Category Archives: General Information

Upcoming Pennsylvania CLE courses to cover the law of social media

This month I’m involved in two Pennsylvania Bar Institute continuing legal education courses that may interest IP Spotlight readers: 

E-Commerce:  Legal and Practical Issues:  Seminar topics will include e-contracting, legal issues associated with mixing social networking and e-commerce, privacy and safeguarding client information, and a 2010 case law update.   The seminar will occur (1) December 6, 2010, live in Philadelphia and via webcast, and (2) December 16, 2010, live in Pittsburgh.

Facebook, Blogging and Twitter . . . Oh MySpace!  Seminar topics will include how to handle legal issues that social media can trigger under intellectual property law, employment law, health care law, in the context of litigation, and attorney ethical obligations.   In addition, a panel of prominent in-house counsel will discuss how their companies use (and react to) social media on a daily basis.  The seminar will occur (1) December 6, 2010, live in Pittsburgh, and (2) December 20, 2010, live in Philadelphia.

Which is more valuable: trade secrets or patents?

This month’s issue of the American Bar Association’s Landslide magazine includes a thought-provoking article about this topic.  In the article, R. Mark Halligan points out that patents have limited lifespans, are costly to enforce, and are subject to ever-shifting legal standards of patentability.  The article asks:  can trade secret protection be a better choice for many inventions? 

As with many questions, the answer is “it depends.”  When a client approaches me with an invention to patent, one of the first questions that I ask the client is “why patent this?”   The answer not only helps me draft a patent application that meets the client’s business objectives, it also helps me to ensure that the client does not file a patent application on an innovation that would be better held as a trade secret.  Because of this, it’s important that companies have processes in place to protect both patents and trade secrets as appropriate. 

Patents are valuable, but they require a trade-off in cost and disclosure.  The inventor must disclose intricate details of the invention in the patent application.  The process of getting a patent can be long and costly, especially where global protection is involved.  The prize at the end of the process is an asset which the patent-holder can then license, enforce, sell, or use as collateral to attract financing or investments.

Trade secrets, on the other hand, gain immediate protection.  Like patents, trade secrets can be licensed, and trade secret rights can be enforced.  When you protect a trade secret, you do not disclose your business processes, recipes, formulations, or other valuable information to the world. 

Although trade secret protection can be immediate and less costly than a patent, companies must not be lulled into a false sense that their secrets are secure.  A company must ensure that it has adequate legal protections (employee policies, contractor agreements, site visitor agreements, etc.) and physical safeguards (e.g., security systems, encryption) in place to keep secrets under wraps.  Trade secrets require ongoing care and protection, and companies who hold trade secrets must implement business processes and training programs to ensure that valuable information does not walk out the door. 

Last week I had the opportunity to participate in a monthly briefing of the Intangible Asset Finance Society that touched on this topic.  Roya Ghafele (formerly of WIPO and now with the University of Oxford), Mary Adams (of I-Capital Advisors) and I discussed perceptions of “IP” vs. “IPR”, and the difficulty that companies have in accounting for hidden value in IP / IP Rights.  For more information, the entire session is available as a podcast for purchase on the IAFS website.

What will the Obama Presidency mean for intellectual property?

Now that the results are in and Barack Obama will be the next U.S. president, what changes might his presidency bring for U.S. intellectual property laws?  With election day behind us, a review of pre-election reports of Obama’s IP policies may be useful.  Many of the Obama-Biden goals for IP are summarized in a fact sheet that was published on the Obama campaign website.  Even if only a few of the goals become reality, the next several years will continue to yield interesting developments in the field of IP. Continue reading

Intellectual Property Colloquium: thought-provoking podcast for IP professionals

Doug Lichtman, professor of law at the UCLA School of Law, has launched what promises to be a very interesting series of audio conversations for the IP world.  Professor Lichtman’s new project, The Intellectual Property Colloquium, is an online audio program featuring conversations with guests from academia, the entertainment community, and technology industries. 

The first program is a recording of an engaging classroom discussion featuring Fred von Lohmann of the Electronic Frontier Foundation.  The discussion includes a history of the doctrines of “fair use” and “volitional act” in copyright law, and it presents various views about how on-demand technologies might cause copyright law to evolve.  Future episodes are scheduled to discuss privacy law in the age of social networking, digital rights management, and the extent to which websites must police user-posted content.

