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

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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

The SEP Royalty Stacking Myth – Apple Calls Its Own Bluff

My Next Trick: Magical Royalty Stacking Coins!

If you follow statements of antitrust  agencies the world over – even as far away as  China and Korea – you would think that there is a crisis going on in SEP licensing. Some agencies have shown interest in the theoretical concept of “stacking” of SEP royalties. For example, a 2016 Speech by the European Commissioner for Competition Margrethe Vestager represented that “Patents and standards are very important in the world of mobile devices. One recent study shows that 120 dollars of the cost of each smartphone comes from paying royalties for the patents it contains.”    While high royalties do not (and should not) create a presumption of anticompetitive behavior, it is not unreasonable where there are high royalties for a competition regulator to at least be curious whether there is anticompetitive conduct underlying such reality.   Unfortunately, what has happened is the reverse: competition regulators have assumed a high royalty regime, where in fact royalties for handsets are relatively low.  Aggregate SEP royalties are lower even than the 6-8% predicted by a leading manufacturer in 2009.

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Trade Secret Theft in China

I am delighted that a short paper of mine (co-authored with Donal O’Connell) on the subject of ‘Trade Secret Theft in China’ has been posted on the IP Strategy blog. The paper briefly explains trade secrets before then describing the various scenarios in which foreign companies may find themselves. We suggest that some of the scenarios described are clear examples of trade secret theft but others less so, if not at all.   Any and all feedback is most welcome.

A Rotten Apple Standard

Well it finally happened.  Notwithstanding the settlement with Apple, the district court overseeing the FTC’s case against Qualcomm issued a blistering, 233 page opinion against Qualcomm’s SEP licensing practices.  Some have argued that this ruling is just one more step in Apple’s long play attempts to kill SEP licensing – the technology that has put the “phone” into the iPhone.  To better understand this claim it is worth looking back at Apple’s history with respect to SEPs.

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HR and Trade Secret Asset Management

by David Cohen and Donal O’Connell

Trade Secrets:

While the laws governing trade secrets differ slightly from country-to-country, common among nearly all these laws is that a trade secret is any information that is:

  • Not generally known to the relevant business circles or to the public. The information should also not be readily accessible.
  • Confers some sort of economic benefit on its owner. This benefit must derive specifically from the fact that it is not generally known, and not just from the value of the information itself. It must have commercial value because it is a secret. Commercial value encompasses potential as well as actual value.
  • It must have been subject to reasonable steps by the rightful holder of the information to keep it secret. What is reasonable can vary depending on the specific circumstances.

A trade secret continues for as long as the information is maintained as a trade secret. However, information may no longer be considered a trade secret once it becomes easily accessible, is no longer properly protected or has no commercial value.

Trade Secrets Need People to Exist

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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