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MBBP’s Howard Zaharoff Will Be a Panelist in Boston Bar’s 17th Annual Intellectual Property Year in Review 12/19/2016

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property, MBBP news.
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MBBP’s Howard Zaharoff will be a panelist at this year’s Boston Bar Association Intellectual Property Year in Review, one of Boston’s premier annual IP events. Howard will be discussing some of the most important copyright developments of the HGZ Headshot Photo 2015 (M0846618xB1386)past year, with his co-presenter, Attorney Lucy Lovrien.

This annual panel has been organized for intellectual property specialists to discuss the latest developments with practitioners in the field. Howard and his fellow panelists will discuss patents, copyrights, trademarks, and trade secrets, and the event will close with a networking opportunity for all attendees.

The event is scheduled for Thursday, January 26th, 2017 from 3:00 PM to 6:00 PM at the Boston Marriott Long Wharf. See the event details for more information.

Defend Trade Secrets Act of 2016 Signed 05/11/2016

Posted by Morse, Barnes-Brown Pendleton in Employment, Intellectual Property.
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By: Sandra E. Kahn

Today President Obama signed into law the Defend Trade Secrets Act of 2016 (DTSA), which creates a new federal civil cause of action for trade secret theft. While claims for trade secret theft may still be brought under the various state laws which protect intellectual property, this new law will provide uniform protection on the federal level. The DTSA also provides protection for whistleblowers, granting immunity to parties who disclose a trade secret to the government or an attorney to report wrongdoing, or as part of an anti-retaliation lawsuit. Of particular interest is the requirement that employers must now provide a notice of this immunity protection in any contract or agreement with an employee (or an independent contractor or consultant) that governs the use of a trade secret or other confidential information. To learn more about the DTSA, click here.

New Federal Law Protects Trade Secrets But Also Requires Changes to Employee and Contractor Agreements 05/05/2016

Posted by Morse, Barnes-Brown Pendleton in Client News, Employment, Intellectual Property, Licensing & Strategic Alliances, Privacy and Data Security, Public Companies.
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By: Sandra E. Kahn

It is expected that President Obama will soon sign into law the Defend Trade Secrets Act of 2016 (DTSA), which creates a new federal civil cause of action for trade secret theft.  While claims for trade secret theft may still be brought under the various state laws which protect intellectual property, this new law will provide uniform protection on the federal level.

The DTSA defines trade secrets consistently with the Uniform Trade Secrets Act (UTSA), and applies broadly to any trade secrets “related to a product or service used in or intended for use in, interstate or foreign commerce.”  Along with the ability to bring a lawsuit to fight trade secret theft and pursue equitable remedies and the award of damages for the misappropriation of a trade secret, the DTSA also includes a provision for expedited relief on an ex parte basis to prevent the dissemination of misappropriated trade secrets, which may be obtained under “extraordinary circumstances.”

The DTSA also provides protection for whistleblowers, granting immunity to  parties who, under certain circumstances, disclose a trade secret to the government or an attorney to report wrongdoing, or as part of an anti-retaliation lawsuit.  Of particular interest to our clients is the requirement that employers must now provide a notice of this immunity protection in any contract or agreement with an employee (or an independent contractor or consultant) that governs the use of a trade secret or other confidential information.    If this notice is not included in all contracts which are signed or revised after the effective date of the act, the employer will not be able to recover exemplary damages and attorneys’ fees under the DTSA (although the employer may still pursue any available damages under other causes of action).  Employers are advised to consult with their counsel to revise all agreements with employees and contractors in order not to run afoul of this requirement.

The DTSA, by itself, may not be used to prevent a departed employee from entering into a new employment relationship with a competitor, and provides that any conditions placed on such employment must be based on “evidence of threatened misappropriation and not merely on the information the person knows,” in effect rejecting the doctrine of inevitable disclosure.

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.

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