protecting and enforcing trade dress is a time and labor-intensive process, the revenue benefits, brand development, and potential improvements in market share frequently justify the costs. 

Melissa Lauretti, a third-year at the University of Connecticut School of Law in Hartford, Connecticut reported on this panel. 

CLE Review: The Brave New World of Prosecution under AIA First-Inventor-To-File Provisions

Reporting and Photography by Conor Flynn (@ConorFlynn)

The panel brought together experienced practitioners including Robert A. Armitage, IP strategy and policy consultant; Tom Irving of Finnegan; Donna Meuth of Eisai, Inc; Hon. Michael Tierney of PTAB; Todd Walters, of Buchanan Ingersoll & Rooney PC; and Teresa Stanek Rea, of Crowell & Moring and former acting director of the USPTO. They reviewed changes under the AIA First-Inventor-To-File framework, including the new definition of prior art, drafting and prosecuting strong patents, and minimizing post-grant attacks.

Mr. Armitage discussed what has changed, and what hasn’t when it comes to filing for patents. Specifically, his talk addressed (1) the extent to which “best practices” for the timing, content, or number of new patent filings subject to the AIA have changed; (2) how pre-transition patent filings should be handled to assure optimal patentability outcomes under the AIA; (3) patent filing strategies for which time is of the essence in taking action; and (4) unique opportunities to take advantage of the AIA’s new patentability rules for claimed inventions in pending, pre-transition patent applications. 

He pointed out that ongoing patent strategies will be largely unchanged under the AIA, and there will be “very few instances in which it will be advisable for inventors to ‘mix priorities,” [or] file together in one application technical content from the transition and post-transition eras.” “It may be desirable for inventors who have sought patents in the immediate pre-transition period to file an independent application with the identical (or near identical) patent specification and near-identical claims,” he added. An important take away from Mr. Armitage’s presentation is that it is now better to draft claims that are narrow and clearly supported, rather than broad and likely to be infringed. With the amount of expected PGR, IPR, and CBM over the next decade, it is likely that many patents with overly broad claim language will be disfavored.

Mr. Irving discussed Inter Partes Review (IPR), Post Grant Review (PGR), Transitional Covered Business Method Patent Post-Grant Review (CBM), and strategies for prosecution to improve a patent owner’s chances in the new AIA framework. He stressed the importance of claim construction in these matters. When drafting claims that will eventually stand up in post-grant proceedings, practitioners should: (1) get prior art before the USPTO; (2) obtain expert declarations to establish that there is no inherent anticipation or obviousness; (3) carefully draft claims and prosecute claims (to be clear, pass muster under 101, construed as the patent owner desires, described in the specification, and enabled and supported by expert declarations if necessary).

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Tom Irving discussing IPR, PGR, and CBM.

The panel stressed that the AIA has created more work for patent attorneys across the board, as many issues will be uncovered over the coming years.

The “Brave New World of Prosecution under AIA First-Inventor-To-File Provisions” CLE program was covered by Conor Flynn, a third-year law student at SUNY Buffalo Law School in Buffalo, NY, and Lydea Irwin, a second-year law student at Suffolk Law School in Boston, MA.

#CLE Preview: Ethics of Engaging in Cloud Computing and Social Media

By: Jodie Gurry (@j_gurry)

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In today’s world, it’s hard to find someone who doesn’t use social media.  How many people do you know on at least one of the following: Facebook, Twitter, LinkedIn, Google+, Instagram, Pinterest, Reddit, Tumblr… And the list grows every day!  Social media is fun and fast-paced and it allows you to connect with family, friends, customers, or even people you don’t even know in an instant.

In the legal world, social media is leveling the marketing playing field.  Sites like Facebook, Twitter, and LinkedIn allow lawyers to reach out to potential new clients by showcasing their work and developing new connections.  Blogging sites like Tumblr allow lawyers to share insight into current events and attract people to their personal or firm websites. 

While new media can be fun and exciting, they come with new rules as well. This panel will discuss the ethical and legal issues surrounding social media and cloud computing. The program is designed with lawyers in mind, and aims to provide guidance in this new frontier.

Janet Fries of Drinker Biddle & Reath LLP will moderate the panel.  Ms. Fries has represented numerous authors, artists, collectors, estates, art organizations, and Internet companies in connection with issues involving web site review and copyright and trademark protection.  In addition to her legal practice, Ms. Fries is an experienced professional editorial and fine art photographer.

