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 from creation to licensing/litigation.

SEP Licensing - Dec19Jan20 PracticeNote

My Compete PatSnap Academy Course on SEPs and Emerging Technologies is Now Available

It consists of 5 short videos (between 4-9 minutes each).  I hope viewers find it useful and informative.

https://www.youtube.com/playlist?list=PLZbvV5Lir4QUaIuh72E4unY9LCkWKdcvb

Employees or Independent Contractor Generated IP (Part 2)

In part 1, I reviewed patents and copyrights. In this post, I will discuss trade secrets, IP rights, and other protection measures. 

Trade Secrets

No federal or state statute expressly addresses initial ownership of a trade secret as between a company and the employee or independent contractor who develops the trade secret. All US states, but New York, have enacted a version of the Uniform Trade Secrets Act (UTSA), which includes a trade secret definition substantially consistent with the definition under the federal trade secret protection statute, the Defend Trade Secrets Act of 2016. Under both federal and state law, trade secret protection is only available for business, financial, or technical information if: Read more

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 confidential information to provide for confidentiality and non-compete obligations concerning this information. The outsourced manufacturing agreement should make the manufacturer directly liable to the company for any breach of these obligations. Read more

Employees or Independent Contractor Generated IP (Part 1)

Intellectual property protection

This post will provide an overview of key IP issues encountered when dealing with employees and independent contractors. We will cover the default ownership rules and rights for different types of IP and some tips on how to maximize an employer’s rights vis-à-vis its employees.

Intellectual property (IP) created by employees and independent contractors or consultants, particularly in a technical or creative role, can have significant value for a company. However, if not careful, a company may also be obligated to transfer ownership or permit the use of certain IP to customers, collaborators, or other third parties. Thus, it is important to understand how to protect an employer’s interests in it.  Read more

Meet the IP Thought Leaders: Ozer M. N. Teitelbaum

Meet the IP Thought Leaders: Ozer M. N. Teitelbaum by David L. Cohen

Over the course of my 20+ years practicing law, I have had the honor of working with many individuals at the cutting edge of all aspects of intellectual property. I consider myself very lucky that most of these folks, in addition to being luminaries in the industry, are good people and have welcomed me into their professional world with open arms. To celebrate these individuals, I am inaugurating a series of interviews.

My next interviewee is best described as the nicest person in patent monetization and intellectual property strategy  I don’t mean that in a milquetoast kind of way. He can be as forceful and combative as the best of them. Rather, his essential decency as a human being shines through everything he touches.  I have met many, many people through Ozer, and I have introduced him to a few – and to a person – they all have utmost respect for him both as a professional and as a person.   Read more

What is a Trade Secret Audit and Why Get One?

What is a Trade Secret Audit and Why Get One? by David L. CohenAt first blush an audit sounds expensive, distracting and unnecessary. Let’s face it, we live in the age of the long tail. Over the past few years, things people would have previously given only a remote chance of coming to pass seem to be happening on a regular basis. What’s more, the pace of change and disruption in business and in the personal world is so great, it is almost impossible to keep up. It seems that whatever you are doing today will have to be radically altered very soon. With all this change most of us are running just to stay in place — so any distraction from the daily chores of simply keeping up needs a powerful justification. I would argue however, that the frenetic pace of business life is precisely why audits are so important. Just as mindfulness is rightly understood as being key to a centered life, trade secret audits are essential to continued success as a business. Read more

Outsourced Manufacturing and Trade Secrets: Controlling the Manufacturing Process (Part 8)

Outsourced Manufacturing and Trade Secrets: Controlling the Manufacturing Process by David L. Cohen

Last time, I discussed outsourced manufacturing as well as the process and personnel. Now, I continue the discussion by exploring control over transactions and products as it relates to IP protection.

Establishing and Maintaining Oversight

Requiring the manufacturer to maintain a designated facility for all work involving the transaction can reduce the risk of violations and simplify the monitoring and protection of the company’s IP. In all cases, the company should reserve the right to frequently audit the manufacturer’s facilities. If possible, the scope of these audit rights should extend enterprise-wide to ensure protection and containment of critical information. Read more

Outsourced Manufacturing and Trade Secrets: Manufacturing Process & Personnel (Part 7)

Outsourced Manufacturing and Trade Secrets: Manufacturing Process & Personnel (Part 7) by David L. Cohen

After deciding on the basic corporate or contractual structure, the company should decide how best to strategically divide the manufacturing process. In the outsourced manufacturing context, the best process involves not only efficient manufacture, but also the most effective process to mitigate potential trade secret risks. Read more

Outsourced Manufacturing and Trade Secrets: Transaction Structure & Contract (Part 6)

Outsourced Manufacturing and Trade Secrets: Transaction Structure & Contract by David L. Cohen

Transaction Structure

Once the company selects a potential outsourced manufacturing partner, it should design a transaction structure that reinforces its commercial expectations and the manufacturer’s contractual obligations. Specifically, the company should structure the outsourced manufacturing transaction in a manner best suited to protect the company’s key intellectual assets (both registered IP and unregistered IP like trade secrets and know-how). Transaction structure considerations include both the particular corporate and contractual form of the relationship, and how the company will delegate the manufacturing process to the outsourced manufacturer. Read more