Trade secrets can be an institution’s most valuable and prolonged assets. However, maintaining trade secrets in an institution can be challenging because trade secret protection requires the implementation of proactive and consistent safeguarding measures. The implementation of such safeguarding measures can be particularly challenging if an institution has multiple employees, departments, offices, or collaborators. Additionally, the rise of remote working environments during the COVID-19 pandemic has further escalated these challenges. Furthermore, determining whether or not trade secret protection is appropriate for a particular invention can be complex, especially if various aspects of the invention must be published or disclosed to regulatory agencies.
In an effort to support ongoing research and development efforts related to treatments and diagnostic tools for COVID-19, the United States Patent and Trademark Office (“USPTO”) has announced a prioritized examination pilot program (“the Pilot Program”) directed specifically to patent applications claiming products or processes related to COVID-19. Under the Pilot Program, the USPTO will advance out of turn certain patent applications relating to COVID-19. Additionally, certain fees normally associated with prioritized examination, will be waived. Table 1 provides a summary of the requirements to participate in the Pilot Program.
In view of the COVID-19 pandemic, the United States Patent and Trademark Office (USPTO) recently announced that its offices will be closed to the public “until further notice.” However, the USPTO also assured the public that USPTO “operations will continue without interruption.” Accordingly, applicants can continue to file related documents with the USPTO (e.g., patent applications, trademark applications, and responses to USPTO communications). Applicants can also hold interviews and oral hearings with the USPTO by video or telephone.
Additionally, the USPTO has provided numerous accommodations for applicants that have been affected by the COVID-19 pandemic. As explained in more detail below, such accommodations for affected applicants include:
(I) a 30-day extension of certain patent-related and trademark-related filing deadlines that fall between March 27 and April 30;
(II) waiver of revival fees for (a) abandoned patent applications, (b) terminated or limited re-examination proceedings, (c) abandoned trademark applications, and (d) cancelled/expired trademark registrations; and
(III) waiver of original handwritten signature requirements for (a) registration to practice before the USPTO in patent cases, (b) enrollment and disciplinary investigations, (c) disciplinary proceedings, and (d) non-electronic payments by credit card.
European and UK patents are not impacted by Brexit. The European Patent Office (EPO) is established under the European Patent Convention (EPC). The EPC is separate from the European Union and the UK is, now, one of several non-EU contracting states. The EPO will continue to validate “European” patents in the UK and the UK will continue to grant UK national patents.
European registered trademarks and Community registered designs are not immediately impacted. The UK has entered a transition period set to end on December 31, 2020. The UK Intellectual Property Office is creating trademark and design rights comparable to registered EU trademarks and Community designs to maintain continuity of protection in the UK. EU trademark and Community design applications that are pending on January 1, 2021, will no longer have effect in the UK. There will be a nine-month window from the end of the transition period to apply in the UK for the same trademark and design protections.
An institution’s trade secrets generally include confidential information with commercial value. Trade secret protection may be available by common law, under state laws, or under federal law. In addition, there may be both civil and criminal causes of action for the misappropriation and theft of trade secrets.
For instance, the Defend Trade Secrets Act of 2016 (DTSA) is a United States federal law that allows an owner of a trade secret to sue in federal court when its trade secrets have been misappropriated through “improper means.” Such “improper means” can include “theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means.”
Trade secrets can be used by institutions to protect numerous types of information. For instance, under the DTSA, protectable trade secrets include information that “derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information.” Furthermore, such information can include “all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing.”
Moreover, trade secrets can have an indefinite life, so long as they are kept secret and confidential. For instance, under the DTSA, trade secret protection requires the owner of the trade secret to take “reasonable measures to keep such information secret.”
An institution’s trade secrets can be its most valuable and prolonged assets. However, institutions must take numerous steps in order to maintain the enforceability of their trade secrets. Such steps include: (1) identifying the trade secrets; and (2) taking “reasonable measures” to maintain the secrecy of the trade secrets. Continue Reading Protecting Your Most Valuable Assets: How to Identify and Maintain Your Institution’s Trade Secrets
Under the U.S. Patent Act, one can patent “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Common exceptions to what can be patented include laws of nature, natural phenomena, and abstract ideas.
In recent years, the U.S. Supreme Court has expanded the scope of the common exceptions to what can be patented. For instance, in Mayo v. Prometheus (Mayo), the U.S. Supreme Court held that methods of administering a drug to a patient, measuring metabolites of that drug, and deciding whether to increase or decrease the dosage of the drug are not eligible for patenting because the methods pertain to natural phenomena. Likewise, the U.S. Supreme Court later held in Alice Corp. v. CLS Bank International (Alice) that a computer-implemented electronic escrow service for facilitating financial transactions was not eligible for patenting because it pertained to an abstract idea.
