Announcing the 4 Law Student Reporters for ABA-IPL’s Trademark Day at the USPTO

LSAG is pleased to announce the four law students chosen to represent LSAG as Law Student Reporters at this Thursday’s Trademark Day at the USPTO!

Naomi Abraham: @AgentAbraham

Hannah Becker: @QueenHannah

Aryane Garansi: @Aryane-IP

Heather Schubert: @Schubert921

For more on the Trademark Day at the USPTO event this Thursday, September 18th, see past blog post here for a recap on last year’s event: http://goo.gl/1tUWcN

If you’re interested in attending this year’s Trademark Day, registration is still open here (very affordable and log in to your ABA account when registering for a law student discount!): http://goo.gl/so4AZt

Make sure to follow the Law Student Reporters this Thursday, September 18th, throughout the day as they live-tweet Trademark Day at the USPTO!

Committee Report: ABA-IPL Trademark Legislation Committee

by Wesley Paisley (@WesleyPaisley)

The Trademark Legislation Committee of the ABA-IPL Section focuses on pending legislation relating to domestic trademark laws. In the past year, the committee prepared brief reports on the “Non-Disparagement of Native American Persons or Peoples in Trademark Registration Act of 2013” (H.R. 1278), “An Act to Amend the Trademark Act of 1946 to correct a format error in the provisions relating to remedies for dilution” (H.R. 6215), and the “Minnesota Small Business Protection Act” (H.R. 6215). The Committee did not propose any resolutions to council on these bills, however. In addition, a report is currently being prepared on the “No Stolen Trademarks Honored in America Act” (S. 647, H.R. 778), and is expected to be completed by the end of 2013.

This Committee prepared several reports and resolutions that were presented to the IPL Council last year, and were adopted either unchanged, or with minor edits.  Those include a Resolution against the USPTO proposal to repeal Section 21(b) of the Lanham Act, which would eliminate district court appeals from TTAB in ex parte cases; a Resolution supporting amendments to the Lanham Act’s damages provisions relating to injunctive relief; and a Resolution against the amendments to the Canadian Trade-marks Act to eliminate the use requirement to register trademarks in Canada.

Meeting in Boston
I recently attended one of their meetings at the ABA annual in Boston on Friday August 8th. The group is headed by James L. Bikoff, the chair, and vice-chairs: Rodney K  ”Rodney”  Caldwell, Robert Newman, and A. Justin Ourso III.

The Chair James L. Bikoff, began the meeting by discussing recent proposals submitted to the Council. One of those items was a webinar that they are working on: “Flag on the Play: The Redskins, The Slants, and Other Disparaging Trademarks”.

The committee discussed the focus of the webinar. The date is locked in for September 16. Possible focus of the webinar range from: (1) discussing the historical treatment of scandalous and disparaging matter in the Trademark Trial and Appeal Board and federal courts; (2) comparing the TTAB decision concerning The Washington Redskins with how the Board has treated other marks in recent cases, including “The Slants” and “Stop The Islamization of America”; and (3) providing tips and future strategies for refusals and proceedings involving Section 2(a).

Panelists will possible range from Ron Coleman, who was involved in THE SLANTS case; Jesse Witten, the lead attorney representing the petitioners in the Blackhorse decision on cancellation of the REDSKINS marks; Linda Kuczma, a TTAB Judge who also spoke at the American University seminar on this subject; and Christine Farley, A Trademark professor at the American University Washington College of Law.

The event will be jointly hosted by the Trademark Legislation Committee and ABA’s Diversity Action Group.

The committee also discussed their recent release of their white paper, A Section White Paper: A Call for Action for Online Piracy and Counterfeiting Legislation. Their publication was announced by a press release on the ABA website.The paper urges U.S. lawmakers to contemplate the different stakeholders regarding internet businesses, internet users, and right holders. Furthermore, it also addresses the ongoing injuries suffered by U.S. businesses and consumers as a result of counterfeiting pharmaceutical drugs.

All of the meeting discussions are open among committee members, but cannot be discussed outside the committee because only the ABA-IPL Section’s Council can speak on behalf of the section about policy issues. 

Committee conference calls are scheduled throughout the year. To vote on committee work product, attorney members must be registered as “voting members” before the committee begins considering any work.  Law student members are invited to participate in the research and discussions of particular topics, but they cannot be voting members.

CLE Review: Do Domains Really Matter?