Other Panelists:

Mark Solomon is a lawyer in Ithaca, New York who concentrates in matters of professional responsibility and ethics.  He is an adjunct professor at Cornell Law School, a member of the NY State Bar Association’s Committee on Professional Ethics and serves as chair of the Committee’s CLE programs.

Francine D. Ward (@Francineward) is a corporate and intellectual property attorney with a focus on business contracts, copyrights and trademarks, and publishing issues.  She currently serves as Chair of the ABA-IPL USPTO Trademark Affairs Ex-Parte Committee and of the ABA-IPL Terms of Use Subcommittee of the Copyright & Social Media Committee.

Can’t make it to IP Central at the 2014 ABA Annual Meeting this year? Be sure to follow the ABA-IPL’s Law Student Reporters, who will be covering and reporting all of the CLE’s live from the Conference via Twitter using hashtag #IPCentral.

Ethics of Engaging in Cloud Computing and Social Media” will be held on Friday, August 8, 2014 from 2:30 PM to 4:00 PM at the ABA Annual Meeting in Boston, MA.

Jodie Gurry (@j_gurry) a 3L student at Suffolk University Law School will be covering this CLE live from the Conference.

Image Credit: SMM Boost

#CLE Preview: Buyer Beware: Dangerous Counterfeits in the U.S.

By: Jodie Gurry

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When you think of counterfeit products, you usually think of the fashion industry.  Upscale fashion brands are constantly being imitated by cheap copy-cat brands.  You may not think that knock-off Louis Vuitton luggage or fake Coach shoes will do much harm, but counterfeiting poses bigger threats.  Counterfeiting is prevalent in a wide variety of products, not just fashion accessories.  According to recent studies, the value of the global impact of counterfeit goods and illicit trade is estimated to be $550 billion per year or more.  Ignoring the infringement of IP rights dilutes the strength of the right for everyone and undermines the ability to stop future infringement.

This panel will discuss counterfeit products that threaten health and safety. These products include food and beverages, electrical products, automotive and aircraft parts, and pharmaceuticals. Panelists will also discuss potential solutions and their implementation from a policy and legislative standpoint.

The program will be moderated by James L. Bikoff, chairman of the IP and internet group at Silverberg Goldman & Bikoff.  He has been active for more than 40 years, directing worldwide IP and domain name protection, litigation and anti-counterfeiting enforcement.

Other Panelists:

Matthew Bassiur is Vice President and Deputy Chief Security Officer of Pfizer’s Global Security division where he oversees anti-counterfeiting operations, large-scale investigations into criminal activity, physical security, and crisis management for North, Central, and South America.  He currently serves on the Executive Board of the International Anti-Counterfeiting Coalition and the Board of Directors of the ICE Foundation.

Burton Ford serves as Associate General Counsel for the Lockheed Martin Corporation in Bethesda, Maryland where he is responsible for advising the corporation, international contracting matters, management of litigation and investigations.  He is a Fellow of the Lawyers Foundation of Georgia and is an active ABA member, serving as co-chair of the Strategic Alliances, Teaming and Subcontracting Committee. 

Bruce M. Foucart is the Special Agent in charge of the Boston Office of the Department of Homeland Security, Immigration and Customs Enforcement (ICE).  In July 2014 he was named as the Acting Director for the National IPR Coordination Center in Arlington, VA.

Tom Grace is the brand protection manager for Eaton’s Electrical Sector – Americas.  He has more than 18 years’ experience in Eaton’s electrical business, promoting counterfeit awareness, product enhancement, and policy enforcement.  Tom is actively engaged in training with federal agencies and local law enforcement and has conducted anti-counterfeiting training at most of the major U.S. ports.

Can’t make it to IP Central at the 2014 ABA Annual Meeting this year? Be sure to follow the ABA-IPL’s Law Student Reporters, who will be covering and reporting all of the CLEs live from the Conference via Twitter using hashtag #IPCentral.

Buyer Beware: Dangerous Counterfeits in the U.S.” will be held on Friday, August 8, 2014 from 8:30 AM to 10:00 AM at the ABA Annual Meeting in Boston, MA.

Jodie Gurry, a 3L student at Suffolk University Law School will be covering this CLE live from the Conference.

Image by The Bergman Group/ Dianna Ingram.

