Category Archives: General Information

Watch this space

Regular readers of this blog may have noticed that over the past month or so, my posts have not been quite as frequent as usual.  Well, change is in the air at IP Spotlight, so stay tuned for an exciting announcement.  I expect to be back up to my usual blogging pace very soon.  Thanks for your patience!

World’s most famous trade secret revealed?

This week’s episode of This American Life included an interesting story about a 1979 newspaper article that appeared to reveal one of the most closely guarded trade secrets in the world:  the formula for Coca-Cola. 

In the new program, the reporters find the source of the 1979 article, and they put the formula to the test by preparing a batch and comparing it to The Real Thing.  Is it?  Listen online or download the podcast by visiting the This American Life website.

Inside Intellectual Ventures’ kitchen

What do patent attorneys and foodies have in common?  Both will enjoy the latest episode of Freakonomics Radio: “Waiter, There’s a Physicist in My Soup.”  The hosts interview Nathan Myhrvold, founder of Intellectual Ventures and author of a new book on the science of cooking. 

In the episode, Myhrvold discusses molecular gastronomy, how to make the perfect hamburger, why he cuts ovens in half, and the future of food.  Listeners also get an audio tour of the Intellectual Ventures’ corporate kitchen.  To download the episode as a podcast or to listen online, click here.

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.