Скачать презентацию 12 for 2012 12 things your business should Скачать презентацию 12 for 2012 12 things your business should

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12 for 2012 12 things your business should know about IP this year Eric 12 for 2012 12 things your business should know about IP this year Eric C. Osterberg Partner, Stamford Office

AMERICA INVENTS ACT n 2013 - First to File n n Hurry up and AMERICA INVENTS ACT n 2013 - First to File n n Hurry up and file, provisional if necessary Jt Venture/Licensing Keys n n n Now - heightened joinder standards n n n Who gets it, prevent sneaky filings by partners Include challenge waivers and penalties Separate lawsuits Multiple claim constructions Now - False marking dead, marking still important n http: //www. uspto. gov/aia_implementation/aia-effective-dates. pdf

TRADE SECRETS V. PATENTS n n That which is disclosed in a patent cannot TRADE SECRETS V. PATENTS n n That which is disclosed in a patent cannot be a trade secret. Trade secrets n n Last forever Require “reasonable” secrecy efforts $ Prohibit theft only Patents n n n Limited time – 20 years from filing Absolute right to exclude Require investigation, disclosure and filing $$

SOPA’S DEAD, NOW WHAT? n SOPA’s target - offshore infringers and counterfeiters, you can’t SOPA’S DEAD, NOW WHAT? n SOPA’s target - offshore infringers and counterfeiters, you can’t get them n n Not just Hollywood Service providers, search engines, payment providers, advertising services (DOJ and private remedies) Revised legislation could be helpful DMCA, Anti-counterfeiting, IP laws, computer espionage, foreign lawsuits, in rem actions, Hague convention

PROOF REQUIRED FOR INJUNCTIONS n Presumption of irreparable injury abolished Injunction suits more expensive PROOF REQUIRED FOR INJUNCTIONS n Presumption of irreparable injury abolished Injunction suits more expensive n Most courts “get it” but now need evidence n n Methods of proof n n n Sales figures, yours and theirs Anecdotes Surveys n http: //www. supremecourt. gov/opinions/05 pdf/05 - 130. pdf

PLAINTIFFS HAVE TO PROVE DAMAGES n No more 25% “rule of thumb” n Experts PLAINTIFFS HAVE TO PROVE DAMAGES n No more 25% “rule of thumb” n Experts face greater scrutiny n http: //iplawwatch. foxrothschild. com/2011/06/articles/p atents/patent-litigation-gets-even-harder-for-patentees/

DON’T PLAN ON BIG ATTORNEYS’ FEES OR STATUTORY AWARDS Discretionary – you might not DON’T PLAN ON BIG ATTORNEYS’ FEES OR STATUTORY AWARDS Discretionary – you might not get them n Approximate actual damages – no giant windfalls n American rule – pay your own n

CONTENT OWNERS LOVE LICENSING n n Content owners using licenses to control use and CONTENT OWNERS LOVE LICENSING n n Content owners using licenses to control use and avoid copyright first sale and patent exhaustion Click-wraps work Antitrust mostly theoretical Drawbacks n n Ongoing relationships Enforcement n http: //iplawwatch. foxrothschild. com/2011/04/articles/licenseagreements/licensing-versus-selling-your-software/

NO NAKED TRADEMARK LICENSING ALLOWED Include quality control provisions in licenses n Do it, NO NAKED TRADEMARK LICENSING ALLOWED Include quality control provisions in licenses n Do it, police by: n Self-investigation n Trusted licensee n n http: //iplawwatch. foxrothschild. com/2011/01/articles/tr ademarks/a-three-step-checklist-to-avoid-nakedtrademark-licensing/

BRAND EVERYTHING ONE WAY…MOSTLY House mark – one mark, one way, one color n BRAND EVERYTHING ONE WAY…MOSTLY House mark – one mark, one way, one color n APPLE, GOOGLE, NIKE, etc. n “i” for Apple n Exceptions “microbrews”, coffee, other niches n

GREEN(WASHING) IS RISKY n n Greenwashing – false claims about your environmental benefits Reverse GREEN(WASHING) IS RISKY n n Greenwashing – false claims about your environmental benefits Reverse Greenwashing – false claims about your competitor’s environmental detriments (plastic bags) n n n Competitors are watching FTC is watching USPTO is watching Greenwashing and reverse claims require back up http: //iplawwatch. foxrothschild. com/2011/10/articles /advertising/reverse-greenwashing/

REGISTER YOUR COPYRIGHTS Registration required to sue n Prove and save what you made REGISTER YOUR COPYRIGHTS Registration required to sue n Prove and save what you made and when n Specifically identify works n Especially important for evolving works such as software n n http: //iplawwatch. foxrothschild. com/2011/11/articles/c opyrights/the-case-for-software-versions-registrations-and -recordkeeping/

PRIVACY POLICIES More ways to use and more financial incentives to disclose information n PRIVACY POLICIES More ways to use and more financial incentives to disclose information n Click agreements also acceptable in privacy context n Consumers and libertarians v. businesses likely to continue n Vigilance is key, but unlikely, for the foreseeable future n

QUESTIONS OR THOUGHTS? Eric C. Osterberg 203. 425. 1510 eosterberg@foxrothschild. com blog: http: //iplawwatch. QUESTIONS OR THOUGHTS? Eric C. Osterberg 203. 425. 1510 eosterberg@foxrothschild. com blog: http: //iplawwatch. foxrothschild. com/ Twitter: @Osterberg. Eric bio: http: //www. foxrothschild. com/attorneys/ bio. Display. aspx? id=8618