4 Steps to More Effectively Use NDAs to Protect Confidential Information

Companies routinely use Non-Disclosure Agreements (NDAs) to protect confidential information shared with potential acquirers, consultants, and other third parties.  But companies cannot merely rely on stock NDAs to protect that information.  They should understand each NDA’s procedures for designating information as “Confidential” (and ensure compliance with them), and grasp the interplay between NDAs and state trade secret laws in terms of imputing duties of confidentiality. Continue Reading

AIPLA’s Updated Model Patent Jury Instructions Address “Clear and Convincing” Standard of Proof & Streamline Case Citations

At every jury trial involving patent-infringement or -invalidity claims, a judge must tell jurors what the law is and how to apply it when reaching a verdict. In the legal community, patent law is known as one of the most complicated and specialized areas of law, so this is asking a lot of most judges, who have broad and vast legal knowledge, but do not typically specialize in patent law. Fortunately, organizations including the American Intellectual Property Law Association (AIPLA) publish model patent jury instructions. These model instructions are helpful templates that ultimately save litigants and the public substantial resources compared to the alternative, where patent jury instructions would need to be drafted from scratch in every case. Continue Reading

USPTO Permitting Patent Applicants to Extend Certain Deadlines Due to COVID-19

On March 31, 2020, the U.S. Patent and Trademark Office (USPTO) announced that it is permitting patent applicants to request extensions of the time allowed to file certain documents and to pay certain fees due to the ongoing COVID-19 emergency in the United States.  In doing so, USPTO director Andrei Iancu is exercising temporary authority granted to him under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed into law on March 27. Continue Reading

USPTO Permitting Trademark Applicants to Extend Certain Deadlines Due to COVID-19

On March 31, 2020, the U.S. Patent and Trademark Office (USPTO) announced that it is permitting trademark applicants to request extensions of the time allowed to file certain documents and to pay certain fees due to the ongoing COVID-19 emergency in the United States.  USPTO director Andrei Iancu has exercised temporary authority granted to him under Section 12004(a) of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed into law on March 27.  The USPTO remains open for the filing of trademark and TTAB documents and fees.

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Protecting Social Media Contact Lists as Trade Secrets

Social media contact lists have become an increasingly important part of a business’s customer lists.  While courts are still grappling with who legally “owns” the data that the employee acquired on the employer’s dime—such as LinkedIn customer connections or access to a list of Twitter-feed recipients[1]—employers can still take steps to bolster the company’s claim of ownership. Continue Reading

Machine Learning Patentability in 2019: 5 Cases Analyzed and Lessons Learned Part 5

Introduction

This article is the fifth in a five-part series. Each of these articles relates to the state of machine-learning patentability in the United States during 2019. Each of these articles describe one case in which the PTAB reversed an Examiner’s Section-101 rejection of a machine-learning-based patent application’s claims. The first article of this series described the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), which was issued on January 7, 2019. The 2019 PEG changed the analysis provided by Examiners in rejecting patents under Section 101[1] of the patent laws, and by the PTAB in reviewing appeals from these Examiner rejections. This article describes another case where the PTAB applied the 2019 PEG to a machine-learning-based patent and concluded that the Examiner was wrong. Continue Reading

Congress Gives Patent and Trademark Office Temporary Authorization to Move Deadlines in Light of COVID-19 Pandemic

On March 27, 2020, President Trump signed the Coronavirus Aid, Relief, and Economic Security (CARES) Act into law.  The CARES Act is a $2 trillion economic stimulus and rescue package designed to mitigate the economic impact of the COVID-19 global pandemic caused by the novel coronavirus, which has resulted in a level of societal and economic disruption that is unprecedented in living memory.  Included in the bill is a temporary authorization to the Director of the United States Patent and Trademark Office (USPTO) during the pandemic to toll, waive, adjust, or modify any timing deadline under the patent or trademark laws.  While the USPTO Director has not pointed to any specific change that will be made under the new authorization, it is possible that at least some timing deadlines will be modified to accommodate hardships faced by stakeholders during this crisis. Continue Reading

Intellectual Property Outlook: Cases and Trends to Follow in 2020 — PART 4

PART 4:  INTELLECTUAL PROPERTY LEGISLATION TO WATCH IN 2020

In this four-part series, we take a look forward at the cases, legislation, and other trends that are likely to have a significant impact on intellectual property law and practice in 2020.  In the first three parts of the series, we looked at the IP issues currently pending before the Supreme Court, possible changes to the law of patent eligibility, and hot topics surrounding inter partes review proceedings.  In this last part of our series, we look at proposed legislation related to intellectual property issues.  In particular, we consider:

  • The “Inventor Rights Act,” which would establish protections for “inventor-owned patents,” including a prohibition on USPTO reexamination of such patents without the patentee’s consent;
  • The Copyright Alternative in Small-Claims Enforcement (“CASE”) Act of 2019, which would establish a small claims tribunal within the Copyright Office to address copyright disputes involving less than $30,000 in damages;
  • The Counterfeit Goods Seizure Act of 2019, which would authorize the U.S. Customs and Border Protection Agency to seize counterfeit articles that infringe a design patent; and
  • The Trademark Modernization (“TM”) Act of 2020, which would establish new ex parte procedures in the USPTO to expunge trademarks obtained based on false claims that the marks were used in commerce.

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COVID-19 and Trade Secrets: Is Your Business Prepared to Protect its Trade Secrets While Your Employees Work From Home?

In response to the COVID-19 outbreak, many businesses (particularly those in states or cities under “stay home” orders) have implemented a work-from-home (“WFH”) directive for employees.  It is important for businesses to address the security of their trade secrets in this new environment in order to reduce the risk of misappropriation.  It is also important to reduce the risk that the trade secret status of information will be lost based on a failure to take reasonable steps to protect its secrecy.  This article addresses some steps your business can consider taking to protect trade secrets accessible by employees who are now working at home.  Even if your business had a WFH policy before the COVID-19 outbreak, it should be re-visited in light of the current circumstances flowing from a pandemic during which all or most of your workforce may be operating on a WFH basis.  For example, what was once a “no trade secrets may be taken home” policy may be impossible in the current climate. Continue Reading

Limited Relief for Patent and Trademark Applicants Affected by COVID-19

The U.S. Patent and Trademark Office (USPTO) is offering limited relief to patent and trademark applicants affected by coronavirus disease (COVID-19) by waiving the fee for filing a petition to revive an abandoned patent or trademark application.  Under an official notice issued by the USPTO, the office is considering the effects of the coronavirus to be “an extraordinary situation” justifying the waiver of fees.  Deadlines and other requirements set by statute remain in force, but the USPTO is lowering the financial costs for reviving a patent or trademark application that went abandoned when a deadline was missed.  Additionally, the USPTO is waiving the requirement for an original handwritten signature in the few instances where the office requires one. Continue Reading

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