MassMEDIC · •Restatement of Torts § 757, comment b “A trade secret may consist of any...
Transcript of MassMEDIC · •Restatement of Torts § 757, comment b “A trade secret may consist of any...
MassMEDIC Massachusetts Medical Device Industry Council
Patent Strategies Panel
General IP Information
May 17, 2012
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Panel Members
• David Crosby
Counsel, Nixon Peabody LLP
• Michelle Flores – Moderator
Counsel, Nixon Peabody LLP
• Maia Harris
Partner, Nixon Peabody LLP
• David Lane
Patent Attorney, DePuy Spine with J&J
• James O’Shaughnessy
Former Vice President & General Counsel, Haemonetics Corporation
***The views and opinions expressed during the presentation and in these slides
are not necessarily those of the attorneys, their employers or their clients.***
Utility Patent Design Patent Trademark/ Trade Dress
Copyright Trade Secret
Subject Matter New, Non-obvious &
Useful process,
machine,
manufacture or
composition of matter
New, original,
ornamental design
for article of
manufacture
Word(s), symbol,
device used to
identify the source of
goods or services
Fixed, original
expression Information that
derives independent
economic value from
not being generally
known
Owner ship Inventor(s) Inventor(s) One who controls the quality of the goods/services associated with the mark
Author(s)
Duration 20 years from filing (unless filing occurred prior to June 8, 1995)
14 years from date of issue
Potentially forever Generally life of the author + 70 years
Potentially forever
Infringement To make, use, sell, offer to sell, or import an item or method covered by a patent claim
To manufacture, use, sell, or offer to sell a colorable imitation
To use a mark/design so as to likely cause confusion among ordinary consumers regarding the source of the goods/services
To copy a work (or portion thereof) in which the copyright is owned by another, where there is substantial similarity of expression
Enforcement Must be owner (or exclusive licensee with right to sue) of issued patent
Must be owner (or exclusive licensee with right to sue) of issued patent
Priority of continuous use of a protectable, distinctive mark Trade Dress must have secondary meaning
Registration of/Application for an original work of authorship (unless a foreign work).
Courts Federal District Courts and/or ITC only
Federal District Courts and/or ITC only
Federal District Courts and potentially ITC; State Courts if not based on Federal rights
Federal District Courts and/or ITC only
State Courts Federal Courts if diversity exists between parties
Types of Intellectual Property
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Trade Secrets
What is a trade secret?
“[A] trade secret is one of the most elusive and difficult concepts in the law to define. In many cases, the existence of a trade secret is not obvious; it requires an ad hoc evaluation of all the surrounding circumstances.”
Kaib’s Roving RPH Agency, Inc. v. Smith, 237 Or.App. 96, 104, 239 P.3d 247, 251 (2010), quoting Learning Curve Toys, Inc. v. PlayWood Toys, Inc., 342 F.3d 714, 723 (7th Cir.2003) (internal quotation marks and citation omitted).
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Trade Secrets - Laws
• Restatement of Torts, § 757 / Common Law
• Uniform Trade Secrets Act (UTSA)
• Restatement of Unfair Competition, 3d
• State Statutes (G.L. c. 93, §§ 42, 42A; G.L. c.
266, § 30)
• Federal: EEA, CFAA, FOIA
• International
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Trade Secrets - Laws •Restatement of Torts § 757, comment b “A trade secret may consist of any formula, pattern, device or
compilation of information which is used in one’s business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it.”
[Plus six-factor test]
•Uniform Trade Secrets Act § 1(4) “‘Trade secret’means information, including a formula,
pattern, compilation, program device, method, technique, or process, that: (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.
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Trade Secrets - Six Factor
Test
What is a trade secret?
• Extent known outside business
• Extent known inside business
• Extent of measures to guard secrecy
• Ease/difficulty to replicate
• Value to company and competitors
• Effort/cost spent to develop
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Trade Secrets -
Massachusetts
What is a trade secret?
“The term ‘trade secret’ . . . means and includes anything tangible or intangible or electronically kept or stored, which constitutes, represents, evidences or records a secret scientific, technical, merchandising, production or management information, design, process, procedure, formula, invention or improvement.”
G.L. c. 266, § 30
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Trade Secrets -
Massachusetts
What is a trade secret?
• “[N]o general and invariable rule can be laid
down” as to what will qualify as a trade secret
or confidential information. Jet Spray Cooler,
Inc. v. Crampton, 361 Mass. 835, 840 (1972).
• Confidential information – a distinction
without a difference.
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Trade Secrets
What is a trade secret – really?!