The lower courts have been relying on Alice and Mayo to invalidate many patents related to diagnostic methods and computer-implemented processes. As result, the United States Patent and Trademark Office (USPTO) has issued numerous patent examination guidelines and supporting examples for evaluating the patent eligibility of inventions in view of the aforementioned rulings.
However, the previously issued USPTO guidelines were found to lack clarity, consistency and predictability in determining patent eligibility. In fact, the USPTO has admitted that “it has become difficult in some cases for inventors, businesses, and other patent stakeholders to reliably and predictably determine what subject matter is patent eligible.” The USPTO has also admitted that “concerns have been raised that different examiners within and between technology centers may reach inconsistent results” in their patent eligibility analyses.
In an effort to address the aforementioned concerns, the USPTO published its “2019 Revised Patent Subject Matter Eligibility Guidance” on January 7, 2019 (“New Guidelines”). The New Guidelines modify the prior guidelines by directing the Examiners to perform a more detailed and systematic patent eligibility analysis.
The steps involved in determining the patent eligibility of inventions when one combines the prior guidelines with the New Guidelines are illustrated in Figure 1. The steps are also described herein as Steps 1-4. Continue Reading Determining the Patent Eligibility of Inventions Under the New USPTO Guidelines
In over a decade watching cybersecurity threats evolve and organizations respond, it strikes me that every organization has to start from the basics and is challenged to retain that core focus, no matter how expansive their security programs get. That’s why this first post in a series exploring the fundamentals of security preparedness will focus on the basics. Let’s discuss practical steps that turn cybersecurity preparedness into more than just a risk avoidance cost center.
If you’ve avoided implementing a holistic cybersecurity program or if you think you’ve got the basics and are ready for the next step but would like to confirm that you’re on the right track, this post is for you. Continue Reading Have You Covered Your Basics? A Cybersecurity Checkup: Part 1 (5min)
A few years ago, our firm defended a client against a claim of patent infringement. As it turned out, our client had disclosed its confidential information to a potential business partner during a pre-collaboration exploratory meeting, which the potential business partner then used to obtain the patent they were asserting. Luckily, our client had insisted on putting a non-disclosure agreement (NDA) in place before the meeting and had clearly marked the information as being confidential. Because of these precautionary measures, not only were we able to invalidate the patent, but we also won a breach of contract counterclaim based on the unauthorized use of the confidential information.
If you are exploring the possibility of collaborating with another company, you are likely going to exchange confidential information with that company so you can evaluate what they have to offer and they can evaluate what you have to offer. Although necessary, these types of exploratory meetings can be a trap for the unwary. Below are a few measures that should be taken to protect your confidential information before, during, and after any such meetings. Continue Reading QUICK HITS: Protecting Confidential Information in a Collaborative Setting
Here at Winstead, we are fortunate enough to have two lawyers that were selected for inclusion in The Best Lawyers in America® 2018 in Trademark Law, Stan Moore and Cathryn Berryman. Before answering the question What are Trademarks?, I thought it would be a good idea to get their insights on trademark best practices.
Stan Moore: Most businesses have trademark issues, whether they know it or not. With trademarks, ignorance is not bliss. Businesses can lose their hard-earned goodwill based solely on inaction–either failing to protect their own trademarks or inadvertently using someone else’s trademarks. A little effort upfront can save you years of heartache.
Cathryn Berryman: When starting a new company or releasing a new product, why pick a name that is going to cause you problems down the road? The time to pick a good name is at the outset, before any marketing dollars have been spent. You would be surprised how many times clients fall in love with a name and fail to heed our advice when we recommend against using that name–even though they had not yet spent any money on advertising. More often than not, it ends up costing the client a lot more money to protect the name, money that could have been saved if they would have picked a better trademark at the outset.
So, if this is something every business needs to address, what exactly are trademarks and what makes for good ones? Put simply, trademarks are source identifiers. They can be any combination of words, phrases, symbols, or designs, that identify the source of goods or services and distinguish those goods or services from others. When choosing a name for a new business or a new product, the goal should be to select a strong trademark, i.e., one that is highly distinctive. Not only are strong trademarks easier to register, they are also easier to enforce. Continue Reading What are Trademarks?
The term moral rights in the United States typically refers to the right or ability of creators of certain works of visual art (e.g., paintings, drawings, prints, sculptures, and photographs) to control the eventual fate of such works. In Europe and elsewhere, an artist’s moral rights are much broader and not limited to visual art. Moral rights protect the personal and reputational, rather than purely monetary, value of a work to its creator. The right of attribution and the right of integrity (i.e., right to prevent revision, defacement, alteration, or distortion of the work, regardless of who owns it) are two primary rights of authors of works of visual art that are protected in the U.S. under various federal and state laws including protection through an amendment in the U.S. Copyright Act by the Visual Artists Rights Act (“VARA”) of 1990 (17 USC § 106A). These rights are not transferable by license or assignment, but can be waived in writing by the author.
The moral of the story–when acquiring a copyrighted work, don’t forget to have the artist waive any moral rights in the work.