Henderson, Franklin, Starnes & Holt, P.A.

Intellectual PropertyAfter months (or, perhaps, years) of diligent legal work, your business has finally secured its intellectual property rights through a patent, a trademark registration, a copyright registration or some combination thereof. Finally, you breathe a sigh of relief, put your legal paperwork in a file cabinet and get back to running your business. Years later, you find that a competitor is infringing your rights. After blowing the dust off your paperwork you discover, to your dismay, that your intellectual property rights were not properly maintained and have expired. What happened and what do you do now?

Unfortunately, many clients fail to realize that most intellectual property rights carry maintenance obligations until it is too late. That being said, these are pitfalls which can be easily avoided, and clients often have tools they can use to “backfill” rights if a deadline is inadvertently missed.

Patent Maintenance

patent lawU.S. Patents are subject to periodic maintenance fee payments. The motivation behind this is the anti-competitive effect patents have on the market. Congress decided that there should be some affirmative, monetary obligation of patent owners to maintain patent rights as a means of culling unused patents which might otherwise be preventing competition. Such patent maintenance fees are due at the 3½, 7½ and 11½ year marks. These fees follow the following schedule:

  • 3½ year maintenance fees can be paid between 3 and 3½ years after the patent issuance date;
  • 7½ year maintenance fees can be paid between 7 and 7½ years after the patent issuance date; and
  • 11½ year maintenance fees can be paid between 11 and 11½ years after the patent issuance date.

Additionally, each of these fees can be paid within a six-month grace period (for an additional fee).

If these fees are not timely paid, then the underlying patent lapses and is no longer enforceable. This can be an enormous problem. Many clients either forget or are not told about patent maintenance obligations. The result can be a loss of rights and the inability to stop knock-off products. There are certain procedures to try to reinstate a patent which was unintentionally abandoned in this way, but the costs can be high and the probability of success can vary. This can also open the door to intervening rights by certain competitors. The best thing to do is to carefully calendar maintenance fee deadlines ahead of time and engage counsel to help you.

Trademark Maintenance


Continue Reading IP Maintenance 101: Keeping Your Intellectual Property Rights Alive

Vaccine PassportAt the start of summer, Governor Ron DeSantis declared that Florida is “no longer in a state of emergency.” This statement preceded a bill banning vaccine passports, and two executive orders suspending local government COVID-19 restrictions.

For employers, this doesn’t mean you should rush to discard your face marks requirement, nor should it impact your decision to mandate vaccines. Employers remain free to implement safety features they feel needed.

New York vs. Florida

Many Northeastern states have begun experimenting with COVID passports. For instance, New York City now requires at least one dose of a COVID-19 vaccine for entry to indoor dining, gyms, and entertainment performances. For better or worse, Florida has gone in the opposite direction. Florida law now prohibits businesses from implementing these measures with respect to customers. Specifically, the new law says that “business entities,” including for-profit and not-for-profit entities, cannot require that patrons or customers provide documentation certifying that they received the COVID-19 vaccine or certifying that they have recovered from the virus to enter or receive a service from the business.

EEOC’s View


Continue Reading What Florida employers need to know about the vaccine passport ban

trade secretWhen many entrepreneurs think of trade secrets, they think of high-tech companies or large manufacturers. For example, software architecture and source code are generally protected using trade secrets. Another example of businesses that have many trade secrets is legacy manufacturers which need to protect how products are made, what products are made out of, etc. Famous examples of trade secrets from these industries range from Google’s® search algorithms to KFC’s® “11 secret herbs and spices.”

But all businesses – even the most “simple” – have trade secrets. At the very least, all businesses have customer lists, vendor lists, profitability/pricing information, etc. – with many businesses having much more. The best way to evaluate whether certain information might be a trade secret is to think about real-world business consequences. I often ask my clients,

If one of your best employees left for a competitor and took certain business information with them, would that be upsetting?”

