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

Printed copy of contract on the desk

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

New Video Series on SEPs and Emerging Technologies

Very pleased that the first video of my talk for PatSnap’s Academy on SEPs is available.  This video, at just under 9 minutes, covers basic terminology and a short history of SEPs.


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.




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

In this part of my talk I proposed the idea that just like suing for SEP infringement without following the relevant FRAND regime may prevent the SEP holder from seeking an injunction, engaging in serial nullifications of SEPs without following the relevant FRAND regime should prevent an implementer from using the FRAND regime as a defense to an injunction.


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

Conducting Trade Secret Audits

I am very pleased that the white paper I wrote with Donal O’Connell on Trade Secret Audits from Practical Law of Westlaw was published in its Publication, “The Journal” – (so to be available on line at https://content.next.westlaw.com/Browse/Home/PracticalLaw/PracticalLawTheJournal?contextData=%28sc.Default%29&transitionType=Default

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The IEEE 2015 Patent Policy – A Natural Experiment in Devaluing Technology


While most are unlikely to be familiar with the standards development organization IEEE-SA, everyone is familiar with its flagship standard IEEE 802.11, more commonly referred to by its brand name Wi-Fi, that is utilized by billions of people daily. Like all modern wireless standards, Wi-Fi relies on cutting edge proprietary technology to innovate and progress from version to version in order to improve users’ communication experience. That principle is well captured in IEEE-SA’s logo “advancing technology for the benefit of humanity”.

In 2014, IEEE-SA proposed radical changes to its patent policy, which governs treatment of proprietary technology contributed into IEEE-SA standards. The vast changes amended more than half of the preexisting policy, and were geared towards devaluing patented technology contributed to IEEE-SA standards (also known as Standard Essential Patents or SEPs), and facilitating its infringement.

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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