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Elevations Launch the New Year at MBBP 01/02/2018

Posted by Morse Barnes-Brown Pendleton in Attorney News, Corporate, Intellectual Property, MBBP news.
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FDK Headshot Photo 2015 (M0846572xB1386)   jmc-headshot-photo-2015-m0846508xb1386

We are pleased to announce that Faith Kasparian and Jonathan Calla have each been elevated to the rank of Member at MBBP.

An Intellectual Property attorney with more than fifteen years of experience, and a Certified Information Privacy Professional/United States (CIPP-US), Faith focuses her practice on privacy and data security, and on transactions involving the development and commercialization of technology and other intellectual property assets. Prior to joining the Firm, Faith was assistant college counsel to Emerson College, providing services to the College and to its Majestic Theater, and was an associate in the Washington, D.C. office of Covington & Burling. Faith has been with the Firm since 2007, most recently as Counsel.

A member of the Firm’s Corporate Practice Group and its M&A Practice Group, Jonathan’s primary focus is on M&A, private equity, venture capital and angel financing transactions, as well as on general corporate representation. In addition to his long experience in private practice, Jonathan served previously as corporate counsel to LoJack Corporation, a publicly traded technology company, affording him real insight into the particular needs and concerns of in-house counsel. Jonathan has been with MBBP since 2010, most recently as a Senior Attorney.

Congratulations to both!

Please feel free to contact Faith or Jonathan directly.

Santa wants a trademark? Howard Zaharoff writes a letter offering Santa legal advice 12/20/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property.
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HGZ Headshot Photo 2015 (M0846618xB1386)In the IPWatchdog article Santa Claus Trademark: A Legal Opinion, Howard Zaharoff uses a mock letter to Santa to offer legal advice to trademark seekers. Howard discusses key considerations when registering a trademark, including the importance of how to define the business.

For this informative, and entertaining, read, visit IPWatchdog.

A Happy Patent Holiday 12/12/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Games & Interactive Entertainment, Intellectual Property.
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M0846496‘Tis the season for holiday cheer and shopping for the perfect holiday gifts. Behind all the holiday hustle and bustle is the intellectual property protection that assists in the commercial success of sought after products. A combination of copyright, trademark, and patent protections can be utilized by manufacturers and retailers to keep the toys from being copied by competitors trying to cash in on the frenzy and popularity of an item. Getting into the spirit of the holiday season, in his article A Happy Patent Holiday, patent attorney Brian Assessor examines the patents behind some of the most successful toys, and how those patents helped protect the sale of the toys during the holiday season and beyond.

Happy reading and happy holidays!

Copyright Alert: Deadline for DMCA Registered Agents to Submit New Designation Electronically is Quickly Approaching 11/13/2017

Posted by Morse Barnes-Brown Pendleton in Intellectual Property, Legal Developments.
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ip-news-jpeg-m0118331xb1386If you are a service provider that designated an agent with the Copyright Office prior to December 1, 2016, you must submit a new designation electronically using the online registration system by December 31, 2017Any designation not made through the online registration system will expire and become invalid after December 31, 2017.

We’ve posted a recap in this month’s IP News: Copyright Alert.

MBBP Patent Practice Marks 10th Anniversary 11/02/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property, MBBP news.
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paTENtTen years ago, after a lengthy period of intense discussion, MBBP executed on a long-held strategic goal and launched a patent practice. The partners believed an expansion of the existing IP practice to include patent would constitute natural growth and be an integral part of the Firm’s continued success. MBBP’s vision of a nimble, cost-effective, genuinely efficient patent practice has been realized and become a mainstay of the Firm. It is for these and so many other reasons that MBBP proudly celebrates a truly outstanding team of dedicated, proficient professionals and our Patent Practice’s 10th Anniversary.

Read the full announcement and be sure to check out our Meet the Team page!