#CLE Preview: “Lights, Camera, IP: IP in Popular Culture”

By: Jason Allan Singer (@JASTalent)

At first glance it may not seem so obvious, but Intellectual Property Law plays an enormous part in our daily lives. Entertainment, social media, technology, television, books, and even comics are all major components that make up the dynamic of popular culture in today’s society. Through these different media outlets, we are able to retell our favorite stories, create new abstract ideas, and even rewrite history if we so choose.

However, the line between what is fact and fiction can sometimes be blurry. As David Postolski brilliantly eluded too in a press release issued by the Independent Press, one must wonder if what is being depicted in our favorite books, movies, and television shows are truly real and accurate or simply pure entertainment. 

For example, take the invention of the windshield wiper as portrayed in the Greg Kinnear Movie “Flash of Genius”; or the feature film “Knowing” starring Nicholas Cage where a M.I.T. professor links a mysterious list of numbers from a time capsule to past and future disasters and then sets out to prevent the ultimate catastrophe.

This CLE will highlight the various ways in which Patent, Trademark, and Copyright Law is depicted in such media outlets by reviewing the legal implications involved and taking an in depth look at entertainment and IP law in pop culture.

Panelists Matthew P. Hintz from Servilla Whitney LLC, Adrienne Fields from The Artists Rights Society, and David Postolski, an IP attorney from Summit-based Gearhart Law will be interactively engaging their audience with thought-provoking and informative discussions by using video clips from popular TV shows and movies like CBS’ "Big Bang Theory," BBCA’s "Orphan Black," and Lifetime’s "Drop Dead Diva" – as the basis for exploring trade secrets, inventorship, gene patents (cloning), public disclosures and the America Invents Act.

Can’t make it to IP Central at the 2014 ABA Annual Meeting this year. Then make sure you follow the ABA-IPL’s Law Student Reporters, who will be covering and reporting all of the CLE’s live from the Conference via Twitter using hashtag #IPCentral.

“Lights, Camera, IP: IP in Popular Culture” will be held on Thursday, August 7, 2014 from 1:45pm – 3:15pm at the ABA Annual Meeting in Boston, MA.

Jason Allan Singer (@JASTalent) a 3L evening student at New York Law School will be covering this CLE and he looks forward to reporting and interacting with each of you live from the Conference.

Image Credit: Flickr/Daniel Smith

#CLE Preview: “Where Are We and Where Are We Headed? US Copyright in Review”

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By Jason Allan Singer (@JASTalent)

The intricacies of copyright law… will it transform society? Can it be used to solve issues that have been arising and will continue to arise as the advancement of technology and social media becomes more prevalent? Are we headed towards the next great Copyright Act since its enactment in 1976? What will the Register of Copyright’s call for copyright revision mean for the future of copyright law?

All of these questions and more will all be answered during the ABA-IPL Section’s CLE: “Where Are We and Where Are We Headed? US Copyright in Review” on Thursday, August 7 at 10:30am.  

Industry experts will outline and examine the history of copyright revision, since the enactment of the Copyright Act of 1976. They will address the current plea for copyright revision and the House Judiciary Committee’s copyright review hearings and if legislative development is on the horizon. They will provide and highlight specific copyright revision proposals that are currently being drafted for consideration by various governmental, industry and academic groups.

Furthermore, these industry experts will share and discuss differing views surrounding where the future of copyright law is headed, which is an extremely interesting and complex topic that has highly debatable answers.

The panel will be moderated by Sharra Brockman, who is a copyright and trademark attorney and owner of Verv Law, an intellectual property law firm, focusing on trademark and copyright prosecution, infringements, licensing, and right of publicity for a niche of creative professionals.

Additional program speakers include…

If you cannot make it to IP Central at the 2014 ABA Annual Meeting this year, there is no need to worry. Make sure you follow the ABA-IPL’s Law Student Reporters, who will be covering and reporting all of the CLE’s live from the Conference via Twitter using hashtag #IPCentral.

Jason Allan Singer, a 3L evening student at New York Law School, will be covering this CLE and he looks forward to reporting and interacting with each of you live from the Conference.

Image Credit: Flickr/Martin Fisch

#CLE Preview: The Supreme Court Speaks on Crucial Patent Issues - Alice Corporation, Limelight and Nautilus

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by Wesley Paisley (@WesleyPaisley)

Lately, the US Supreme Court took on a fair amount of technology-oriented cases, though some have questioned the tech savviness of the court. However, the ground breaking concepts that will affect IP practitioners is the important philosophical patent questions of technology that the court answers.

