The Value of a Confidentiality Agreement

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One of the most important developments in the world economy has been the increased importance of ideas and innovation. It is no exaggeration to say that they comprise the predominant source of economic value in the world today. The challenge with ideas and innovations is that they are intangible — and as such, they are hard to protect and even harder to value

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IP Monetization: 4 Categories for Consideration

Because IP monetization covers a wide range of business and legal activities, it is important to provide some examples.

Broadly, there are four categories of IP monetization:

1. The most straightforward is to get others — through negotiation or litigation — to pay (the IP owner) money for the right to practice or use your IP in exchange for cold, hard cash.

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Outsourced Manufacturing and Trade Secrets: Final Considerations

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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 encourage them to accept future employment with the company directly.

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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

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

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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 and IP. 
  • Revocable and subject to immediate termination when appropriate.
  • Sublicensable and assignable only to the extent necessary under the arrangement.

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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.

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’ 25 years of experience with the European Patent Office (EPO). However, what it failed to mention, was his long track record of expressing anti-patent positions, which likely held up his promotion and expedited his departure from the EPO.

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

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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:

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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