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Howard Zaharoff to Chair MCLE Program on “Distributing and Licensing Software and Other Technologies” 04/06/2012

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Events.
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IP and Technology Licensing Attorney Howard ZaharoffOn Wednesday, May 9th, MCLE New England is hosting a program on “Distributing & Licensing Software & Other Technologies.” The program will be chaired by MBBP IP and Licensing Attorney Howard Zaharoff and include five panelists who will provide attendees with important tips and useful forms for getting their technology deals done. The program will cover topics such as pricing models, open source, cloud computing, containing liability, and include an “Ask the Experts” Q&A session.

For more information, please visit MCLE New England.

Click here to register for this event.

Any questions regarding licensing, please contact Howard Zaharoff.

MBBP Attorneys to Speak at 14th Annual NE IP Law Conference 2011 05/23/2011

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property, Legal Developments.
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IP and Technology Licensing Attorney Howard ZaharoffOn June 16th, Massachusetts Continuing Legal Education (MCLE) is hosting the 14th Annual New England Intellectual Property Law Conference 2011, where attendees can get up-to-speed on trends and new developments that business lawyers and litigators need to know in the ever-changing field of intellectual property law. MBBP IP Licensing and Trademark Attorneys Howard Zaharoff and Faith Kasparian will be attending the conference as faculty members. Howard IP Licensing and Trademark Attorney Faith Kasparianis a program Co-Chair, while Faith will present an overview and update to the FTC’s New Privacy Framework.

For more information and to register for the conference, please visit MCLE.

For more information on intellectual property law, feel free to contact Howard or Faith.

Basic Considerations for Determining Whether to Rely on Patents or Trade Secrets to Protect Your Intellectual Property 01/31/2011

Posted by Morse, Barnes-Brown Pendleton in New Resources.
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Patent Attorney Stan ChalvireBy Stanley Chalvire

Patents and trade secrets both protect valuable information and technology, though each has distinct advantages and disadvantages. A patent grants the owner the right to exclude others from practicing the claimed invention for a limited time (in the U.S., 20 years from filing), in exchange for teaching the public how to make and use the claimed invention. Trade secret laws, on the other hand, protect information that derives value from not being generally known to the public. A decision of whether to rely on patents or trade secrecy must be made carefully, strategically and in consideration of business objectives. The decision will dictate enforcement rights and remedies, and may be scrutinized by business partners, investors and competitors. Several important factors should be considered.

One obvious consideration is whether the technology or information represents patentable subject matter and, if so, whether the likely scope of any patents that may issue will afford meaningful protection. This analysis may be informed by evaluating the closest prior art or by surveying the types of patent claims which competitors are relying upon to protect their intellectual property. To the extent that the anticipated scope of patent protection will be very narrow or allow competitors to easily design around the patent, patent protection may not be ideal.

Timing is also a critical consideration, especially for rapidly evolving technologies. Patent applications are formally examined and, although the time to issuance varies with the jurisdiction, the pendency of a patent application may approach four years or more in the United States depending on the technology. In contrast, no formal approval or examination is required for trade secret protection; rather, the owner need only maintain the secrecy of the information. Although there are mechanisms by which the prosecution of a patent application may be expedited, if the technology may become obsolete within a short period of time, patent protection may not be the best protection.

A fundamental premise of trade secret protection is that the information is not publicly known and that the information remains subject to reasonable efforts to maintain it in confidence. Trade secret laws will not prevent a third-party from independently developing the information or from reverse engineering publicly available products to learn the underlying information, nor will trade secret laws prevent the subsequent exploitation of information which was properly discovered. Accordingly, to determine whether trade secret protection is useful, one should consider the ease with which the information can be kept secret, as well as of the resources that must be devoted to maintaining its secrecy. Generally, reasonable efforts to maintain the secrecy of trade secret information includes restricting access to only those individuals who need to know the information to perform their duties, implementing appropriate employment agreements and security measures, and avoiding disclosures of the information except under appropriate non-disclosure agreements. To the extent that it is impractical or difficult to maintain the secrecy of the information, trade secret protection alone may not suffice.

