
d0414e174b4679a786a107e6ff1847f6.ppt
- Количество слайдов: 14
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 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 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 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 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 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 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 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, 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 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 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 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 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. foxrothschild. com/ Twitter: @Osterberg. Eric bio: http: //www. foxrothschild. com/attorneys/ bio. Display. aspx? id=8618
d0414e174b4679a786a107e6ff1847f6.ppt