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

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

Business relationships often lead to the exchange of sensitive information or access to highly confidential matter. When faced with this situation, is it enough to merely tell your business partner that something is confidential? Absolutely not.

Businesses should always protect their confidential information using a Non-Disclosure Agreement (NDA). NDAs are commonly used when businesses are contemplating or negotiating some sort of contractual relationship or deal. The NDA allows one party to share confidential and trade secret information with another and places restrictions on how the other party can use that information and obligates the other party keep such information confidential.

Under both the Federal Defend Trade Secrets Act and Florida’s Uniform Trade Secrets Act, trade secret owners must make reasonable efforts to maintain the secrecy of their confidential information. Using an NDA when disclosing confidential information demonstrates making reasonable efforts to protect that information.

However, some businesses do not have a standard form NDAs they can readily use. Also, many other businesses develop a general and broad NDA that they use over and over in all situations. Because it is good practice to have an NDA ready for situations where disclosure of confidential information is required, business should keep in mind the following issues to ensure they are adequately protected.

No Expiration Dates


Continue Reading 5 Simple Things to Keep in Mind with Non-Disclosure Agreements

As COVID-19 spreads, many businesses, Henderson Franklin among them, have instituted remote work programs voluntarily or in response to state or local “shelter in place” orders. With the idea of continuing business as usual, companies have provided employees with hardware and software to gain remote access to networks or have allowed employees to use their own computers and devices to access the company network so they can seamlessly continue working. While these policies certainly help limit employee exposure to COVID-19, they can inadvertently increase a business’ exposure to theft of intellectual property, specifically trade secrets.

Trade Secrets


Continue Reading COVID-19: Trade Secrets and the Remote Workforce

Growing companies face all kinds of challenges. From financing to staffing, growth takes effort and attention. Among the many things that both drive growth and need this attention is the company’s intellectual property (“IP”). What follows are a few thoughts about some IP-related issues expanding businesses should keep in mind.

Button Up Protection

As businesses grow they must review their IP assets to ensure they are protected, especially the ones that are driving growth. These assets might include trademarks for new product names or brand extensions, taglines and logos, as well as patents for new technologies. Sometimes growth happens quickly and a business does not want to leave important assets unprotected.


Continue Reading Growing Pains: Intellectual Property Challenges for Expanding Businesses

The past ten years have seen amazing advances in technology and the next ten promise even more. How has the law kept up to ensure intellectual property rights are adequately protected and what are some major driving forces that will shape IP Law over the next decade.

2010-2020

  1. Globalization. With the rise of e-commerce and the Internet, falling borders and widening markets, businesses are now almost instantly global. No matter where a business is located, it must think beyond its borders and where its customers are and must take steps to protect their intellectual property across national boundaries. While only a select few businesses needed to worry about global IP protection during the 2000s, by 2020 the issue has become far more generally applicable. This has required businesses and their IP counsel to consider global issues at all phases of IP development and to devise appropriate global protection strategies.
  2. The Leahy-Smith America Invents Act (AIA). This 2011 overhaul to the United States Patent Act altered the long-standing US rule that the “first to invent” had superior rights to a “first to file” rule. This significant change brought the US patent system in step with the majority global rule. The AIA implemented other changes in the patent system, but the “first to file” change was most significant and just one of several that updated an antiquated statutory regime.
  3. IP as a Business Asset. For decades, the value of a business was primarily represented by its tangible assets — property, equipment, inventories, etc. This has changed, however, and intangible assets, specifically intellectual property assets, now account for significant portions of business valuation. Indeed, according to the IP-oriented merchant bank Ocean Tomo over 84% of the value of the S&P 500 in 2015 was represented by intangible assets. Further, the USPTO has reported that in 2014, “IP intensive industries” accounted for approximately one third of US GDP. With intellectual property becoming such a major component of the value of a business and such a significant element in our national economy during the past decade, businesses have had to adapt and become much more proactive to protect those assets.
  4. Alice. In Alice Corporation v. CLS Bank International, the Supreme Court ruled that merely applying an abstract idea on a computer is not patent eligible. What this effectively meant was that computer software programs that simply took abstract ideas—like hedging currencies—and implemented those ideas electronically could not be protected by the patent laws. This led to invalidation of a significant number of software patents and made it extremely difficult for software designers to patent their software. Designers had to react by resulting to different means to protect their inventions. While very few software patents have been issued since Alice, courts are beginning to interpret the decision in ways that pave the way for at least some wider availability of patent protection for software.