Alice Corporation v. CLS Bank addresses the type of technology that is patent-eligible, Limelight v. Akamai is directed to the standard for induced infringement and Nautilus v. Biosig concerns when a claim is invalid for lack of clarity.

Granted these cases have a textbook analysis of infringement and patentability, they are not independent of other industries. Limelight could have an impact on the medical industry. Software developers as well as investors have been talking about Alice. The United States Patent & Trade Office issued a report right after the decision landed. Finally, Nautilus, the middle child of the bunch, is a case that has the potential to affect the relationship of all patents. The company did get their remedy, and an impact on further case law.

The panelists, Erika Arner, Daryl Joseffer, Prof. John M. Whealan, Hon. Richard Stearns, Hon. Paul R. Michel, will discuss these decisions and offer practice tips for navigating the new playing field laid down by the Supreme Court. As for the format, Scott Alter will be the quiz master in this Q&A session.

CLE: The Supreme Court Speaks on Crucial Patent Issues — Alice Corporation, Limelight and Nautilus
Friday, August 8,
2:30 PM - 4:00 PM


Wesley Paisley (@WesleyPaisley) a 3L at New York Law School is assigned to report on this CLE.

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#CLE Preview: “Patent Challenges before the USPTO: Lessons Learned Since their Inception under the AIA”

By Lydea Irwin (@PatentlyLydea)

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The America Invents Act, or AIA, was signed into law in September of 2011. The AIA made a number of changes to the U.S. patent system, including two new ways to challenge patents before the USPTO, inter partes review and post grant review, which took effect in September 2012. Inter partes review allows parties to challenge a patent on the basis of prior art, while post grant reviews look at the patentability of one or more claims in a patent.

 This CLE, moderated by Jon Grossman, of Dickstein Shapiro, will focus on these two new proceedings. The speakers include Denise DeFranco, a patent litigator and partner at Finnegan, Henderson, Farabow, Garrett & Dunner; Greg Morris, a patent litigator with Paul Hastings; Todd Walters, an inter partes specialist at Buchanan Ingersoll & Rooney; and Hon. Michael Tierney, a judge at the USPTO. The group will discuss how the AIA has affected the practice of patent law, and how to be successful in these proceedings.

 “Patent Challenges before the USPTO: Lessons Learned Since their Inception under the AIA” will be held from 10:30 am to 12:00 pm on Thursday, August 7, 2014 at the ABA Annual Meeting in Boston, MA.

If you can’t make it to IP Central at the 2014 ABA Annual Meeting this year, you can still follow all the action by following the tweets and blog entries of the ABA-IPL’s Law Student Reporters, who will be covering all the events of the Conference on Twitter.  You do not have to sign up for Twitter to follow the Law Student Reports.  Just bookmark the #IPCentral Twitter page and revisit the link from August 7-8, 2014 to follow all the action.

Lydea Irwin, a third year JD/MBA student at the University of New Hampshire School of Law, will report on this CLE.

Image Credit: Flickr/opensourceway

#CLE Preview: The End of the Electronic Wars?: A New Era of Creative Patent Licensing

By: Lydea Irwin (@PatentlyLydea)

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Recently, Samsung and Google entered into a broad cross-licensing agreement, covering some existing and future patents. Microsoft and Canon also have a new cross-licensing agreement.

These cross-licensing agreements allow all parties involved to benefit from any and all of the patents involved in the agreement.

 This CLE will focus on the business, intellectual property, and antitrust issues involved with cross-licenses. One topic will be how two competitors or two members of a supply chain would approach cross-licensing.

 “With Samsung and Apple and others entering into broad cross-licenses in the past year, we believe this topic is very timely.  Some in the press have forecasted that agreements like this may mean the end of the smartphone wars and other large, industry-wide patent litigations.  We will explore that topic, as well.” – Moderator Kim Parke.

Kim Parke will be leading the CLE “The End of the Electronic Wars?: A New Era of Creative Patent Licensing.” The program will feature Eric Grannon of White & Case, Jon Grossman of Dickstein Shapiro, and Changehae Park from Freescale Semiconductor, Inc.

If you are interested in learning the ramifications and benefits from cross-licensing then this CLE, which will be held from 8:30 to 10:00 am on Friday, August 8th, 2014 at the ABA annual meeting in Boston, MA, is your opportunity.

Lydea Irwin, a third year JD/MBA student at the University of New Hampshire School of Law, will report on this CLE.

Image Credit: Flickr/Frans de Wit