• Information
• Confidential-plus
– Secret
– Reasonable measures:
“Heroic measures to ensure privacy are not essential, but reasonable precautions must be taken to protect the information.” CVD, Inc. v. Raytheon Co., 769 F.2d 842, 851-52 (1st Cir. 1985)
• Commercial Value
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Trade Secrets
What is NOT a trade
secret?
• General skill and
knowledge
• Information disclosed
publicly
• Industry know-how
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Trade Secrets
1. State it
2. Stamp it
3. Secure it
4. Shred it
5. Sign it
6. Supplement it
7. Substantiate it
How can we protect them?
The Seven S’s of Systemization
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Trade Secrets
How can we protect them?
• Restrictive Covenants
• Noncompetition Agreement (“Noncompete”)
• Nonsolicitation Agreement
• No-Raid/Anti-Piracy Agreement
• Nondisclosure Agreement
• Invention Assignment
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Trade Secrets
How can we protect them?
• Other Laws
• Computer Fraud and Abuse Act: intentional
access to a protected computer without
authorization or beyond authorization causing
damage
• Economic Espionage Act:
• Criminal only
• Bill pending to create a private right of action
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Patents
What is a patent?
• A grant of a right to exclude others from making,
using, selling, offering for sale, or importing the
claimed invention for a limited period of time
• Not a right of the owner to make, use or sell
• May be blocked by third party patent
• The right to exclude others lasts for 20 years from the
earliest filing date (or the longer of 20 years from
filing or 17 years from issue if filed or issued before
1995)
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Patents
• Utility Patents
• Machines, processes, compositions of matter
• Design Patents
• Protects an ornamental configuration only
• 14 Year term
• Provisional Applications
• Placeholder for 1 year
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Patents
What is NOT patentable?
• Principles
• Law of nature
• Mental processes
• Ideas
• Natural phenomena
• Mathematical formulae
• Algorithms
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Patents
Requirements to get a patent: • Novelty – patentable if, before filing, the invention was not
• Sold or Offered for Sale
• Described in a Publication Anywhere
• Used or Displayed in Public
• Abandoned, Suppressed or Concealed (first-to-invent vs.
first-to-file)
• We are going to first-to-file as of March 16, 2013 under the
America Invents Act
• Nonobviousness – patentable if
• Sufficiently different from the prior art such that the
invention would not have been obvious to one of ordinary
skill in the art at the time of the invention
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Patents
Patent application requirements: • Enablement
• Must enable one of ordinary skill in the art to
make and use the invention
• Best mode
• Must disclose the preferred mode of practicing
the invention at the time of filing
• Written Description
• Must demonstrate possession of the invention
• Claims
• Must particularly point out and distinctly claim the
invention
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Patents
Patent application requirements: • Specification
• Abstract
• Background
• Summary
• Detailed Description
• Drawings
• Claims
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Patents
Claims:
• Independent
• Stand alone to define the invention
• Contain all the essential elements of a
working invention
• Dependent
• Further defines the invention
• Includes all the limitations of the claims
from which it depends (does not stand
alone)
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Patents
Sample Independent Claim: Claim 1:
An apparatus comprising:
a substantially planar surface with
a first and a second surface;
at least three elongate members, each
having a first end and a second end, the
first ends connected to the first surface of
the planar surface and oriented with
respect to the planar surface such that the
elongate members are substantially
perpendicular to the planar surface and the
elongate members are substantially parallel
to each other.
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Patents
Sample Dependent Claims:
Claim 2:
The apparatus of claim 1 wherein the
substantially planar surface is round.
Claim 3:
The apparatus of claim 2 wherein the
elongate members are round.
Claim 4:
The apparatus of claim 3 wherein the
elongate members form an angle of 5
degrees with the first surface.
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Patents
Claim Drafting Considerations
• Draft various breadth
• Generally, narrower claims withstand validity challenges more
easily
• Generally, broader claims provide better barriers to entry
• Claiming an apparatus vs. method
• Are you going to enforce the patent claims?
• Who are you going to sue?
• Method of using device may require suing customers or going
after indirect infringement
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Patents
Prosecution in the PTO • Examiner reviews claims, conducts a search and
issues an Office Action
• Communication from the Examiner setting forth
his/her opinion with respect to patentability,
allowing or rejecting claims based on (1)
formalities and/or (2) prior art
• Patentee replies to the Office Actions by arguing
over the rejections and/or amending the claims
• Usually 2 or 3 Office Actions until a “final”
rejection
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Patents
Prosecution in the PTO
• If finally rejected, can either
• Appeal – appeal to the Board of Patent Appeals
and Interferences (new set of eyes) (becomes
the Patent Trial and Appeal Board on 9/16/2012)
• Request for Continued Examination (RCE) –
starts process again
• The public record of all documents filed and/or cited
and this back-and-forth is called the “File History”
or “File Wrapper” or “Prosecution History”
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Patents
Prosecution in the PTO
18 mos. – ~3 yrs.