Happy Halloween! Client Alert: 4 SCARY Facts about the New European Union General Data Protection Regulation 10/31/2017

Posted by Morse Barnes-Brown Pendleton in Intellectual Property, Privacy and Data Security.
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client alert skinnyThis Halloween, in the privacy and data security world, it is not the ghost or goblin that should frighten your business – but rather, the looming May 25, 2018 deadline for compliance with the new European Union General Data Protection Regulation (GDPR).  In honor of Halloween, MBBP’s privacy and data security team shares 4 SCARY facts about the GDPR.

To learn about the 4 facts, read the full alert.

Amanda Schreyer Speaking on Social Influencers Panel for the Copyright Society of the USA 10/12/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property, Internet and E-Commerce.
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AES Headshot Photo 2017 (M1117143xB1386)Curious about who social influencers are and how they develop their careers and business relationships with brands and services? Don’t miss MBBP intellectual property attorney Amanda Schreyer on the Copyright Society of the USA’s panel “Social Influencers: Copyright, Publicity and Social Media Contracting.” Amanda, along with Maria Guerra of Influence Central, will speak about the relationship between social influencers and intellectual property and internet law. The panel will be held on October 30, 5:30-7pm at Northeastern University School of Law.

More information and registration details can be found on the Copyright Society’s event page.

Amanda Schreyer Named Co-Chair of New England Copyright Society Chapter 09/25/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property.
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AES Headshot Photo 2017 (M1117143xB1386)MBBP counsel, Amanda Schreyer, has been named co-chair of the New England chapter of the Copyright Society of the U.S.A. The Copyright Society is a non-profit organization aimed toward copyright law awareness and education. Its mission is to “foster interest in and advance the study and understanding of copyright law in literature, music, art, theater, motion picture, television, computer software, architecture, and other works of authorship, and their distribution through both traditional and new media.”

The Copyright Society’s members include attorneys and professionals from leading IP firms and media and entertainment industries, as well as others.

Learn more about the Copyright Society.

“Practicing TM, Copyright, IP & Related Areas of Law”: Amanda Schreyer Speaking at BPLA Event 09/18/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property.
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AES Headshot Photo 2017 (M1117143xB1386)Intellectual property attorney Amanda Schreyer will speak at the Boston Patent Law Association’s “Making Connections in Boston’s IP Community” event on October 18. Amanda will speak on the panel “Practicing TM, Copyright, IP & Related Areas of Law,” which will discuss pathways to practices as an IP lawyer in various settings. The panel discussion will be of particular interest to law students, recent law school graduates, STEM students, and others interested in intellectual property law careers.

The panel will be held from 5:00-6:30pm at District Hall in Boston’s Innovation District. View the event page for more information and to register.

Amanda Schreyer Speaking at the Boston Bar Association on IP Protection of Fictional Characters 09/12/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property.
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AES Headshot Photo 2017 (M1117143xB1386)At the Boston Bar Association on September 29, intellectual property attorney Amanda Schreyer will present on “Intellectual Property Protection and Exploitation of Fictional Characters.” The presentation will outline the most important cases addressing the protection of fictional characters using copyright, trademark, and publicity law. Additionally, it will cover the legal principles that are permitting non-character owners to use the characters in new ways.

The presentation will take place at the Boston Bar Association from 12-1pm on September 29th. Register today to reserve your place.

More Money for Life Sciences? 08/24/2017

Posted by Morse Barnes-Brown Pendleton in Intellectual Property, Life Sciences.
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By: Erin Bryan

EEB Headshot Photo 2015 (M0846503xB1386)A new legislative proposal to provide a five-year, $500 million life sciences initiative was recently announced by Governor Charlie Baker. This initiative would extend the current 10-year, $1 billion initiative that is set to expire at the end of the next fiscal year and would continue to be managed by the Massachusetts Life Sciences Center. The proposal includes $295 million in capital authorization and up to $150 million in job-creating tax incentives.