If the answer is “yes,” then that information needs to be evaluated for potential trade secret protection. That can run the gamut from customer lists to the “secret sauce” that makes a business successful.

Whether your business is large or small, below are five important tools that can be used to protect trade secrets.

Legal Tools to Maintain Secrecy


Continue Reading 5 Tools Small Businesses Can Use to Protect Their Trade Secrets

Wine GlassesOn May 13, 2021, Florida Governor Ron DeSantis signed into law Senate Bill 148, which allows restaurants or other alcohol beverage vendors to sell alcoholic drinks to-go.  No, this does not mean that Florida is an open container state; possession of an open alcoholic container in Florida is still illegal under Florida Statutes, section 316.1936 and 856.011. However, customers who want to order take-out from their favorite restaurant can now also bring home their favorite cocktail, providing the restaurant meets certain requirements.

The alcoholic drinks to-go initially started through one of DeSantis’s emergency orders as a way for struggling restaurants during the COVID-19 pandemic to increase their sales. “Alcoholic drinks to-go became an important source of revenue for restaurants that were trying to survive during the pandemic,” DeSantis noted. Throughout the pandemic, restaurants were some of Florida’s businesses that were most affected. Florida Representative Josie Tomkow stated, however, that the new law

allows for restaurants to continue to offer alcohol-to-go as an option. This pro-consumer, business-friendly bill will help support our restaurant industry and its tens of thousands of employees.”

Requirements


Continue Reading I’ll Take it To-Go: New Florida Law Makes To-Go Alcohol Sales Permanent Effective July 1

COVID-19 vaccineOn June 12, 2021, a federal judge entered an Order dismissing a hospital employee’s lawsuit attempting to block a hospital policy requiring employees to receive a COVID-19 vaccine. Houston Methodist Hospital announced a policy on April 1, 2021, mandating that all employees receive one of the COVID-19 vaccines. The hospital eventually suspended 178 employees without pay for their refusal to get vaccinated. Jessica Bridges, along with 116 other hospital employees, brought suit to block the vaccine requirement and to overturn their suspensions and possible terminations.

At the beginning of 2021, there was much speculation throughout the country regarding whether or not employers could require employees to receive a COVID-19 vaccine. In a previous article, Can Employers Require Employees to Receive the COVID-19 Vaccine?, I indicated that the answer appeared to be yes, with some exceptions. Now U.S. District Judge Lynn N. Hughes appears to have confirmed this through his dismissal of Bridge’s lawsuit.

Plaintiff’s argument opposing COVID-19 vaccine


Continue Reading Federal judge upholds employer’s COVID-19 vaccine requirement

IP LawAfter years of research and development, your company is finally about to launch a new “game changing” product. You know you need to protect this product, but where do you start? What do you name your new product, and how do you protect that name? These and other frequently asked questions often arise in new entrepreneurial ventures — whether for new businesses or new product lines for existing businesses.

Most business owners intuitively understand the value of their intellectual property. They understand that their products, brands and other ideas need to be protected, but can be confused by some of the “jargon” used in intellectual property law with words like “patent,” “trademark” and “copyright.” This post helps explain some of the key differences between patents, trademarks and copyrights.

What is a patent?

A patent is a legal right to exclude others from making, using, selling, offering for sale, or importing a patented invention for a fixed period of time. In the U.S., patents are exclusively under federal jurisdiction and are awarded by the U.S. Patent and Trademark Office in exchange for making public an enabling disclosure of the invention, and generally last for 20 years (15 years for design patents).

Continue Reading What is the difference between patents, trademarks and copyrights?

iphone photoUnbeknownst to most software users, many of the world’s largest software companies have relatively complicated software license terms in the event of a user’s death. This can present an emotional and unnecessary complication at a loved one’s passing.