Publication 18 months from filing of earliest priority date
Term: 20 years from filing of earliest priority date
Notebook Invention Disclosure
Patent Application
Patent Prosecution
Issued Patent
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Patents
Filing Continuations • Continuations, Continuations-In-Part and Divisional
Applications may be filed at any time, so long as
that Application satisfies the three “Cs”:
• Common subject matter
• Co-pending application
• Co-inventorship
• Benefit of the earlier priority date for claims
supported by earlier filing
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Patents
After Issue Proceedings • Post Grant Review – initiated by anyone other than patent
owner within 9 months of issue, and assert any grounds of
invalidity. All parties participate, but has estoppel effect on
requestor. Available for applications filed on or after
3/16/2013.
• Inter Partes Reexam – initiated by anyone other than patent
owner at anytime, and assert invalidity based on publications.
No longer available after 9/16/2012. Replaced by Inter Partes
Review requested by third party 9 months after issue.
• Ex Parte Reexam – initiated by anyone at any time, and assert
invalidity based on publications only. Once filed, requester is
no longer involved.
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Patents
After Issue Proceedings
• Supplemental Examination – initiated by patentee to
help insulate from inequitable conduct claims.
Patentee may submit any art or other information to
the PTO for consideration.
• Derivation Proceedings (after publication or
issuance) – initiated by anyone to show that claim(s)
were derived from another inventor. This is a PTO
proceeding if within one year of the publication, or a
district court proceeding if within one year of
issuance.
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Patents
Foreign Filings
12 Months (Paris Convention)
China
JP EP
All foreign filings “relate” back to priority application
Canada
Australia
Mexico
Latin America
Priority Filing (US)
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Patents
Filing Strategy and Enforcement
• Patents are territorial – can only be enforced in
country from which the patent was issued
• Foreign filing strategy may be based on
• Largest sales by either patentee or competitor
• Easiest to get allowed claims
• Patentee’s presence (headquarters, mfg.,
research)
• Major competitors’ presence
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Patents
Filing Strategy and Enforcement • Patents are a “business tool” – patent owners
usually want to translate the patent into real $ by
• Raise venture capital money
• Sale of patent/business
• Licensing
• Litigation (damages and injunction)
• Create value for the business
• Create barriers to entry (protect sales)
• Protect investment of R&D money
• Prevent or settle lawsuits (counterclaims)
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Steps to Limit Litigation
1. Foster a healthy culture
• Build trusted relationships with your clients
• Partner with business to find practical solutions to
IP issues
• Educate customers about IP issues
2. Build your IP portfolio
• Protects your client’s innovations and can, over
time, reduce litigation threat
• Purchase/license key third party IP
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Steps to Limit Litigation
3. Regularly Conduct IP Clearance Studies
• Plug into appropriate points in the product development process
4. Establish a Patent Marking Program
• Ensure the patents to be marked cover the products
• Only mark with patents that cover the product
• Create a system to track patents as they expire and/or are abandoned
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Steps to Limit Litigation
5. Establish a Program for Handling Confidential Information
• Educate, educate, educate • Risks associated with disclosing company confidential
information • Risks associated with receiving third party confidential
information • Get employees in habit of marking information
appropriately • Limits of NDAs (often no IP ownership provisions)
• Establish process for approving NDAs • Avoid unnecessary or overly broad NDAs • Legal counseling on the front-end; Business “gate-keeper”
on the back end • Partner with your IT Security group
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Steps to Limit Litigation
6. Look at Patent Aggregation Companies
• May reduce exposure to Non-Practicing Entities
(NPEs)
7. Get involved in Contract Negotiations
• Ensure good IP indemnification provisions
• Ensure acceptable IP ownership provisions
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Steps to Limit Litigation
8. Conduct an IP Audit
• Patents, trade secrets, trademarks, copyrighted
materials – ensure that your protected where
you need to be
• Make sure IP policies are consistent with your
practice
9. Affirmatively educate on company policies to
protect IP and respect the IP of others
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Contact Information
David Crosby – [email protected]
Michelle Flores – [email protected]
Maia Harris – [email protected]
David Lane – [email protected]
James O’Shaughnessy – [email protected]