The focus of the new initiative will be on job training and career development, with strategic priorities being to strengthen the state’s skilled workforce pipeline, expand opportunities for companies to access both private and public investment resources, develop new scientific innovations that deliver better outcome, affordable therapies to patients, and continue to lead the convergence revolution in digital health, biopharma, medical devices and engineering.[1]

The announcement of the legislative proposal at the 2017 BIO International Convention in San Diego was well received by those in the industry, with many expressing their excitement and support for the continued investment in the Massachusetts life sciences sector. Nonetheless, this will bear continued watching, particularly in view of the significant budget gap facing the Commonwealth.

For more information, please contact Erin Bryan.

____________________________________________________________________________________________

  1. Press Release: “Baker-Polito Administration Proposes Life Sciences Initiative,” June 19, 2017. http://www.mass.gov/governor/press-office/press-releases/fy2017/administration-proposes-life-sciences-initiative.html

MBBP Welcomes Intellectual Property Attorney Amanda Schreyer as Counsel 08/23/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Computer Software & Hardware, Games & Interactive Entertainment, Intellectual Property, Internet and E-Commerce, MBBP news, Publishing & Media.
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AES Headshot Photo 2017 (M1117143xB1386)We are pleased to announce the addition of Intellectual Property Counsel Amanda Schreyer.

Amanda will continue to concentrate her practice on privacy and data security, licensing and strategic alliances, trademark, and transactional matters. Schreyer’s clients include video game and software developers, digital influencers, media publishers, influencer marketing agencies and other intellectual property holders.

Amanda regularly advises clients on such matters as sweepstakes and contest rules and regulations, native advertising and sponsored content, and FTC endorsement and disclosure requirements. She has substantial experience negotiating film, television, and book deals, and is very knowledgeable about talent collective bargaining agreements. Amanda prosecutes trademarks at the U.S. Patent and Trademark Office, and also advises creative entrepreneurs in connection with a variety of transactional matters.

We invite you to contact Amanda directly.

Lisa Warren Examines the Value of In-Person Interviews for Expediting Patent Allowance in Mass. Lawyers Weekly Article 08/15/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property, Life Sciences.
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LMW Headshot Photo 2015 (M0846622xB1386)In her Massachusetts Lawyers Weekly article “Expediting Patent Allowance with In-Person Interviews,” patent attorney Lisa Warren explains why it may be beneficial to take advantage of in-person interviews with the U.S. Patent & Trademark Office in order to expedite the allowance of a patent. Although options such as telephone or video conference interviews may be available and more convenient, Lisa notes:

sometimes there is simply no substitute for direct interpersonal interaction with an examiner to build rapport and improve the mutual understanding of the issues.”

Additionally, Lisa addresses relevant considerations when deciding if in-person interviews are preferable during the patent application process, as well as requirements for the interview itself. These and other insights from Lisa can be found in the full article.

Corporate Attorney Shannon Zollo Explains In-House Counsel’s Role in Due Diligence 07/05/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Corporate, Intellectual Property.
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M0846567In Corporate Counsel’s article “10 Uber In-House Attorneys Saw Due Diligence Report in Battle With Alphabet“, Shannon Zollo comments on the role of in-house counsel in the due diligence process. The article discusses a due diligence report from Uber’s acquisition of Otto, in which Alphabet claims there is proof that Uber knowingly acquired stolen intellectual property. As such, the importance of the due diligence process is highlighted and, in particular, in-house counsel’s role in the process.

Shannon explains that the goal of the due diligence period is to review a target company in a merger or acquisition and ascertain whether or not there are any potential issues. He notes:

The purpose of a diligence report is to understand as best as is possible before you close, the nature of the target and whether that target fits within your acquisition profile across the board.”

If any issues do arise, Shannon states that the buyer’s internal team has to discuss the next best steps and that “in-house counsel should be deliberate in trying to maintain privilege”.

For more information from Shannon on the due diligence process read the full article.