The program can be streamed online, received by email, or downloaded as a podcast to your MP3 player.  Also, listeners in California, New York and certain other states can obtain CLE credit for the program.

Making Your Case – The Art of Persuasive Writing

Although it’s been in bookstores since Spring 2008, recently I had the chance to read Making Your Case:  The Art of Persuading Judges by Justice Antonin Scalia and Bryan A. Garner.  Making Your Case includes sections that should be required reading for every attorney – even those who will never appear before a court.  Whether drafting a contract or making an argument to a USPTO examiner, every attorney should expect that the words that he/she puts on paper may end up before a court someday.  So, it’s important that the text be clear, concise, and persuasive. Continue reading

Make the Impossible Possible

I recently read Bill Strickland’s inspiring new book “Make the Impossible Possible“, which describes how Pittsburgh’s Manchester Crafstmen’s Guild grew out of Bill’s vision and passion.  Although the book covers Bill’s activities in the non-profit world, it struck me that Bill has the characteristics of an inventor and entrepreneur.  His book provides a terrific roadmap for inventors and entrepreneurs who want to make their idea a success. Continue reading

Price Detail in a Government Contract can be a Trade Secret

The Freedom of Information Act ordinarily requires public disclosure of government records.  However, there are several exemptions from these requirements.  Exemption 4 of the Freedom of Information Act protects “matters that are . . . trade secrets and commercial or financial information obtained from a person and privileged or confidential.”

The D.C. Circuit recently confirmed that line-item pricing information in a government contract is a trade secret that is exempt from public disclosure.  In Canadian Commerical Corp. v. Dept. of the Air Force (No. 06-5310, Jan. 29, 2007), the court explained that Continue reading

US Presidential Candidates’ Views on Intellectual Property

Now that the field of U.S. presidential candidates is starting to narrow, and with “Super Tuesday” primary elections coming up next week, I found a recent post by Intellectual Property Watch to be very interesting.  In the post, which can be found here, IP Watch summarizes the presidential candidates’ positions on international trade and IP (especially as it relates to China), copyrighted content, Internet neutrality, and the effects of the patent system on generic pharmaceuticals.

If that’s not enough to help you decide who will win your vote, spend a minute or two with the WQAD-TV “select a candidate” online quiz to automatically see which candidate agrees with you the most on issues such as taxes, the war, health care and immigration.  (After taking the quiz, I wonder if my results would be different if WQAD included questions about IP in the survey . . . )

3 Rivers Venture Fair Offers Opportunity for Companies Seeking Capital

The 3 Rivers Venture Fair is in the process of identifying promising, capital-seeking technology and life sciences companies for participation in the 3 Rivers Venture Fair (3RVF) being held April 16 – 18, 2008 at PNC Park in Pittsburgh, PA.The event debuted in 2002 and has become one of the most successful investment forums in the northeast. Past featured companies have gone on to raise more than $250 million, collectively, since their participation in this investment showcase. In 2006, 46 percent of the presenting companies were successful in raising capital as a result of the Fair.If you are or know of a technology of life sciences venture that is exciting, innovative and seeking capital, consider encouraging them to apply for a spot on the 3RVF roster.

There is no deadline to apply, but applications are accepted on a rolling basis and once all the spots are gone the process is complete.

This year the Fair is targeting promising ventures from, but not limited to, Pennsylvania, Ohio, West Virginia, Kentucky, Indiana, Michigan, western New York, western Maryland, D.C. and northern Virginia regions.

For more information and to apply online, visit www.3rvf.com

Best Practices for Maintaining Brand Security – Part 2

When performing due diligence, it often suprises me how often a company claims to have no intellectual property or other intangible assets.  However, even a company with no patents, registered trademarks or registered copyrights will have a significant amount of its value tied to intangible assets such as customer and supplier relationships, reputation, and other elements generally associated with goodwill.  In my last post, I wrote about preventive actions that a company can take to help manage adverse events that can damage a company’s goodwill.  In this post, I’ll discuss actions that a company can take after an adverse event — and hopefully after it took preventive actions — in order to guard against long-term harm to its brand. Continue reading