Continue Reading Looking Back, Looking Forward: Significant Intellectual Property Developments and Trends for the Future

For all of 2016, one of the most significant developments in the Intellectual Property field was the implementation of the Defend Trade Secrets Act of 2016 (“DTSA”).

Federal Rights

Before implementation of the DTSA, trade secret protection was a matter of state law. While businesses had federal rights for patents, trademarks and copyrights, trade secret was solely governed at the state level. The DTSA changed this legal landscape to provide legal uniformity and federal protection for trade secrets as well as access to the federal courts to enforce trade secrets.

Under DTSA a “trade secret” is broadly classified as any “form of intellectual property that allow[s] for the legal protection of commercially valuable, proprietary information.”

As noted, under the DTSA, a trade secret owner can sue for misappropriation n the federal courts. This is a significant development because having adjudicated patent infringement matters for decades, the federal courts are prepared to understand complex trade secrets and the technologies behind them.


Continue Reading A Look Back on 2016 in Intellectual Property: Congress Gives a Present to Innovators

trade secrets label on folderIn a rare example of getting something done, the Senate and House of Representatives have passed Defend Trade Secrets Act of 2016 (“DTSA”) and it is now headed to the White House for signature. President Obama has indicated he will likely sign the legislation. With this in mind, it is a good time to review just what proprietary information your business has and how thoroughly it is protected.

Current law

Until now, trade secrets have been protected by state law. While the law is relatively standard there are some slight variations state by state. Indeed, 48 states, Florida included, have adopted the Uniform Trade Secrets Act (“UTSA”) in order to provide businesses with uniformity. At the federal level, while providing protection for other forms of intellectual property like patents, trademarks and copyrights, trade secrets had no specific protection. The DTSA is changing this legal landscape.

DTSA


Continue Reading Upcoming Changes in Federal Law Means It Is Time to Look At Trade Secrets

7041862895_6192f3c764_zLast spring, we discussed Tesla’s problems securing trademark rights in its name in China. See our post here. The moral of the Tesla story was to seek trademark registration in China as early as possible. Now, Apple has lost a trademark battle in China that underscores the importance of the Tesla lesson and gives an additional twist.

Apple’s Battle

In 2002, Apple registered the IPHONE trademark in China for computer hardware and software and mobile telephones. In 2007, Xintong Tiandi, a leather goods maker, sought and obtained registration of the IPHONE trademark for leather goods, including phone cases. Apple, claiming that its IPHONE mark was famous and well known in China, challenged Xintong Tiandi’s IPHONE registration in the China Trade Mark Review and Adjudication Board, where it lost. Apple then took the fight to the courts in China and lost in the lower court. Apple appealed and The Beijing Municipal High People’s Court has ruled against Apple again, stating that Xintong Tiandi registered the IPHONE mark before Apple, thus giving it superior rights, and Apple’s IPHONE trademark was not sufficiently well known in China at the time Xintong Tiandi registered IPHONE for leather goods. As the first user of the mark, Xintong Tiandi had the greatest rights and Apple’s claims failed.


Continue Reading Learn from Apple’s Woes in China: Register Early and Often

NCAA flickr bp6316The NCAA Basketball Tournament is here which also means local pride is high and many businesses use the Tournament as a marketing opportunity. Many promotions will refer to terms like MARCH MADNESS or FINAL FOUR for impact. The NCAA, however, is always vigilant and aggressively protects against unauthorized uses of its trademarks, especially during the Tournament. The NCAA has a number of registered trademarks relating to the Tournament including MARCH MADNESS, FINAL FOUR, ELITE EIGHT, and THE BIG DANCE. Use of these trademarks in ways that connote come sort of connection or affiliation with the NCAA or the Tournament will likely draw an objection from the NCAA.

Dos and Don’ts


Continue Reading March Trademark Madness—Don’t Foul Out