The above factors (and others that your IP counsel can explain) should be considered in developing a comprehensive strategy to protect your company’s valuable technologies, processes and information. Often, a successful strategy will integrate both patents and trade secrets, as well as copyrights and trademarks. The early development of an intellectual property strategy and the periodic reassessment of that strategy in light of changing business objectives are key to protecting the valuable intellectual property assets of any company.

For more information on this topic, please contact Stan Chalvire.

Who Can Publish Your Author’s Book? A Lesson in Licensing Law 09/22/2010

Posted by Morse, Barnes-Brown Pendleton in Client News.
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IP and Technology Licensing Attorney Howard ZaharoffBy Howard Zaharoff

Can a publisher assign publishing rights in a book to another publisher if the publishing contract is silent?

A well-drafted publishing agreement will indicate whether the rights or obligations of the parties may be transferred to a third party. On the publisher’s side, this means the contract should contain a clear statement that the publisher may assign its rights under the agreement to another publisher.

But what if the contract is silent on this point? Can a publisher transfer its rights without obtaining the author’s consent?

Under U.S. law, most contracts are assignable, unless they say otherwise (or an assignment would damage the other party). However, contracts for intellectual property (like contracts for personal services) are treated differently: these agreements are not assignable unless they expressly say so.

The point was well made in the recent case, Cincom Systems v. Novelis Corp. (6th Cir. 2009), which involved the transfer of a software license between Cincom and Alcan Ohio to an Alcan successor, renamed Novelis, by statutory merger. As the court concluded: “Federal common law… is clear: the only legal entity that can hold a license from Cincom is Alcan Ohio. If any other legal entity holds the license without Cincom’s prior approval, that entity has infringed Cincom’s copyright because a transfer has occurred.”

A software license is a license of intellectual property because the rights being granted are rights to the licensor’s patents, copyrights and/or trade secrets in the code and documentation.

A publishing agreement is also a license of intellectual property (unless it is an outright assignment of rights, which is unusual in trade publishing but not uncommon in academic publishing). That is, generally an author grants the publisher a broad and exclusive license under the author’s copyright.

Therefore, as with software licenses and most other IP licenses, a publishing agreement generally cannot be assigned by the original publisher to another person, even a successor to its contracts and assets, unless the agreement clearly allows it.

The lesson: If a publisher wants to assign publishing rights to another house, for any reason, it must check its author contract to be sure this is authorized. If the contract doesn’t specifically allow assignment, the publisher should ask the author for written permission. If it fails to do this, its assignment of the publishing contract, and its successor publisher’s production of the book, could be held to constitute copyright infringement… and no publisher wants to go there!

For more information on licensing law, please contact Howard Zaharoff.

Get An Agent Magazine Features Howard Zaharoff Article, “Before You Sign With an Agent” 05/13/2010

Posted by Morse, Barnes-Brown Pendleton in Attorney News.
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IP and Technology Licensing Attorney Howard ZaharoffWriter’s Digest Guides has recently released its newest guide, Get An Agent, which covers such topics as the basics of publishing, how to submit your work and how to attract an agent. The 2010 Get An Agent includes an article written by MBBP Attorney Howard Zaharoff titled “Before You Sign With an Agent…”. The article advises writers on “how to negotiate terms that will benefit your writing — and make your agent work for you.”

To view the full article, please visit our Technology and IP Resources page.

For more information on IP and Technology Licensing, please contact Howard Zaharoff.

Cincom Systems v. Novelis Corp: What happens to a license in a statutory merger? 01/19/2010

Posted by Morse, Barnes-Brown Pendleton in Attorney News.
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By: Howard Zaharoff

IP and Technology Licensing Attorney Howard ZaharoffMost contracts are assignable, unless they say otherwise. But intellectual property licenses – including software licenses – are an exception: not assignable unless they say otherwise.

This doesn’t mean every change of control is a problem; but Cincom Systems v. Novelis Corp. (6th Cir. 2009) reminds us that a statutory merger that results in a new entity using technology that was originally licensed to the merged entity may be deemed a transfer which, if done without licensor permission, can get the successor in trouble.

To learn more, please view full article.

For more on IP licensing, please contact Howard Zaharoff.

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