Entries by David L. Cohen, Esq.

Outsourced Manufacturing and Trade Secrets: Final Considerations

Transition Services After termination or expiration, the company should require the manufacturer to provide extensive transition services to the company. In addition to customary provisions, the agreement could provide for the transfer to the company of key equipment; materials; or facilities. The agreement can further require the manufacturer to offer severance to crucial employees and […]

Standard Essential Patent Licensing Management

I am very pleased that Practical Law has published a piece I co-authored with Doug Clark and Eric Stasik that discusses anti-trust issues associated with Standard Essential Patents (SEPs) and considerations for counsel managing SEP licensing programs.  The purpose of the article was to provide a high-level overview of the entire life-cycle of SEP management […]

Outsourced Manufacturing and Trade Secrets: Security Procedures for Access, Storage, and Transmission (Part 12)

Licensing of Trade Secrets and IP The licensing of the company’s trade secrets and other IP should be consistent with the company’s identification of its trade secrets and other IP and appropriately limited in scope. Among other considerations, the license should be: Narrowly tailored to cover only the manufacturer’s required use of the licensed information […]

Anti-Patent Leadership Taking IEEE-SA on The Road to Knowhere? Part I

As I noted previously, over the past five years or so, the IEEE has been captured by the implementer lobby and its advocates. But where did this trend originate from? It probably has its roots in its leadership.  In 2012, IEEE announced the appointment of Konstantinos Karachalios as its Managing Director. The announcement boasted Karachalios’ […]

Outsourced Manufacturing and Trade Secrets: Obligations Concerning Manufacturer’s Employees and Contractors (Part 11)

Employee Termination While not always possible given local labor laws, to the extent possible, the company should require the manufacturer to adopt protocols to govern a termination of the manufacturer’s employees in a manner that minimizes the risk of the employees taking confidential information with them when they leave the manufacturer. These may include:

Outsourced Manufacturing and Trade Secrets: The Manufacturer Relationship (Part 10)

The outsourced manufacturing agreement should require procedures that limit access to the company’s confidential information to specific, identified manufacturer personnel and solely to the extent they need to know the information for performing the services. If possible, the company should require the manufacturer to amend its employment contracts with individuals having access to the company’s […]

The second part of my talk at the IP Watchdog SEP conference is now available

In this part of the talk I review the publicly available statistics on SEP validity, critique the real party in interest doctrine at the PTAB, and offer a possible solution rooted in securities laws. https://www.ipwatchdog.com/2019/10/04/standard-essential-patents-statistics-and-solutions-to-the-real-party-in-interest-problem/id=114189/