Matal v. Tam: The Supreme Court Rejects the Prohibition on Disparaging Trademarks 06/22/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property.
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Sean D. Detweiler (SDD)By: Sean Detweiler and Bianca Sena

On Monday June 19, 2017, the U.S. Supreme Court ruled that the U.S. Trademark Office’s denial of registration for “disparaging” trademarks under Section 2(a) of the Lanham Act violates the Free Speech Clause of the First Amendment and is therefore unconstitutional. The case, Matal v. Tam (previously known as Lee v. Tam) concerned the federal trademark registration of “The Slants,” an all Asian-American rock band. The Court affirmed the Federal Circuit’s decision that Section 2(a) constituted viewpoint-based discrimination because it necessarily required a subjective value judgment on whether something is “disparaging.” The decision upended a portion of statute that has been in place since 1946. The decision will likely impact a parallel trademark case, Pro Football Inc. (a.k.a., the Redskins case), which involves the same disparagement clause section of the Lanham Act and cancellation of the Redskins trademark registrations.

For further detail, read “Matal v. Tam: The Supreme Court Rejects the Prohibition on Disparaging Trademarks”. For more information on trademarks, please contact Sean Detweiler.

Howard Zaharoff Co-Chairing 2017 MCLE Annual IP Law Conference 05/11/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property.
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HGZ Headshot Photo 2015 (M0846618xB1386)As in previous years, intellectual property attorney Howard Zaharoff will co-chair MCLE’s 20th Annual Intellectual Property Law Conference 2017. The conference will cover various intellectual property topics, including IP litigation, protecting designs, IP issues in software, and the Defense of Trade Secrets Act.

The conference will be held on June 20th, both in-person and available via live webcast.

Lisa Warren Moderating Panel at Northeastern University School of Law 2017 Women in the Law Conference 05/08/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property.
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LMW Headshot Photo 2015 (M0846622xB1386)Don’t miss Lisa Warren next Friday, May 19 at the Northeastern University School of Law (NUSL) 2017 Women in the Law Conference. Lisa will moderate the panel “Unlocking the Mysteries of the ‘New Girl’ Network“, where panelists will discuss how women’s networks can spark ideas, recharge your career, build client relationships, and lead to meaningful connections with others in the public and private sectors. Attorney General Maura Healey will be the keynote speaker at the conference.

View the event page for registration information and the full conference agenda.

Shann Kerner Joins MBBP as Intellectual Property Partner 05/03/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property, Life Sciences, MBBP news.
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SLK Headshot Photo 2017 (M1062434xB1386)We are pleased to announce the addition of Intellectual Property Member Shann Kerner.

Shann has substantial experience advising emerging, mid-sized and public companies in the biotechnology, pharmaceutical and medical device fields, counseling them on the creation, leveraging and protection of IP, with a view towards strengthening the business strategy of her clients.

A versatile and seasoned member of the Intellectual Property department, Shann concentrates her practice on IP counseling, particularly on patent portfolio procurement and management and IP due diligence in connection with venture capital, mergers and acquisitions, IPOs, and internal audits. Shann also focuses on analyses regarding patentability, freedom-to-operate, inventorship, derivation, validity and competitive subject matter landscape.

We invite you to contact Shann directly.

MBBP’s Life Sciences Vector Newsletter, Spring 2017 04/20/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Corporate, Intellectual Property, Life Sciences, MBBP news, New Resources.
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Our Life Sciences team has published the Spring 2017 edition of its newsletter, Vector. Below you will find brief descriptions of the news and articles included in the publication. Read the full newsletter for more information.

DAVID CZARNECKI AND STANLEY CHALVIRE ELEVATED WITHIN THE FIRM

We are pleased to announce that David Czarnecki and Stanley Chalvire have been elevated to Member. Dave is exceptionally proficient in guiding both buyers and sellers through a wide range of corporate transactions. Stan is a Registered Patent Attorney, specializing in the licensing of intellectual property and related counseling.

AMANDA PHILLIPS NAMED 2017 UP & COMING LAWYER

Litigation associate Amanda Phillips has been named a 2017 Up & Coming Lawyer by Massachusetts Lawyers Weekly. The recognition is awarded to a select number of attorneys who have been practicing for fewer than 10 years but whose professional achievements are noteworthy and whose service to the community is also significant.