By: Wesley Paisley (@WesleyPaisley)

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The CLE: Do Domains Really Matter? was moderated by Chrissie Scelsi, with speakers Reg Levy and Dennis Prahl

Do Domains Really Matter?”. When I first read the title of the CLE, I thought of course they do. I do not expect, when I open up my trusty browser and type in a brand name into a search engine that I will not be able to find the domain for my favorite brand. When I want soda, I pick up a S.Pellegrino, and when I want to look for it on a website I look for it at www[dot]sanpellegrino[dot]com, obviously not sparkly soda. For the most part I know it will always be at [dot]com.

However the gtld ICANN policies aim to expand the language of the domain. Let’s go back to my original hypo, of looking for a soda. The soda is created by an Italian company, so should I go to sanpelligrino.it, sanpelligrino.us, or sodaitaliani.it? Similarly, if a friend from Korea wants to get access to their Korean brand version, do they go to 이탈리아어 소다.kr ?

Reg Levy, the first speaker, explained that while the average user may see this as superfluous, it actually aids the protection of the brand. In our modern world where consumers have many choices, brand owners have to be on top of their game.

As Mr. Levy pointed out on twitter, the gTLDs will adjust for the character differences among countries, such as Chinese domains will have traditional and simplified characters.

@RegLevy Aug 7 @wesleypaisley China’s ccTLDs include “.cn” and “.中国”. Hong Kong and Taiwan also have Chinese-language ccTLDs.

Mr. Levy also noted that ICANN has implemented a domain resolution policy to defend against domain disputes, cyber-squatters and typo cyber-squatters to squash these unwanted behaviors. With ICANN’s domain registration policies, companies or agents would have to show why they want to register domains such as “Facebock”. As Reg noted, unless you are named Facebock, it’s going to be difficult to overcome evidence of bad faith to register that name. 

Dennis Prahl then revealed that businesses have options for defending their marks across multiple domains, including search services which identify trademark violators on the internet. 

Mr. Prahl then discussed the ongoing debate between search engine optimizers (SEOs) and domain owners. Well-known domain owners want browsers to auto-correct a user’s typographical error, causing the the user to navigate to their website. However, an SEO ad manager would probably want the mistake to happen so that the user would have to click on one of their ads to be redirected to the proper domain.

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Mr. Prahl also discussed dispute resolution on the international scale. He highlighted the Asian Doman Name Dispute Resolution Centre, which provides a Uniform Dispute Resolution Policy for companies. He also noted that the concept of bad faith varies among countries, and the controlling standard depends on the country that the infringing domain is registered in. These differing standards can greatly affect a case. For example, posting SEO ads is evidence of bad faith under the Canadian Dispute Resolution Policy. Mr. Prahl also broke down the cost of domain dispute resolution. 

During the question and answer segment, an audience member asked if a domain registration company can be sued for infringement or contributory infringement. The answer: maybe. It might be difficult to sue domain registration companies since they have contractual obligations to supposed infringers. This makes an ISP take-down the better strategy.

If you were unable to attend the ABA Annual in Boston on April 7-8, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters— look for #IPCENTRAL hashtag.

#CLE Recap: Buyer Beware – Dangerous Counterfeits in the US

By Jodie Gurry

Counterfeit products include more than just knock-off purses and fake money.  Counterfeiting is prevalent in a wide variety of products that pose a heightened risk to human health and safety.  Panelists at this event discussed how counterfeit products have become more prevalent, especially since the rise of the Internet, and how their continuous existence poses a great risk to consumers.

“When people think counterfeits, they think luxury goods and money, not electrical wires and public safety,” said panelist Tom Grace of Eaton Electrical.  Fellow panelist Matthew Bassiur of Pfizer added, “I’ve never seen a product people use that isn’t counterfeited…if you name the product, [I’ve] seen it counterfeited.”  Other panelists concurred, offering insight and examples of how counterfeit products infiltrate supply chains of pharmaceuticals, electronics, automotive, and even aircraft parts.

Panelist Bruce Foucart, Special Agent in charge of the Boston office of Immigration and Customs Enforcement (ICE), discussed the efforts of the IPR in combatting and limiting the manufacture and distribution of counterfeit products.  He stressed that the best thing anyone can do to help IPR do their job most effectively is to contact them ASAP with any information regarding counterfeit goods.  The IPR can use information to put a lookout for goods or to track ships and aircraft as they come into the U.S.

When the discussion turned to counterfeit products in the pharmaceutical industry, some frightening statistics were introduced.  About 30% of all medicine sold is counterfeit, he claimed.  According to recent studies conducted by Interpol, over 100,000 deaths per year in Africa alone can be contributed to counterfeit drugs.  Even in the U.S., deaths are often attributed to the underlying disease and not to the potential ingestion of counterfeit drugs.  Bassiur said that infiltration of the U.S. legitimate pharmaceutical supply chain is rare but it does happen, most recently with Pfizer’s Lipitor. 