An illustrative and all too commonplace example of this can be found in the terms and conditions of Apple’s iCloud platform. One section of the terms of service of Apple’s iCloud software (as of the publication date) entitled “No Right of Survivorship” which provides that:

Unless otherwise required by law, You agree that your Account is non-transferable and that any rights to your Apple ID or Content within your Account terminate upon your death. Upon receipt of a copy of a death certificate your Account may be terminated and all Content within your Account deleted. Contact iCloud Support at https://support.apple.com/icloud for further assistance.”

In other words, Apple has a right to terminate an iCloud account and delete all the data stored in that account upon a user’s death. Many companies structure software licenses in this manner in order to avoid potential contractual liability in the event of a dispute over access to a deceased user’s account.

Legal Rights to Access Digital Content


Continue Reading Digital Intellectual Property: What rights does Apple have over digital photos upon death of a user?

Governor Ron Desantis issued an executive order prohibiting COVID-19 “vaccine passports” in Florida. The order prevents government entities from issuing “vaccine passports” or other standardized documentation for the purpose of certifying an individual’s COVID-19 vaccine status to a third party.

How does this order impact Florida business owners?

Further, this order prohibits businesses in Florida from requiring patrons to provide documentation certifying that the individual had a COVID-19 vaccination. Businesses still, however, can employ COVID-19 screening protocols and measures, such as requiring the use of a mask.

Continue Reading No COVID-19 “Vaccine Passports” for Florida

The Florida House of Representatives passed S.B. 72 in a decisive 83-31 vote, a bill that would give businesses and health care providers a legal safe harbor from COVID-19 injury and wrongful death lawsuits. Governor Ron DeSantis signed the bill into law this afternoon. The law retroactively applies to causes of actions that have accrued but does not apply in a civil action which is commenced before the effective date of the law (March 29).

The new law provides civil immunity to corporations, nursing homes, hospitals, schools, and houses of worship. The exception to the law would be a showing of gross negligence or intentional misconduct, both of which are very difficult standards to prove. The bill had its opponents, of course, namely, the plaintiff bar, as it creates significant legal hurdles for plaintiffs who wish to file lawsuits over coronavirus-related injuries.

Continue Reading COVID-19 Legal Safe Harbor Signed into Florida Law

As we age, memories of family and friends become all the more treasured. Indeed, for many of us, our most valued possessions are those things which “captured” such memories – home videos of our children’s first steps, photo albums of family members, and so on.

Traditionally, making estate planning provisions for these items was relatively simple – memories were all “captured” in tangible “containers,” i.e., recording media, such as photograph paper, VHS tapes, CD’s and DVD’s.

More recently however, digitization has changed the way memories are stored. Gone are the days of physical “containers.” Photographs, videos and other media are now almost exclusively stored in digital format: whether on a physical device such as a laptop computer or “in the cloud” on platforms such as Gmail, Facebook, DropBox and iCloud.

This continuing digital revolution has changed the way we store intangible, electronic assets – or “digital intellectual property.” Ownership of a “container” is different than ownership of the underlying rights in the content stored in such a “container”: an important distinction to keep in mind when estate planning.

Digital Executor

First, select an executor. This person will carry out the will’s instructions and is a critical part of any estate planning. Often, executors are tasked with collecting, liquidating and distributing the assets of an estate to various named beneficiaries. Unfortunately, many executors are ill-prepared for the various challenges associated with the collection and distribution of digital assets.

Accordingly, estate planners may wish to consider appointing an additional, “digital executor” – a person who is technologically savvy and can help the primary executor with the various computer-related functions of managing digital intellectual property. This could be an independent professional (Henderson Franklin offers such service) or a computer-literate family member who can help secure and distribute digital IP in accordance with the terms of the will (e.g., ensuring that all the testator’s family and friends receive access to digital photographs, videos, etc.).

There are three primary guiding principles which estate planners should follow, namely:

  • maintaining physical access to hardware;
  • maintaining electronic access to hardware and digital access to software; and
  • proactively establishing a legal right for loved ones to access digital content.

Physical Access to Hardware


Continue Reading Protecting Your Digital Intellectual Property Through Estate Planning