CORPORATE ATTORNEY MICHAEL JABBAWY JOINS FIRM AS PARTNER

Michael’s practice is focused primarily in the areas of emerging and growth technology companies, venture capital, M&A transactions, and corporate governance. As a member of the Corporate Department, Michael advises technology and other emerging companies through each stage of growth. Prior to joining MBBP, Michael was a member of the Technology Companies group at Goodwin Procter LLP.

RECENT LIFE SCIENCES TRANSACTIONS

MBBP represented several clients in life sciences transactions, including iSpecimen, Orionis Biosciences, First Light Biosciences, and Manus Biosynthesis. The transactions ranged from convertible debt to equity investments. Learn more on page 2.

FREEDOM TO OPERATE: PREVENTION IS THE BEST MEDICINE

Launching a new product or service can be fraught with uncertainty and involve large expenditures of limited resources. An FTO opinion can reduce uncertainty and provide some insurance against loss from an unfavorable finding of infringement of another’s patent. An FTO opinion makes a determination whether a product or service infringes issued patents. In other words, the opinion indicates whether or not there is “freedom to operate” the product or service within the patent landscape. Often, FTO opinions also identify patent applications that, if later issued as patents, may be problematic. Read the full article on page 2.

THE PATENT PROCESS: GET ON THE FAST TRACK

One of the biggest frustrations for patent applicants is the incredibly slow pace at which an application proceeds from filing to receipt of a substantive examination report to allowance. On average it takes 15.7 months for a patent application to receive even a first substantive examination report, though there is significant variability across technology areas. The Patent Office has recognized this problem and implemented several initiatives which attempt to address the problem from different angles. Two programs in particular have gained traction: the Patent Prosecution Highway (PPH) and Track One Prioritized Examination. Continue reading for more information about these programs.

OWNERSHIP OF ARISING INVENTIONS IN JOINT DEVELOPMENT AGREEMENTS

Collaboration remains a valuable means of fostering innovation and advancing scientific, clinical and commercial objectives. Towards that end, two or more parties contemplating a collaboration often consider entering into a Joint Development Agreement, where they define, among other things, their respective contributions and responsibilities towards their common objectives. These types of collaborations require a careful and thorough consideration of the disposition of intellectual property rights that may arise as a result of each party’s performance of its responsibilities under such collaborations. Read more starting on page 3.

GUEST COLUMN:
FOR SKILLED IMMIGRATION TO THE U.S., THE TIMES, THEY MAY BE CHANGING

The last year of the Obama Administration saw an increased activism by President Obama in the area of skilled immigration. Through Executive Orders and regulations, the President made a number of important changes including providing Employment Authorization for spouses on H-4 visas, increasing the period of post-graduate employment authorization for foreign students in STEM fields (Science, Technology, Engineering and Mathematics), increasing the number of academic fields included in STEM and formalizing a grace period for foreign nationals on H-1B visas that find themselves between jobs. Read the full article beginning on page 5.

Faith Kasparian Comments on Privacy & Data Security Implications of Burger King’s New Google-Triggering Ad 04/14/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property, Privacy and Data Security.
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FDK Headshot Photo 2015 (M0846572xB1386)Intellectual property attorney Faith Kasparian comments on the potential privacy and data security repercussions of Burger King’s new ad in Bloomberg’s article, “Burger King’s Google-Triggering Ad Invites Complaints, Scrutiny“. The article discusses Burger King’s recent ad controversy, after it prompted consumers’ Google Home devices to respond to the prompt “OK, Google. What is the Whopper burger?”.

Faith notes that:

It’s unreasonable for Google not to have appropriate mechanisms in place so that the device couldn’t be activated by a third party.

She also states that the FTC could have a claim against Google for the ad since consumers did not receive proper disclosures, and that Google could also take legal action against Burger King for “inappropriately leveraging that device”.

For more information on the legal implications of the ad, read Bloomberg’s article.

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