Bassiur, and other panelists, purports that the largest threat right now to consumers and the U.S. supply chain is the Internet.  Nearly everyone has access to the Internet, including counterfeiters trying to pawn their products.  Counterfeiters are very aware of what is in demand and they are set to supply it, Bassiur said.

According to panelists from the automotive and electronics industries, all recognized brands in the electrical industry are being counterfeited.  Recognizable brands are the target of counterfeiting because they are widely known and in demand, have a high volume of products being produced, and have a large installed production base with complex, loosely controlled supply centers.

Panelist Tom Grace discussed how Eaton is proactive about stopping the sale of counterfeit electronics.  Eaton participates in a “working group” with about 18 other brands.  Together, they go out to raid known counterfeit manufacturing sites.  Working together is helpful because there are almost always multiple brands being copied at these manufacturing sites.  Grace said foreign governments are supportive of the working group’s efforts and are willing to work with them as they pursue counterfeit manufacturers abroad.

Another way Eaton and other companies are combatting counterfeiters is by using more detailed trade dress to differentiate real products from fake ones.  A lot of counterfeiters do not put permanent labels on their products, choosing instead to use silkscreen and other cheaper, less permanent labels.

Despite recent efforts, counterfeit is still getting worse, said panelist Burton Ford of Lockheed Martin Corp.  “If you haven’t found the counterfeit product in your supply chain, you’re just not looking,” says Ford.  Contractors are under pressure to reduce costs on all fronts, so the tendency is to look for cheaper sources, aka counterfeits.  Ford discussed recent efforts by the Department of Defense to cut down on remedying mistakes made by businesses accidentally using counterfeit products.  On May 6, 2014, the Department of Defense ruled that businesses are no longer able to recover costs from remedying counterfeits on defense contracts, which stands to be a substantial motivator to businesses to be more diligent in choosing their suppliers. 

5th Annual Law Student Reporters Program!

The Law Student Action Group of the American Bar Association Section of Intellectual Property Law presents the 5th Annual Law Student Reporters Program:

Download the application.

The Law Student Action Group (LSAG) is excited to announce the return, for the fifth year in a row, of the American Bar Association’s Section of Intellectual Property Law (ABA-IPL) Law Student Reporters Program. The Law Student Reporters (LSR) program was created to provide an opportunity for law students to attend ABA-IPL’s IP programming while engaging and interacting with IP practitioners from around the world at the largest ABA-IPL event of the year — the Intellectual Property Law Conference in Washington, D.C. The conference will take place March 25-27, 2015 at the Bethesda North Marriott Hotel & Conference Center in Bethesda, MD. This year will mark the the 30th anniversary of the conference and we want you to be a part of it!

APPLY:

We will begin accepting applications for early decision starting on September 2, 2014. The deadline to return your completed application for early decision is Tuesday, September 30, 2014 by 5:00 PM EST. The application window will reopen again later in the Fall semester although preference will be given to early applications, so get your application in as soon as possible. Download the application

This year we have also given you the option to be considered for the ABA Annual Meeting as a Law Student Reporter in Chicago, IL. If you are not selected to participate in the ABA IPL Spring Meeting, your application will be saved for consideration as an ABA IPL Law Student Reporter at the annual meeting (and remember, preference is given to early applications).   

ELIGIBILITY:

- Applicants must be a member of the ABA-IPL and its Law Student Action Group.

Membership for both groups is free, with your paid ABA law student membership.

- Applicants must be currently enrolled at an ABA-accredited law school.

LSR REQUIREMENTS:

- Applicants must be available to attend and report the entire three days of the conference.

- Reporters are expected to prepare a minimum of two pre-conference posts that provide a preview of their assigned events.

- Reporters must have a Twitter account and Tumblr account. You can create them for free when you apply.

- Post a professional biography to the LSAG Tumblr account.

- Attend and tweet during assigned CLE programs using the #IPLSpring hashtag.

- Attend and tweet during assigned Non-CLE Events using the #IPLSpring hashtag.

- Attend assigned ABA-IPL committee meeting(s).

- Author three recap blog articles for LSAG’s blog (sample: http://lsag-aba-ipl.tumblr.com/post/47966953610/cle-review-copyright-infringement-in-patent)

Have any questions? Feel free to reach out to AJ Oakes and Dewight Flinch at lawstudentreporters@gmail.com!

Download the application.

#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.